OPPOSITION No B 3 083 266

Industrie Cartarie Tronchetti SPA, Localita’ Piano Della Rocca, 55023 Borgo a Mozzano (Lucca), Italy (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Autobahn Tank & Rast GmbH, Andreas-Hermes Str. 7-9, 53175 Bonn, Germany (applicant), represented by Redeker Sellner Dahs, Willy-Brandt-Allee 11, 53113 Bonn, Germany (professional representative).

On 08/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 266 is upheld for all the contested goods, namely:

Class 16: Paper; paper tissues.

2. European Union trade mark application No 18 014 118 is rejected for all the contested goods. It may proceed for the remaining 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 18 014 118 (figurative mark), namely against all the goods in Class 16. The opposition is based on Spanish trade mark registration No 2 322 973 ‘FOXY’ (word mark) and European Union trade mark registration No 16 818 585 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

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 the trade marks on which the opposition is based.

However, the earlier European Union trade mark No 16 818 585 was registered on 27/09/2017. Therefore, and as already notified by the Office in its letter of 09/01/2020, the request for proof of use is inadmissible in relation to this earlier right as it was not registered for more than five years prior to the date of filing of the contested trade mark (23/01/2019).

Consequently, and for reasons of procedural economy, the Opposition Division will continue the examination at this point with regard to earlier European Union trade mark registration No 16 818 585.

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 16: Paper; hygienic paper; paper tissues; paper table covers; tissues of paper for removing make-up; table napkins of paper; paper towels; facial tissues of paper.

The contested goods are the following:

Class 16: Paper; paper tissues.

The contested paper; paper tissues are identically contained in the opponent’s list of goods.

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.

The degree of attention is considered to be 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public for which the verbal elements included in both signs are meaningful, such as the English-speaking part of the public.

The earlier trade mark is a figurative mark consisting of the verbal element ‘Foxy’ written in slightly stylised black title-case letters. The verbal element is surrounded by two rounded lines which are touching each other under the letter ‘F’ and are overlapped by the figurative element of a fox lying down above the letters ‘xy’. The additional verbal element ‘Magnificent’, in larger black title-case lettering, is placed under the verbal element ‘Foxy’.

The contested sign is also a figurative sign composed of the verbal element ‘FOXX’ in white upper-case letters placed against a dark grey rectangular background. There is a small depiction of a fox head in the space between the letters ‘XX’ which makes the stylisation of these letters slightly non-standard.

The verbal element ‘Foxy’ of the earlier mark will be understood by the public under analysis as ‘like a fox in appearance; good at deceiving people’ (information extracted from Cambridge Dictionary on 07/09/2020 at https://dictionary.cambridge.org/dictionary/english/foxy). Given that it has no relation to the goods in question, it is distinctive to an average degree.

The remaining verbal element of the earlier mark, ‘Magnificent’, means ‘very good, beautiful, or deserving to be admired’ (information extracted from Cambridge Dictionary on 07/09/2020 at https://dictionary.cambridge.org/dictionary/english/magnificent). The public under analysis will perceive this element as laudatory of the quality of the goods in question (e.g. they provide extra strength, ultra-light weight, softness and absorbency). Therefore, this element is non-distinctive.

The figurative element of a fox in the earlier mark reinforces the concept of the word ‘Foxy’ mentioned above and, as its meaning has no connection with the relevant goods, it is distinctive to an average degree. However, as regards the two lines around the word ‘Foxy’ in the mark described above, these are of a decorative nature only.

As regards the contested sign, the public under analysis is likely to associate its verbal element ‘FOXX’ with the English word ‘fox’ meaning ‘a wild mammal belonging to the dog family that has a pointed face and ears, a wide tail covered in fur, and often reddish-brown fur’ (information extracted from Cambridge Dictionary on 07/09/2020 at https://dictionary.cambridge.org/dictionary/english/fox). This is because the mere doubling of the letter ‘X’ does not prevent the English-speaking consumers from immediately perceiving the word ‘fox’ therein. Furthermore, the presence of the figurative element of a fox head in the contested sign will reinforce the concept of this animal for those consumers who do not overlook this element in the sign. None of the elements mentioned above is descriptive of the characteristics of the relevant goods and both are, therefore, distinctive to an average degree. However, the rectangular background of the sign will be perceived by the public under analysis as a simple geometrical shape with a merely decorative function. For this reason, it is considered non-distinctive.

The stylisation of the verbal elements of the signs (lettering, arrangement and colours) is merely decorative and thus its impact on the comparison of the signs is immaterial.

Finally, as regards the figurative elements and aspects of the signs, it should be noted that 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).

In terms of dominance, the verbal element ‘Magnificent’ of the earlier mark is larger than its remaining elements. Nevertheless, it cannot be considered to be the dominant element of the mark given that the other elements are clearly perceptible on account of their size and their top central position within the mark. Considering this, the earlier mark has no dominant (visually eye-catching) element.

In contrast, the verbal element of the contested sign overshadows its figurative element of a fox head by virtue of its central position and size. Therefore, the verbal element is the visually dominant element of the contested sign.

Visually, the signs coincide in the initial three letters ‘FOX*’ of their distinctive verbal elements ‘Foxy’ and ‘FOXX’, the latter being the dominant element of the contested sign. However, they differ in the last letters ‘Y’ and ‘X’ of those elements as well as in the verbal element ‘Magnificent’ of the earlier mark, which is found to be non-distinctive for the reasons explained above.

The signs further differ in their figurative aspects, some of which, as outlined above, perform only a decorative function.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FOX*’, present identically in both signs and constituting the majority of the distinctive verbal element ‘Foxy’ of the earlier mark and the entirety of the distinctive verbal element ‘FOXX’ of the contested sign in which double ‘XX’ will be pronounced as one by the public under analysis. The pronunciation differs in the sound of the final letter ‘Y’ of the word ‘Foxy’ and in the sound of the non-distinctive verbal element ‘Magnificent’ of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements.

The conceptual commonalities between the signs lie not only in their distinctive verbal elements ‘Foxy’ and ‘FOXX’ but they also result from their distinctive figurative elements representing a fox lying down in the earlier mark and a fox head in the contested sign. Consequently, these figurative elements support the semantic overlap between the marks under comparison.

Given that the public under analysis will associate the signs with the concept of a fox (and that the additional concept of the earlier mark lies in the non-distinctive element ‘Magnificent’), the signs are conceptually similar to an above-average degree for this part of the public.

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 been extensively used 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 as a whole has no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

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 that can be made with the registered mark, 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account must also be 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).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the relevant public in the relevant territory. The relevant public consists of the public at large, the degree of attention is average, and the earlier mark has a normal degree of inherent distinctiveness for the relevant goods.

As concluded above, the contested goods are identical to the opponent’s goods.

The signs in dispute are visually similar to a below-average degree and aurally and conceptually similar to an above-average degree, as explained in detail in section c) of this decision. They coincide in the initial three letters ‘FOX’ of their respective distinctive verbal elements ‘Foxy’ and ‘FOXX’, and in the concept of their distinctive figurative elements, though visually represented differently.

The signs differ in the last letters of the said verbal elements (although aurally the difference lies only in the last letter of the earlier mark’s verbal element, as indicated above), in the non-distinctive verbal element ‘Magnificent’ of the earlier mark and in the figurative aspects of the signs as described above, some of which are merely decorative in nature. However, these differences are not sufficient to counteract the similarities between the signs and to exclude a likelihood of confusion.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 818 585. 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.

The applicant argues that its EUTM is highly distinctive for the goods applied for. In this context, it must be noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

It follows from the above that the contested sign 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 extensive use 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 European Union trade mark registration No 16 818 585 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).

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

Kieran HENEGHAN

Martin MITURA

Christian STEUDTNER

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.