OPPOSITION No B 3 066 801

Gruppo Zanellato S.r.l., Viale dell'Industria 55, 36100, Vicenza, Italy (opponent), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio 56, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Marco Lenzen, Biether Strasse 38, 41334 Nettetal, Germany (applicant)

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 801 is partially upheld, namely for the following contested goods:

Class 24: Textile goods, and substitutes for textile goods; Fabrics.

Class 25: Clothing; Headgear.

2. European Union trade mark application No 17 930 010 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 930 010 ‘Poetina’ (word mark). The opposition is based on European Union trade mark registration No 13 589 494 ‘POSTINA’ (word mark). The opponent invoked 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 goods and services

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

Class 18: Hides; Hides; Imitation leather; Leather for shoes; Leather shoulder belts; Hat boxes of leather; Leather for harnesses; Leather for harnesses; Moleskin [imitation of leather]; Trimmings of leather for furniture; Leather, Imitation leather and Untanned leather; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Covers for animals; Umbrella rings; Saddle trees; Saddlery; Key cases [leatherware]; Fastenings for saddles; Leather shoulder straps; Harness; Alpenstocks; Umbrella sticks; Vanity cases, not fitted; Trunks [luggage]; Baggage; Casual bags; Sling bags for carrying infants; Gym bags; Chain mesh purses; Tool bags of leather, empty; Baggage; Hand bags; Travelling sets (leatherware); Bridles (harness); Bridoons; Straps for soldiers' equipment; Kid; Briefcases; Satchels; Leatherboard; Cases, of leather or leatherboard; Head-stalls; Straps (Leather -); Collars for animals; Horse collars; Coverings of skins (furs); Horse blankets; Leather laces; Leather thongs; Straps of leather (saddlery); Harness traces; Straps for skates; Leather, unworked or semi-worked; Leather thread; Moleskin (imitation of leather); Umbrella covers; Whips; Knee-pads for horses; Casings, of leather, for springs; Saddle cloths for horses; Saddle cloths for horses; Trimmings of leather for furniture; Harness fittings; Leashes (leather); Imitation leather; Walking stick handles; Umbrella handles; Suitcase handles; Sling bags for carrying infants; Sling bags for carrying infants; Chin straps, of leather; Parasols; Blinders [harness]; Umbrellas; Hides; Cattle skins; Curried skins; Skins of chamois, other than for cleaning purposes; Fur; Card cases (notecases); Music cases; Wallets; Reins; Net bags for shopping; Furniture coverings of leather; Haversacks; Bags (Nose -) [feed bags]; Bags (envelopes, pouches) of leather, for packaging; Bags for campers; Beach bags; Baggage; Bags for climbers; Shopping bags; Wheeled shopping bags; Cases, of leather or leatherboard; Boxes of vulcanised fibre; Hat boxes of leather; Butts [parts of hides]; Walking stick seats; Riding saddles; Stirrups; Stirrup leathers; Umbrella or parasol ribs; Frames for umbrellas or parasols; Handbag frames; Harness traces; Baggage; Briefcases; Briefcases; Garment bags for travel; Valves of leather; Rucksacks.

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers; Glass cloths [towels]; Face towels [made of textile materials]; Towels; Bath linen, except clothing; Linens; Bed clothes and blankets; Tablecloths, not of paper; Diapered linen; Brocades; Calico; Canvas for tapestry or embroidery; Place mats, not of paper; Haircloth; Bed covers of paper; Rugs (Travelling -) [lap robes]; Curtain holders of textile material; Bed clothes; Dimity; Cotton fabrics; Crepe (fabric); Crepon; Damask; Labels; Handkerchiefs of textile; Pillowcases [pillow slips]; Mattress covers; Felt; Sanitary flannel; Flannel (fabric); Hat linings, of textile, in the piece; Coverings for furniture; Pillowcases [pillow slips]; Pillowcases [pillow slips]; Fitted toilet lid covers of fabric; Linings (textile); Flags, not of paper; Gauze (cloth); Washing mitts; Jersey (fabric); Cheviots (cloth); Bed sheets; Marabouts (cloth); Filtering materials of textile; Plastic material (substitute for fabrics); Fabrics; Drugget; Billiard cloth; Printers' blankets of textile; Wall hangings of textile; Eiderdowns (down coverlets); Door curtains; Tick [linen]; Coverings of plastic for furniture; Furniture coverings of textile; Sleeping bags (sheeting); Coasters (table linen); Bunting; Bolting cloth; Banners; Fabrics; Lining fabric for shoes; Woollen fabric; Table runners; Shrouds; Taffeta (cloth); Tablecloths, not of paper; Moleskin (textile); Hemp fabric; Calico; Ticks [mattress covers]; Oilcloth (for use as tablecloths); Gummed cloth, other than for stationery; Cheese cloth; Buckram; Curtains of textile or plastic; Shower curtains of textile or plastic; Fabrics; Adhesive fabric for application by heat; Hemp fabric; Hemp fabric; Flax fabrics; Rayon fabric; Ramie fabric; Silk [cloth]; Silk fabrics for printing patterns; Esparto fabric; Elastic woven material; Fabric of imitation animal skins; Fiberglass fabrics, for textile use; Knitted fabric; Non-woven textile fabrics; Upholstery fabrics; Fabric for footwear; Lingerie fabric; Fabrics; Traced cloths for embroidery; Chenille fabric; Frieze [cloth]; Place mats, not of paper; Textile napkins; Napkins, of cloth, for removing make-up; Trellis cloth; Bed covers; Tulle; Velvet; Net curtains; Mosquito nets; Zephyr cloth.

Class 25: Clothing, footwear, headgear; Clothing of imitations of leather; Clothing of leather; Motorists' clothing; Cyclists' clothing; Clothing for gymnastics; Gowns; Bath robes; Bath robes; Clothing; Bandanas (scarves); Bibs, not of paper; Caps (headwear); Berets; Underwear; Sweat-absorbent underwear; Smocks; Boas (necklets); Teddies (undergarments); Garters; Corsets; Galoshes; Skull caps; Footwear; Sports shoes; Stockings; Stockings (Sweat-absorbent -); Slippers; Socks; Jodhpurs; Short-sleeve shirts; Shirts; Jackets (Stuff -) [clothing]; Bodices [lingerie]; Headgear; Top hats; Paper hats (clothing); Jackets; Hoods (clothing); Footmuffs, not electrically heated; Belts for clothing; Money belts (clothing); Tights; Collars (clothing); Detachable collars; Camisoles; Headgear (for wear); Collar protectors; Ear muffs (clothing); Layettes [clothing]; Corsets; Suits; Beachwear; Masquerade costumes; Ties; Ascots; Swimming caps; Headbands for clothing; Pocket squares; Scarves; Fittings of metal for footwear; Ready-made linings (parts of clothing); Gabardines (clothing); Gaiters; Jackets [clothing]; Fishing vests; Garters; Skirts; Pinafore dresses; Aprons (clothing); Girdles; Gloves [clothing]; Mittens; Ski gloves; Welts for footwear; Mackintoshes; Ready-to-wear clothing; Paper clothing; Knitwear [clothing]; Jersey clothing; Leg warmers; Leggings (trousers); Liveries; Sports jerseys; Hosiery; Swimsuits; Pullovers; Muffs [clothing]; Maniples; Pelerines; Mantillas; Sleep masks; Skorts; Cowls [clothing]; Pants (Am); Bathing drawers; Waistcoats; Babies' pants [clothing]; Pants (Am); Parkas; Pelisses; Furs (clothing); Shirt yokes; Chasubles; Pyjamas; Wristbands clothing; Ponchos; Pullovers; Tips for footwear; Suspender belts for women; Sock suspenders; Brassieres; Sandals; Bath sandals; Saris; Sarongs; Footwear; Espadrilles; Bath shoes; Gymnastic shoes; Beach shoes; Football boots; Sports shoes; Ski boots; Shawls; Sashes for wear; Pants (Am); Lace boots; Wimples; Topcoats; Outerclothing; Dress shields; Trouser straps; Petticoats; Slips (undergarments); Shirt fronts; Ankle boots; Boots; Stoles (fur); Soles for footwear; Soles for footwear; Heelpieces for footwear; Pockets for clothing; Tee-shirts; Togas; Footwear uppers; Footwear uppers; Turbans; Wetsuits for water-skiing; Combinations (clothing); Uniforms; Veils (clothing); Visors [hatmaking]; Wooden shoes.

The contested goods and services are the following:

Class 16: Printed matter; Works of art and figurines of paper and cardboard, and architects' models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 24: Textile goods, and substitutes for textile goods; Fabrics.

Class 25: Clothing; Headgear.

Class 41: Publishing and reporting.

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 16

The contested goods in this class are printed matter; works of art and figurines of paper and cardboard, and architects' models; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics whereas the opponent’s goods are related to clothing, textiles and leather, luggage and articles for animals. The contested goods and the opponent’s goods have significantly different fields of application, their purpose, providers and distribution channels are all different. Therefore, they are considered dissimilar.

Contested goods in Class 24

Fabrics are identically contained in both lists of goods.

The contested textile goods, and substitutes for textile goods include, as a broader category the opponent’s bed clothes and blankets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

Clothing; headgear are identically contained in both lists of goods.

Contested services in Class 41

The contested services in this class are publishing and reporting whereas the opponent’s goods are related to clothing, textiles and leather, luggage and articles for animals. Due to their different nature(services are intangible while goods are tangible) and purpose and to the significantly different fields of application, providers, end users and distribution channels, all the goods of the earlier mark are different from those of the contested services. Therefore, they are considered dissimilar.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention for the relevant goods will be average.

c) The signs

POSTINA	Poetina
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).

Both signs are seven letter word marks. They are meaningless for the relevant public in relation with the relevant goods and have an average degree of distinctiveness.

Visually, the signs coincide in six out of the seven letters of both signs. They differ in their third letter, ‘S’ of the earlier mark versus ‘e’ of the contested sign. According to Office practice, it has to be borne in mind that, in the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether word marks are represented in upper or lower case letters.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛Po*tina’, present identically in both signs. The pronunciation differs in the sounds of the letter ‛S’ of the earlier sign and ‘e’ of the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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.

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, and the degree of similarity between the marks and between the goods or services identified (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, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly dissimilar and the services are dissimilar.

The signs are visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment. The marks are word marks that coincide in six letters out of seven of the sole verbal element of each sign. The difference between the signs, arising from their third letter, is not enough to counteract the similarity between them.

Account is taken of the fact that 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 part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Aurelia PEREZ BARBER

Keeva DOHERTY

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.