OPPOSITION No B 3 093 466

Online Business Entreprises, 24, rue Saint Mathieu, 78550 Houdan, France (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

MCR Info Electronic, S.L., C/ Gutenberg, 12, 28906 Getafe, Spain (applicant), represented by Jose Luis Donoso Romero, Avenida Isabel de Farnesio, 30 A, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

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

DECISION:

1. Opposition No B 3 093 466 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 046 922 ‘AB MATERIALS’, namely against all the goods in Class 16. The opposition is based on French trade mark registration No 3 378 980 . 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

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

Class 16: Paper, cardboard, printed matter; bookbinding material; stationery; adhesives for stationery or household purposes; plastic materials for packaging not included in other classes, namely bags, pouches, sheets and films; adhesive tapes for stationery or household purposes; adhesive bands for stationery or household purposes; address stamps; office staples; almanacs; starch paste for stationery or household purposes; writing slates; stickers (stationery); adhesive strips for stationery or household purposes; gummed tape (stationery); balls for ball-point pens; pads (stationery), drawing pads; spools for inking ribbons; wood pulp paper; cardboard or paper boxes; writing brushes; office requisites (except furniture); blotters, seals, cases for stamps; holders for stamps; inking pads, writing or drawing books; calendars; tracing paper, blueprints; note books; tags for index cards; folders for papers; binders (office supplies); cases for seals, stationery sets (office supplies); adhesives for stationery or household purposes; glue for stationery or household purposes; compasses for drawing; letter trays; correction fluids (office supplies); paper cutters (office requisites); covers (stationery); writing chalk, marking chalk; pencils, slate pencils; electric and non electric pencil sharpening machines; pencil leads; pencil holders; electric or non-electric pencil sharpeners; paper shredders (office requisites); drawing materials; drawing instruments; adhesive tape dispensers (stationery); apparatus for plastifying documents (office requisites); folders for papers; finger-stalls (office requisites); document files (stationery); writing materials; writing articles; rubber erasers; erasing products; writing board erasers; elastic bands for offices; inking ribbons; stamp pads; inkwells; envelopes (stationery); envelope sealing machines for office use; tear-off calendars; drawing squares; non-textile labels; sheets (stationery), plastic bubble packs for wrapping or packaging; index cards (stationery); school supplies; gum (glues) for stationery or household purposes; scrapers for offices; manifold paper; propelling pencils; moisteners; numbering apparatus; binding strips (bookbindings); stationery; copying paper (stationery articles); office perforators; clip boards (office requisites); fountain pens, nibs, gold nibs; penholders; drawing pins (tacks); ledgers (books); drawing rulers; bookbinding apparatus and machines (office equipment); bookbindings, indexes; inking ribbons for computer printers, typewriter ribbons; garbage bags (of paper or plastic); stamp pads; pens; scratch-pads; stamp stands, stamps (seals), sealing stamps; ruling pens; bookbinder's cloths; transparencies (stationery).

The contested goods are the following:

Class 16: Stationery and educational supplies; Writing and stamping implements; Office machines; Printing and bookbinding equipment; Stationery; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Office requisites; Books; Agendas; Periodicals; Adhesives for stationery; File folders; Binders; File dividers; Writing or drawing books; Pencils; Ball pens; Filing cases; Pencil cases; Drawing sets; Cases for stationery; Packing cardboard; Cartons of cardboard for packaging; Adhesive packaging tapes; Gift packaging; Book covers; Wrapping materials made of paper; Adhesive labels; Gift tags; Labels of paper; Ink sticks; Desk trays; File trays; Desk trays; Staples for offices; Seals [stamps]; Numbering stamps; Stamp inks; Ink stamps; Cellophane paper; Envelopes [stationery]; Gift bags; Paper bags; Carrier bags; Bags made of paper for packaging; Bags made of plastics for packaging; Paper mail pouches.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

Stationery; stationery supplies; writing or drawing books; envelopes [stationery]; adhesives for stationery; educational supplies; seals [stamps]; pencils; file folders; office requisites are identically contained in both lists of goods (including synonyms).

The contested bags and articles for packaging, wrapping and storage of plastics; gift packaging; gift bags overlap with, and are therefore identical to, the opponent’s plastic materials for packaging not included in other classes, namely bags, pouches, sheets and films.

The contested packing cardboard is included in the broad category of the opponent’s cardboard. Therefore, they are identical.

The contested cartons of cardboard for packaging overlap with the opponent’s cardboard boxes. Therefore, they are identical.

The contested cellophane paper; bags made of plastics for packaging are highly similar (or even identical) to the opponent’s plastic materials for packaging not included in other classes, namely bags, pouches, sheets and films. They have the same purpose and methods of use, producers, distribution channels and relevant public. Moreover, they can be in competition.

The contested bags made of paper for packaging; bags and articles for packaging, wrapping and storage of paper, cardboard; wrapping materials made of paper; are at least similar to the opponent’s cardboard or paper boxes. They have the same purpose, namely to pack, wrap or store goods, and they can have the same producers, distribution channels and relevant public. Moreover, they can be in competition.

The contested office machines is a broad category that includes the opponent’s bookbinding apparatus and machines (office equipment). 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 printing equipment include the opponent’s inking ribbons for computer printers. 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 printing and bookbinding equipment are included in the broad category of, or overlap with, the opponent’s bookbinding apparatus and machines (office equipment). Therefore, they are identical.

The contested books; agendas; periodicals; book covers are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested binders; file dividers; ball pens; drawing sets; adhesive labels; labels of paper; ink sticks; staples for offices; numbering stamps; stamp inks; ink stamps; paper mail pouches; writing and stamping implements are all included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested adhesive packaging tapes are included in the broad category of, or overlap with, the opponent’s adhesive tapes for stationery or household purposes. Therefore, they are identical.

The contested gift tags are at least similar to the opponent’s printed matter. They have the same nature, method of use and distribution channels.

The contested paper bags include the opponent’s garbage bags (of paper or plastic). 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 carrier bags are at least similar to the opponent’s garbage bags (of paper or plastic). They have the same purpose and the same methods of use. Moreover, they can have the same producers, distribution channels and relevant public.

The contested cases for stationery; filing cases; pencil cases; desk trays; file trays; desk trays are at least similar to the opponent’s stationery. These goods are complementary. They may also be produced by the same undertakings and distributed though the same channels to the same relevant public. Moreover, they will be found close to one another in the same retail outlets.

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 or similar 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 higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	AB MATERIALS
Earlier trade mark	Contested sign

The relevant territory is France.

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 figurative mark, consisting of the white, stylised letters and plus sign ‘A + B’ on a red, rectangular background with rounded corners. The element ‘A + B’ is distinctive as it has no clear meaning in relation to the relevant goods. The stylisation including the red background are less distinctive figurative elements of a purely decorative nature, though not completely immaterial in the present case as will be explained below.

The contested sign is a word mark, ‘AB MATERIALS’. The English word ‘MATERIALS’ will be understood by a major part of the French-speaking public as it is very close to the equivalent word in French, for example matériel (matériel d’écriture means writing material, information extracted from Collins Dictionary on 27/08/2020 at https://www.collinsdictionary.com/dictionary/english-french/material) and also since the relevant public is rather familiar with the English basic words among which ‘MATERIAL’ can be found. It is therefore non-distinctive for the relevant goods, as these are various materials such as stationery, writing and packing materials and other office materials. The letters ‘AB’ are a French abbreviation for ‘assez bien’ (‘pretty good’), and will be understood as such by at least a part of the public (information extracted from Collins Dictionary on 27/08/2020 at https://www.collinsdictionary.com/dictionary/french-english/ab). For this part of the public, the mark as a whole will be perceived as ‘pretty good materials’ and is therefore laudatory and weak for the relevant goods. For the part of the public that does not perceive this meaning, the combination of the letters ‘AB’ will not be associated with any clear, specific or unambiguous meaning, aside from the letters of the alphabet that the sign evidently represent. For this part of the public, it has no meaning in relation to the relevant goods and is, therefore, distinctive.

The element ‘A + B’ of the earlier sign is the dominant element as it is the most eye-catching.

The Opposition Division particularly points out that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letters ‘A’ and ‘B’. However, they produce some striking differences. They differ in the plus sign in between the two letters in the earlier sign which connects the two letter to a separate distinctive element and does not play a secondary role as argued by the opponent. The signs further differ in the verbal element ‘MATERIALS’, which is however non-distinctive. Finally, the signs differ in the stylisation of the earlier mark including the striking red colour.

Taking into account the fact that the distinctive elements of the marks are short and thus the differences between them are perceived more intensively, the signs are visually similar to a very low degree only.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A’ and ‘B’, however in the earlier mark with a plus sign in between, which makes the whole element likely to be pronounced significantly longer as [A plus B], whereas in the contested sign they are likely to be pronounce as [AB] only. The pronunciation differs in the sound of the letters ‘MATERIALS’ of the contested sign, which are however non-distinctive.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a different meaning for a part of the public (‘A plus B’ versus ‘pretty good materials’), the signs are conceptually dissimilar for this part of the public.

For the part of the public that does not see any meaning in the marks beside the letters (and plus sign) they represent, this public will still perceive them, as ‘A plus B’ versus the letters ‘AB’ (the first two letters in the alphabet) only (since the element ‘MATERIALS’ is non-distinctive). Therefore, for this part of the public, the signs are conceptually similar to only 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.

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 some weak elements in the mark (the figurative element including the stylisation), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical or at least similar. They are directed at the public at large and at business customers with an average to higher than average degree of attention.

The signs are visually similar to only a very low degree and aurally similar to a low degree. Conceptually, the signs are dissimilar for a part of the public and conceptually similar to a very low degree for another part. The distinctiveness of the earlier mark is normal.

In the present case, the overall perception of the marks is different, despite the presence of two common letters. The distinctive elements of the marks are short and in short signs, small differences may frequently lead to a different overall impression, as described above. This premise is applicable to this case, since the word ‘MATERIALS’ of the contested sign is considered non-distinctive. The earlier mark consists of the stylised combination ‘A + B’ with the plus sign clearly visible, whereas in the contested sign the letters ‘AB’ are part of a pure word mark. Being confronted with the short elements ‘A+B’ and ‘AB’, the relevant public is in a better position to perceive the differences. Thus the insertion of the + will be clearly perceived, both visually and aurally. The difference is further reinforced if the concept of ‘assez bien’ (‘pretty good’) is perceived in the contested sign. This is true even for the part of the public that displays an average degree of attention. Thus, and even though the goods are identical and similar, the Opposition Division finds that the differences between the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. The signs are not comparable, inter alia since they concern pure figurative signs or combined letter and numeral marks.

The opponent also refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

However, the previous national case referred to by the opponent is neither particularly relevant to the present proceedings. The signs are not comparable, inter alia because there is no clear plus sign between the two letters in the contested sign, but a much smaller, less significant mark.

Considering all the above, and even taking into account the above mentioned interdependence principle, 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

Martin MITURA

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.