OPPOSITION Nо B 3 109 297

 

Superstudio Group Srl, Via San Giovanni Sul Muro 5, 20121 Milan, Italy (opponent), represented by Gianpaolo Fossa, Via Aurelio Saffi 10, 20123 Milan, Italy (professional representative) 

 

a g a i n s t

 

Todofurniture,s.L.U, C/ Platon,6 3ª 3ª, 08021 Barcelona, Spain (applicant), represented by Sogemark Propiedad Industrial S.L., Avenida de Les Corts Catalanes,5-7 1º Edificio Trade Center, 08173 Sant Cugat Del Vallès, Barcelona, Spain (professional representative).

On 26/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 109 297 is upheld for all the contested services.

 

2.	European Union trade mark application No 17 356 312 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 17 356 312 ‘SUPERSTUDIO’ (word mark). The opposition is based on Italian trade mark registration No 919 309 (figurative mark). The opponent invoked  Article 8(1)(a) and Article 8(1)(b) 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.

 

 

a) The services

 

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

 

Class 35:  Services rendered for and/or on behalf of others in the advertising and business sectors; public relations and market research; organisation of exhibitions for commercial and/or advertising purposes. 

The contested services are the following:

 

Class 35: Import; export; advertising; business management; business administration; franchise-issuing relating to assistance in the operation or management of a commercial company.

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.

The Opposition Division notes that the opponent’s term services rendered for and/or on behalf of others in the advertising and business sectors covers broad categories that, in the context of Class 35, include a wide range of business services such as business assistance, business management, business administration, as well as advertising.

It may be noted also that the contested term franchise-issuing relating to assistance in the operation or management of a commercial company effectively constitutes a business assistance, management and administrative service.

Accordingly, the contested advertising; business management; business administration; franchise-issuing relating to assistance in the operation or management of a commercial company must be considered to be included in the broad categories of the opponent’s services rendered for and/or on behalf of others in the advertising and business sectors. Therefore, they are identical.

The contested import; export are similar to the opponent’s services rendered for and/or on behalf of others in the advertising and business sectors as they usually coincide in producer, relevant public and distribution channels.

 

b) The signs

 

	SUPERSTUDIO
Earlier trade mark	Contested sign

 

 

The relevant territory is Italy.

 

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 signs coincide fully in their sole verbal element ‘SUPERSTUDIO’ consisting of the components ‘SUPER’ and ‘STUDIO’ both of which are meaningful in Italian. Irrespective of whether this verbal element has a meaning as a whole, it would be immaterial in the present case and this is so also concerning the degree of distinctiveness of the signs' verbal elements, as they are the same in both marks and because the only differentiating element of the earlier mark resides in the slight stylization thereof, which is, however, purely decorative and has no trade mark significance.

It follows that the signs are visually highly similar, aurally identical and conceptually identical.

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

 

c) Global assessment, other arguments and conclusion

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the services are partly identical and partly similar, the signs are visually highly similar and aurally and conceptually identical.

Therefore, irrespective of the distinctiveness of the earlier mark and the degree of attention of the relevant public, there clearly is likelihood of confusion.

Consequently, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 919 309. It follows that the contested trade mark must be rejected for all the contested services.

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 8(1)(a) 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, 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

 

 

Angela DI BLASIO

Kieran HENEGHAN

Begoña URIARTE VALIENTE

 

 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.