OPPOSITION No B 3 028 712

Arturo Salice S.p.A., Via Provinciale Novedratese, 10, 22060, Novedrate (Como), Italy (opponent), represented by Dr. Modiano & associati S.p.A., Via Meravigli, 16, 20123, Milano, Italy (professional representative)

a g a i n s t

Shenzhen Nanyunchuan Trading Co. Ltd., Rm. 701, Gongjiao Blg., No. 1, Branch Rd., Lianhuazhi, Lianhua Subdist., Futian Dist., Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018, Paris, France (professional representative).

On 20/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 028 712 is upheld for all the contested goods, namely for all the goods in Class 6.

2. European Union trade mark application No 16 519 506 is rejected for all the contested goods. It may proceed for the remaining, uncontested, goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 519 506 for the figurative mark , namely against all the goods in Class 6. The opposition is based on, inter alia, European Union trade mark registration No 519 173 for the word mark ‘SALICE’, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark application No 519 173.

a) The goods

The goods on which the opposition is based are the following:

Class 6: Hinges of metal, ironmongery, iron fittings and accessories of metal for furniture and doors, buildings and items of furnishing.

The contested goods are the following:

Class 6: Ironwork for doors; ironwork for windows; building or furniture fittings of nickel-silver; furniture casters of metal; fittings of metal for furniture; materials of metal for funicular railway permanent ways; pulleys of metal, other than for machines; runners of metal for sliding doors; chains of metal; padlocks; keys; door handles of metal; hinges of metal; ironmongery; tree protectors of metal.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 6

Hinges of metal; ironmongery are identically contained in both lists of goods.

The contested fittings of metal for furniture include as a broader category the opponent’s iron fittings of metal for furniture. Since the Opposition Division cannot dissect ex officio the broader category of the contested goods, they are considered identical to the opponent’s goods.

Ironmongery refers to ‘articles for the house and garden such as tools, nails, and pans which are sold in an ironmonger’s shop’ (information extracted on 07/12/2018 from Collins Dictionary at www.collinsdictionary.com/dictionary/english/ironmongery) or, more generally, ‘something made of metal’, especially ‘ware (such as fittings, cutlery, tools, utensils, or parts of machines) made of metal’ (information extracted on 07/12/2018 from Merriam-Webster Dictionary at www.merriam-webster.com/diction
ary/ironmongery and www.merriam-webster.com/dictionary/hardware). Therefore, the contested ironwork for doors; ironwork for windows; furniture casters of metal; pulleys of metal, other than for machines; runners of metal for sliding doors; chains of metal; padlocks; keys; door handles of metal; tree protectors of metal are identical with the opponent’s ironmongery, iron fittings and accessories of metal for furniture and doors, buildings and items of furnishing. This is because they are included in, or overlap with, these goods of the opponent.

The contested building or furniture fittings of nickel-silver are highly similar to the opponent’s iron fittings of metal for furniture and doors, buildings and items of furnishing. These goods may have the same purposes and methods of use. They target the same consumers, are distributed through the same channels and may be in competition with each other. In addition, they may be produced by the same manufacturers.

The remaining contested goods, namely materials of metal for funicular railway permanent ways, are similar to at least an average degree to the opponent’s ironmongery. ‘A funicular or a funicular railway is a type of railway which goes up a very steep hill or mountain. A machine at the top of the slope pulls the carriage up the rails by a steel rope’; in addition, ‘permanent way’ refers to ‘the track of a railway, including the ballast, sleepers, rails, etc’ (information extracted from Collins Dictionary on 07/12/2018 at www.collinsdictionary.com/dictionary/english/funicular and www.collinsdictionary.com/dictionary/english/permanent-way). Rails are attached to sleepers with fasteners, usually screws and nuts. Importantly, the contested goods cover not funicular railway permanent ways, as such, but merely materials of metal for them. This broadly worded term covers, inter alia, goods such as screws and nuts of metal, which per se are not particularly sophisticated. Accordingly, the contested goods have a certain degree of similarity to the opponent’s ironmongery, which consists of goods that may be used around the house and garden, including tools, nails or parts of machines made of metal and, thus, also simple fasteners such as screws and nuts. Despite differing in their purposes, these goods have the same nature (goods made of metal/iron) and methods of use, and they may be distributed through the same channels. In addition, they may originate from the same manufacturers, such as producers of metal hardware.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical, highly similar or similar to at least an average degree are directed at the public at large and a professional public with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

SALICE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs under comparison are meaningless in those countries where French is understood. This affects the perception of the signs by the public in countries where these territories and the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier trade mark is a word mark composed of the single word ‘SALICE’. It is meaningless for the opponent’s goods from the perspective of the relevant public and, thus, inherently distinctive to an average degree. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier sign is depicted in upper or lower case characters, or in a combination thereof; for example, it could be depicted in title case, ‘Salice’.

The contested trade mark is a figurative mark composed of the single word ‘Saliet’ in a standard and non-distinctive black typeface in title case. It is meaningless for the contested goods from the perspective of the relevant public and, thus, inherently distinctive to an average degree.

Visually and aurally, the signs coincide in the letter sequence ‘Sali**’, which constitutes their beginnings, where consumers normally focus their attention. This part of the signs will be pronounced identically. There is also a certain degree of visual similarity due to the coinciding letter ‘e’, although placed in different positions, namely as the final letter of the earlier sign, ‘Salice’, and as the fifth letter of the contested sign, ‘Saliet’.

The signs differ in the fifth letter of the earlier sign (‘c’) and in the final letter of the contested sign (‘t’). However, this difference and the different positions of the letter ‘e’ in the signs will be less noticeable aurally, because the signs will be pronounced as /‘sa-lis’/ and /‘sa-li-e’/, respectively, in line with French pronunciation rules. Moreover, this final part of the signs will have less impact on consumers’ perception of the signs, because the public pays less attention to the endings of signs (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65).

The signs also differ in the stylisation of the contested sign’s verbal element, which, however, is non-distinctive and thus has a very limited impact on consumers’ perception, if any. Moreover, the stylisation of the contested sign is not subject to a phonetic assessment.

Therefore, the signs are visually similar to an average degree and aurally highly similar.

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has a reputation and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical, highly similar and similar to at least an average degree. The signs are visually similar to an average degree and aurally highly similar. As explained in section c) of this decision, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has a normal degree of distinctiveness.

The relevant public comprises the public at large and a professional public, which will display a degree of attention varying from average to high.

The signs under comparison are composed of single words of six letters each. They coincide in their beginnings, namely the letter sequence ‘Sali**’, which will be pronounced identically. It is settled case-law that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs also have the letter ‘e’ in common, although placed in different positions, while they differ in their remaining letters, namely the fifth letter of the earlier sign, ‘Salice’, and the final letter of the contested sign, ‘Saliet’. As explained above, these differing elements and the different positions of the letter ‘e’ will be less noticeable aurally, as the relevant French-speaking public will pronounce the signs in highly similar ways. The signs also differ slightly in the stylisation of the contested sign’s verbal element, which is, however, non-distinctive and will have a very limited impact on consumers’ perception, if any. Moreover, account is taken of the fact that average consumers, even those who pay a high degree of attention, rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The differing letters located at the ends of the signs, and the stylisation of the contested sign, have less impact on consumers’ perception of the marks than the coinciding and longer part, ‘Sali**’, located at their beginnings, and the overall impressions created by the signs are similar to each other.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. In view of the similarities between the signs, a likelihood of confusion cannot be excluded even for the part of the public that displays a high degree of attention. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark application No 519 173. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark application No 519 173 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article (5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Maria SLAVOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.