OPPOSITION No B 3 085 332

Giemme Stile S.P.A., Via del Torrione, 16, 36060 Romano d'Ezzelino (Vicenza), Italy (opponent), represented by Brunacci & Partners S.R.L, Via Scaglia Est, 19-31, 41126 Modena, Italy (professional representative)

a g a i n s t

XXXlutz Marken GmbH, Römerstr. 39, 4600 Wels, Austria (applicant), represented by Braun-Dullaeus Pannen Emmerling Patent- und Rechtsanwaltspartnerschaft mbB, Platz der Ideen 2, 40476 Düsseldorf, Germany (professional representative).

On 09/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 332 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 029 517 ‘MOLOCO’. The opposition is based on European Union trade mark registration No 16 784 936 ‘ATELIERMOLON‘ and Italian trade mark registration No 2 017 000 024 647 ‘MOLON ATELIER’. 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:

European Union trade mark registration No 16 784 936

Class 19: Wood panelling; Wooden floor boards; Laths, not of metal; Parquet flooring; Wooden flooring; Veneer wood; Wood trim; Wooden doors; Wood, semi-worked; Manufactured timber.

Class 20: Furniture; Coatstands; Benches [furniture]; Console tables; Bookcases; Lawn furniture; Doors for furniture; Screens [furniture]; Furniture shelves; Racks [furniture]; Writing desks; Mirrors [furniture]; Furniture moldings; Showcases [furniture]; Head-rests [furniture]; Drawers [furniture parts]; Fitted fabric furniture covers; Legs for furniture; Bedroom furniture; Furniture for displaying goods; Bathroom furniture; Seating furniture; Office furniture; Furniture partitions of wood; Screens for fireplaces [furniture]; Towel stands [furniture]; Furniture casters, not of metal; Recliners [furniture]; Washstands [furniture]; Furniture partitions; Furniture fittings, not of metal; Mobiles [decoration]; Point of sale displays [furniture]; Ceramic pulls for furniture; Brackets, not of metal, for furniture; Picture frames; Moldings [mouldings] for picture frames; Mirrors (silvered glass); Mirror tiles; Hand-held mirrors [toilet mirrors]; Divans; Armchairs; Beds; Bed bases; Bedsteads of wood; Bumper guards for cots, other than bed linen; Bed chairs; Seats; Chair pads; Tables; Counters [tables]; Table tops; Dining room tables; Trolleys [furniture]; Footstools; Mirrors enhanced by electric lights; Statues of wood, wax, plaster or plastic; Statuettes of bone; Ivory; Cushions; Trestles [furniture]; Busts of wood, wax, plaster or plastic; Figurines [statuettes] of wood, wax, plaster or plastic; Ladders of wood or plastics; Woven timber blinds [furniture]; Works of art of wood, wax, plaster or plastic; Louvre blinds [indoor]; Slatted indoor blinds; Vertical blinds [indoor]; Thermal blinds [indoor]; Interior textile window blinds.

Class 24: Curtains; Valances; Window furnishing fabrics; Curtain linings; Curtain fabric; Textile piece goods for making curtains; Interior decoration fabrics.

Class 35: Presentation of goods on communication media, for retail purposes; Sales promotions at point of purchase or sale, for others; Business advice and consultancy relating to franchising; Business advisory services relating to the establishment and operation of franchises; Advertising services provided via the internet; Providing consumer product information via the Internet; Arranging and conducting trade show exhibitions; Organization of trade fairs for commercial or advertising purposes; Retail services in relation to fabrics; Wholesale services in relation to fabrics; Wholesale services in relation to furniture; Retail services in relation to furniture; Retail services connected with the sale of furniture; Wholesale services in relation to furnishings; Retail services in relation to furnishings; Business advice relating to franchising.

Class 42: Shop interior design; Design services for furniture; Information services relating to the harmonisation of colours, paints and furnishings for interior design; Interior design; Design of building interiors; Consultation services relating to interior design; Consultancy relating to selection of furnishing fabrics [interior design]; Design of interior decor; Graphic arts design; Industrial design; Architectural services for the design of retail premises; Research services; Design services for architecture; Construction drafting; Analysis and evaluation of product design; Visual design; Engineering design; Product design; Architectural design.

Italian trade mark registration No 2 017 000 024 647

Class 19: Wood panelling; wooden floor boards; laths, not of metal; parquet flooring of wood; wooden flooring; veneer wood; wood trim; wooden doors; wood, semi-worked; manufactured timber.

Class 20: Furniture; coatstands; benches [furniture]; console tables; bookcases; upholstered furniture; garden furniture; doors for furniture; screens [furniture]; furniture shelves; racks [furniture]; desks; mirrors [furniture]; furniture; frames; showcases [furniture]; head-rests [furniture]; drawers [furniture parts]; fitted furniture covers of fabric; legs for furniture; furniture made of wood or wood substitutes; bedroom furniture; computer furniture; furniture for displaying goods; outdoor furniture; bathroom furniture; seating furniture; office furniture; furniture moldings; furniture partitions of wood; screens for fireplaces [furniture]; towel stands [furniture]; furniture casters, not of metal; paper racks [furniture]; recliners [furniture]; washstands [furniture]; furniture partitions; furniture fittings, not of metal; mobiles [decoration]; point-of-purchase displays [furniture]; ceramic pulls for furniture; furniture handles, not of metal; brackets, not of metal, for furniture; picture frames; moldings for picture frames; mirrors [looking glasses]; mirror tiles; hand-held mirrors [toilet mirrors]; divans; armchairs; beds; bed bases; bedsteads of wood; bumper guards for cots, other than bed linen; chair beds; chairs [seats]; mattress cushions; chair pads; tables; counters [tables]; table tops; dining tables; office tables; trolleys [furniture]; stools; mirrors enhanced by electric lights; statues of wood, wax, plaster or plastic; statues of bone, ivory, plaster, plastic, wax or wood; cushions; trestles [furniture]; busts of wood, wax, plaster or plastic; figurines [statuettes] of wood, wax, plaster or plastic; ladders of wood or plastics; woven timber blinds [furniture]; works of art of wood, wax, plaster or plastic.

Class 35: Retail or wholesale services for woven fabrics; obtaining contracts for the purchase and sale of products; presentation of goods on communication media, for retail purposes; computerized on-line retail store services; window dressing services for retail shops; retail or wholesale services for furniture; sales promotions at point of purchase or sale, for others; business advice relating to franchising; management services relating to franchising; business advisory services relating to the establishment and operation of franchises; advertising services provided via the Internet; providing consumer product information via the Internet; arranging and conducting trade show exhibitions; organization of trade fairs for commercial or advertising purposes.

Class 42: Architectural design; product design; technical design; design of artwork; analysis and evaluation of construction drafting; design services for architecture; research and design services; design of building interiors and exteriors; consultation services relating to design; planning services for design and building, and advice relating thereto; architectural services for the design of retail premises; industrial design; graphic arts designer services; interior design; design of interior decor; consultation services relating to interior design.

The contested goods and services are the following:

Class 20: Furniture and furnishings; Mirrors (silvered glass); Picture frames; Mattresses.

Class 21: Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Unworked and semi-worked glass, not specified for use; Tableware, cookware and containers.

Class 24: Bed blankets; Sleeping bags; Bed clothes and blankets; Bed covers; Cloth; Covers for cushions; Curtains of textile or plastic; Fabrics; Felt; Furniture coverings of plastic; Handkerchiefs of textile; Linens; Mattress covers; Place mats, not of paper; Shower curtains of textile or plastic; Tablecloths, not of paper; Towels of textile; Upholstery fabrics; Wall hangings of textile.

Class 35: Retail services in relation to furniture; Retail services in relation to kitchen appliances; Retail services in relation to toiletries; Retail services in relation to lighting; Retail services in relation to tableware; Retail services in relation to furnishings; Retail services in relation to domestic electrical equipment; Retail services in relation to cups and glasses.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average depending on the nature and cost of the goods and services.

c) The signs

a) EUTM No 16 784 936 ATELIERMOLON b) IT No 2 017 000 024 647 MOLON ATELIER	MOLOCO
Earlier trade marks	Contested sign

The relevant territory is the European Union for earlier mark a) and Italy for earlier mark b).

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 marks are word marks.

The contested sign has no meaning for the relevant public and is, therefore, distinctive.

As regards the earlier mark a), although it is 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 the present case at least the French, English, Italian, Hungarian and Romanian speaking public would break the mark into words ATELIER and MOLON.

For this public, the word ATELIER, present in both of the earlier marks, refers to a workshop of an artist or of a bespoke tailor. In trade, the word ‘ATELIER’ is used in a broader sense. The public is likely to perceive it as a small business establishment which offers creative solutions and specifically designed or tailor-made goods and services. Therefore, the Opposition Division concurs with the opponent that the verbal element ‘ATELIER’ is at least allusive and weak (if not non-distinctive) in relation to the goods and services covered by the earlier marks. For the remaining public who perceive no meaning in the word, it is distinctive.

The word MOLON in both earlier marks has a meaning in Romanian (a rectangular building block made of stone) and Hungarian (pier). As it has no sufficiently close link with the goods or services, it is distinctive for this public, as well as it is distinctive for the public that perceives no meaning in this word.

Visually and aurally, the earlier sign a) and the contested sign coincide only in four letters MOLO, which are placed in the middle of the earlier sign and that are the first four letters of the contested sign. In the earlier sign b) these letters are the first four letters of its first word element. The signs differ in length. The earlier sign a) has twelve letters, and b) has twelve letters divided into two word elements (five and seven letters) while the contested sign has six letters.

The marks have different structures. The marks do not coincide in any complete word element. Both earlier marks incorporate a word/ letter sequence ATELIER, which is not present in the contested sign; even though this term has a limited impact due to its reduced distinctiveness for a part of the public, this word does form a point of visual difference between the signs. The earlier mark a) has also a different beginning compared to the contested mark. It is noted, that the 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. Due to the different structures and length of the marks, they also have aurally a different rhythm and stress, irrespective of the different pronunciation rules in different parts of the relevant territory.

The marks furthermore differ in their endings, which is CO in the contested sign, whereas the earlier marks end in ON and IER, respectively.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, for the public for which none of the signs has a meaning, a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Although part of the public in the relevant territory will perceive the meanings of (some of) the words in the earlier marks, but not in the marks as a whole, as explained above, the contested sign nonetheless has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation. Instead, the opponent claimed “we believe that the distinctiveness of the earlier trademarks can be seen, at least, as normal / high.”. However, the opponent did not file any evidence in order to prove such a claim of high distinctiveness.

The Opposition Division notes, that it is Office practice to consider an earlier mark which is not descriptive (or is not otherwise non-distinctive), as having no more than a normal degree of inherent distinctiveness. It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, each of the earlier trade marks as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element for part of the public in the marks as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical. The marks are visually and aurally similar to a low degree and have no concepts or are not conceptually similar.

The marks as a whole are only remotely similar as a result of the coincidence in the letters MOLO which are placed in different positions in the marks. The earlier mark a) and the contested sign clearly differ in their beginnings, where the consumer focuses its attention. The marks also differ in their endings, in their overall length and setup. The earlier marks have additional elements, weak or non-distinctive for part of the public, not present in the contested mark. The similarities of the signs are not sufficient for a likelihood of confusion to exist, contrary to the opponent’s arguments. For part of the public the earlier marks contain clearly identifiable elements with clear concepts, none present in the contested mark.

The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the principle of imperfect recollection. Therefore, consumers are unlikely to assume that the goods and services labelled with the earlier marks and goods and services of the contested sign come from the same or economically-linked undertakings. The clearly perceptible differences between the signs will not be overlooked by the relevant customer, even if they were used for identical goods or services, contrary to the arguments of the opponent.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same as is the case here due to differing factual points.

Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Erkki MÜNTER

Biruté SATAITE-GONZALEZ

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.