OPPOSITION No B 3 095 329

S.A.M. Marques de l'état de Monaco - Monaco Brands, L'Estoril 31 avenue Princesse Grace, 98000 Monaco, Monaco (opponent), represented by Nony, 11, rue Saint Georges, 75009 Paris, France (professional representative)

a g a i n s t

rlc packaging GmbH, Andertensche Wiese 21, 30169 Hannover, Germany (applicant), represented by Schindhelm Rechtsanwaltsgesellschaft mbH, Aegidientorplatz 2 B, 30159 Hannover, Germany (professional representative).

On 08/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 095 329 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 (Classes 16, 20, 21 and 41) of European Union trade mark application No 18 046 220 (figurative mark ). The opposition is based on, inter alia, international trade mark registration No 1 069 254 (word mark ‘MONACO’) designating France and the European Union. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 069 254.

1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives (glues) for stationery or household purposes; artists' materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for repackaging (not included in other classes); printing type; printing blocks.

Class 39: Transport; packaging and storage of goods.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

The contested goods and services are the following:

Class 16: Paper and cardboard; Printed matter; Bookbinding material; Photographs; Adhesives for stationery; Packaging materials of paper, cardboard, plastic or starch; Decorative materials and artists' materials and artists' requisites; Works of art and figurines of paper, cardboard, plastic or starch, and architects' models; Bags, pouches and goods of paper, cardboard, plastic or starch for packaging, wrapping and storage purposes; Humidity control sheets of paper, cardboard, plastic or starch; Food wrappers; Decorations of cardboard for foodstuffs; Adhesive packaging tapes; Containers and boxes of paper, cardboard, plastic or starch; Booklets, pamphlets, wrappers (stationery), tickets, travel tickets, chromolithographs (chromos), flyers, plastic film and sheets of reclaimed cellulose for wrapping, photographs, photo-engravings, graphic representations and graphic reproductions, engravings, wood pulp paper, wood pulp board, envelopes (stationery), cards, paperboard, catalogues, wrapping paper.

Class 20: Containers for storage purposes, and closures and holders therefor, not of metal (other than for household and kitchen use); Packaging containers, and closures and holders therefor (not of metal); food containers for commercial packaging use; Boxes of wood or plastic; Parts and fittings for all the aforesaid goods included in this class.

Class 21: Unworked or semi-worked glass (except glass used in building); Glassware (worked or semi-worked); Glass flasks [containers], Glass jars, Insulated containers and Insulating jars; Parts and fittings for all the aforesaid goods included in this class.

Class 41: Entertainment; Arranging and conducting of conferences, congresses, exhibitions, symposiums, evening events, events; Ticket reservation and booking of seats for events; Leasing and rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

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.

2. 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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

MONACO
Earlier trade mark	Contested sign

The relevant territory is the European Union and France respectively.

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 earlier mark is a word mark, consisting of the sole word ‘MONACO’. The contested sign is a figurative mark, containing a black and golden figurative device on its top and underneath the word elements ‘MONACO’ and ‘CONNECTION’, both in black standard uppercase letters.

The earlier word mark ‘MONACO’ (and the respective element of the contested sign) refer to the Principality of Monaco, a sovereign microstate located on the French Riviera.

According to the Court’s finding ‘it is clear that ‘Monaco’ is the name of a principality which is known across the world, despite its area of about 2 km² and its population of no more than 40 000, not least because of the fame of its royal family and the fact that a Formula 1 grand prix and a circus festival are held there. There is an even greater degree of familiarity with the Principality of Monaco among citizens of the EU, due especially to its frontier with a Member State, France, its proximity to another Member State, Italy, and the fact that the principality — a third State — uses the same currency as 19 of the 28 Member States, the euro’. Therefore, ‘regardless of the language spoken by the relevant public, there is no doubt that the word ‘monaco’ will evoke the geographical territory of the same name’ (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 52-3). Consequently, the earlier mark ‘MONACO’ indicates the geographical origin of the goods and/or its subject matter (e.g. printed matters) or the place of rendering the services and is, therefore, of utterly low (minimal) distinctiveness.

In this regard, it has to be reminded that earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. This also applies to international registrations.

For the sake of completeness, the Opposition Division notes that part of the Italian-speaking consumers may associate the earlier word mark (and the respective element of the contested sign) ‘MONACO’ with the German city of Munich, since this is the Italian name of it. In any event, the element in this case is likewise of utterly restricted distinctiveness, since it denotes the geographical origin.

The element ‘CONNECTION’ of the contested sign will be perceived by the English-speaking part of the public as ‘a relationship in which a person, thing, or idea is linked or associated with something else’ (see Oxford Dictionary). This is also the case for those parts of the public where the equivalents are very similar, e.g. for the Spanish-, French- or Italian-speaking parts of the public (conexión, connexion, connessione). For other parts of the public, however, e.g. the Greek-speaking consumers, this element has no meaning. In any case, whether meaningful or not, this element is fully distinctive in relation to the goods and services at issue, since it is not descriptive, allusive or otherwise weak. Finally, the same applies to the figurative element of the contested sign which is not a simple shape or banal decorative element, but rather fanciful.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘MONACO’ which, however, is an utterly weak element. They differ in the additional element ‘CONNECTION’ and the figurative device of the contested sign which are both fully distinctive.

Therefore, the signs are similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in sound of the letters ‘MONACO’, present identically in both signs, which however, constitute an utterly weak element. The pronunciation differs in the sound of the letters ‘CONNECTION’, which have no counterparts in the earlier sign.

Therefore, the signs are similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same microstate, which, however, as an indication of geographical origin is of a very restricted distinctiveness, and since the contested sign conveys also other concepts, the signs are, at best, conceptually similar to a very low degree.

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

4. 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. Considering what has been stated above in section c) of this decision, the distinctiveness per se of the earlier mark must be seen as utterly low (minimal) for all the goods in question.

5. Global assessment, other arguments and conclusion

The opposition has been examined under the assumption that all the contested goods and services are identical.

The signs in question are similar only to a very low degree.

The earlier mark is entirely reproduced in the contested sign, however, this fact on itself cannot lead to a likelihood of confusion, since the earlier mark is of utterly weak (minimal) distinctiveness. Although it must be acknowledged, in light of the ‘F1-Live’ judgment (24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 47), that the element ‘MONACO’ has some independent distinctive character because of the designation of the sign ‘MONACO’ as an earlier international registration, that does not mean, however, that this element has such a sufficient level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that element. To the contrary, the scope of protection of such signs is very limited and, thus, in case of conflicting signs as regards their similarity extremely great demands are placed in order to conclude the existence of a likelihood of confusion, e.g. when the signs in conflict differ only slightly in their stylization or non-distinctive figurative devices etc. and the similarity, therefore, is extremely high (or nearly identical).

However, this is not the case here. Because of the different overall impressions given by the marks as a result of the additional word ‘CONNECTION’ in the contested mark and its figurative element, which have no counterpart in the earlier word mark and which are more distinctive than the word element ‘MONACO’, that element in the mark applied for is not likely to bring to mind an association with 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.

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.

The opponent has also based its opposition on the following earlier trade mark:

• international trade mark registration No 1 439 126 designating Greece, Cyprus, Estonia, Lithuania, Spain, Germany, Poland, Austria, Portugal, Slovakia, Romania, Slovenia, Hungary, United Kingdom, Benelux, Czech Republic, Sweden, Ireland, Croatia, Denmark, France, Italy, Bulgaria, Finland and Latvia, for the figurative mark -

This other earlier right invoked by the opponent is less similar to the contested mark. This is because, apart of the utterly weak element ‘MONACO’, it contains a further figurative element, which is not present in the contested trade mark. Therefore, the outcome cannot be different; no likelihood of confusion exists with respect to this earlier mark.

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

Lars HELBERT

Konstantinos MITROU

Tobias KLEE

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.