OPPOSITION No B 3 052 423

a&n&a GmbH & Co. KG, Benzstr., 35799 Merenberg, Germany (opponent), represented by Klunker IP Patentanwälte Partg Mbb, Destouchesstr. 68, 80796 München, Germany (professional representative)

a g a i n s t

Stilo Textil Tapicería y Decoración S.L., Pol. Ind. La Veja, parcela 28, 14640 Villa del Río / Córdoba, Spain (applicant), represented by Pons Consultores de Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 09/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 423 is upheld for all the contested goods.

2. European Union trade mark application No 17 776 601 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 776 601 for the figurative mark . The opposition is based on international trade mark registration No 1 111 385 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opponent requested to keep the arguments submitted on 25/10/2018 confidential vis-à-vis third parties by ticking the ‘confidential tick-box’ when using the electronic communication platform, yet the observations contain no explanation nor indication of any special interest nor any attempt to justify the confidential nature of the submission. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. Therefore, since the Office is not able to discern the reasons why this request might be justified, it does not consider these submissions confidential.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of international trade mark registration No 1 111 385 designating the European Union on which the opposition is based.

Earlier trade mark No 1 111 385 is an international registration designating the EU. Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 190(2) EUTMR for the earlier trade mark at issue is 14/02/2013. Therefore, the request for proof of use is inadmissible given that the earlier trade mark was not registered more than five years prior to the relevant date mentioned above, namely the date of filing of the contested application 06/02/2018.

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 goods

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

Class 21: Sponges, namely sponges for household purposes, cleaning sponges, pot cleaning sponges, car cleaning sponges, sponges for massages; brushes (except paint brushes); articles for cleaning purposes; steel wool; chamois leather for cleaning, cleaning instruments (hand-operated), cloth for washing floors, cleaning cloth, feather-dusters, dusting apparatus (non-electric), dusting cloths, gloves for household purposes, scrubbing pads.

Class 24: Textiles and textile goods, tissues, fabrics (non-woven), all afore-mentioned goods for cleaning purposes (included in this class), dish towels.

The contested goods are the following:

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

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 contested textiles and textile goods, not included in other classes include, as a broader category the opponent’s textiles and textile goods, all afore-mentioned goods for cleaning purposes (included in this class). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bed covers; table covers are similar to the opponent’s dish towels because they coincide in their distribution channels and relevant public. Moreover, they may be manufactured by the same producers.

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 and similar are directed at the public at large. The degree of attention is average.

c) The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign’s strapline ‘antimanchas de última generación’ is meaningful in Spanish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a figurative mark composed of the verbal element ‘AQUALINE’, slightly stylised in dark-blue lower-case letters against a rectangular yellow background. A stylised letter ‘Q’ in light blue is superimposed on this word, surrounding the letter ‘Q’ in the word as well as underlining it with a wavy line that partly extends beyond the yellow background. The sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a figurative mark composed of a blue drop shape with a white quotation mark within it and, below, the verbal element ‘ACUALINE’ in standard grey lower-case letters. The strapline ‘antimanchas de última generación’ is written in very small blue lower-case letters, just underneath the word ‘ACUALINE’.

Although the words ‘AQUALINE’ and ‘ACUALINE’ are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, the components ‘AQUA’ (in bold) of the earlier mark, and its slight variation ‘ACUA’ of the contested sign, will be associated with ‘water’ (i.e. ‘agua’ in Spanish) by the Spanish-speaking public. The prefix ‘AQUA’ is a common Latin word, ‘which the European Union consumer may be assumed to know’ (28/11/2013, T‑410/12, vitaminaqua, EU:T:2013:615, § 57, and 28/01/2015, T‑123/14, AquaPerfect, EU:T:2015:52, § 34). Since a direct correlation with the goods concerned cannot be established, these components are distinctive to a normal degree.

The coinciding component ‘LINE’ will be understood by the vast majority of the public under analysis because of its similarity to the equivalent Spanish word, ‘Linea’, which refers to, inter alia, a product type or range. Therefore, it has a less distinctive character than the other component of the signs.

As regards the rectangular yellow background in the earlier mark, since the use of backgrounds such as squares or frames is quite common and generally serve to highlight other elements (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T‑37/16, CAFFE NERO, EU:T:2016:634, § 42), it will be perceived as non-distinctive.

The wavy line of the stylised ‘Q’ of the earlier mark like the drop-shape with a white quotation mark of the contested sign come to reinforce the concept of ‘aqua’ (‘water’) conveyed by the verbal elements of the signs. Both the ‘Q’ and the drop shape have a normal degree of distinctiveness. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Finally, as regards, the phrase ‘antimanchas de última generación’, it will be understood as ‘latest generation stain resistant’. Since this expression makes a clear reference to characteristics of the goods as stain resistant, it has weak distinctiveness as well as a secondary nature due to its small size and position in the sign. Furthermore, the figurative and verbal element of ‘ACUALINE’ in the contested sign are the dominant elements as they are the most eye-catching due to their size and position in the sign.

Visually, the signs coincide in the string of letters ‘A*UALINE’, which constitute seven out of the eight letters that form the sole verbal element of the earlier mark and the dominant verbal element of the contested sign. These verbal elements differ in their second letter, ‘q’ and ‘c’ respectively. Moreover, the signs differ in their remaining elements, albeit that they are less distinctive or their impact on consumers is limited.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘A-K(C)UA-LI-NE’, present identically in both signs. The phrase ‘antimanchas de última generación’ will not be pronounced, because, as confirmed by the case-law, consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, they tend to shorten marks containing several words.

In view of the foregoing, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the concept of ‘waterline’ and the differing elements in the signs merely reinforce the concept of ‘water’ or are weak, the signs are conceptually highly similar.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 as a whole 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, despite the presence of less or non‑distinctive elements/components in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that the relevant public might make between the two marks and the degree of similarity between the signs and the goods (recital 11 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, Sàbel, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar. The degree of attentiveness of the relevant public is average. The earlier mark has a normal degree of inherent distinctive character. The signs are visually similar to an average degree, aurally identical and conceptually highly similar.

Consequently, and in particular bearing in mind that the difference in the dominant verbal element of the contested sign and the sole verbal element of the earlier mark is limited to only one letter which is, moreover, pronounced identically, there is a likelihood of confusion on the part of the public because average consumers 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Spanish-speaking part of the public. 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 international trade mark registration No 1 111 385 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

María del Carmen COBOS PALOMO

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.