OPPOSITION No B 3 091 210

Nanu-Nana Joachim Hoepp GmbH & Co. KG, Sögestr. 45, 28195 Bremen, Germany (opponent), represented by Nordemann Czychowski & Partner Rechtsanwältinnen und Rechtsanwälte mbB, Helene-Lange-Straße 3, 14469 Potsdam, Germany (professional representative)

a g a i n s t

Albacom Biz Srl, str. Bucuresti, nr.88, Alba-Iulia, Alba-Iulia, Romania (applicant), represented by Adina Silviana Timonea, Strada Mihai Veliciu, 400423 Cluj-Napoca, Romania (professional representative).

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

DECISION:

1. Opposition No B 3 091 210 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 and services of European Union trade mark application No 18 056 114 for the figurative mark , namely against all the goods in Class 16 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 7 303 449 for the figurative 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 16: Paper and paper articles, cardboard and goods of cardboard (included in class 16), stationery, hinged cards, papier mâché; artists' materials; paper; projection screens; drawing pencils; paint boxes; paint brushes; paints; coloured pencils; easels; palettes; modelling paste; modelling materials; drawing instruments; sculptures, postcards, all the aforesaid goods included in class 16; toilet paper.

Class 35: Retail services, namely in relation to artists' materials, paper goods and in the field of arts and crafts; mail order services, namely in relation to artists' materials, stationery and in the field of arts and crafts.

The contested goods and services, following a limitation made by the applicant on 01/08/2019, are the following:

Class 16: Stationery and educational accessories; paper; adhesives; materials for filtering paper; materials and means for decoration and art; art objects and figurines of paper and architectural models; printing products; bags and articles for packaging, packaging and storage of paper and plastics; covers for dental instrument trays, made of paper; decorative paper articles for the center of the table; paper bibs; table paper decorations; paper cleaning disks; paper coffee filters; paper garlands; paper covers for flower pots; scented paper for cabinets; drawer paper, scented or unscented; paper banners; paper towels; kitchen rolls [paper]; decorative flags of paper; paper holders for cocktail glasses; table stands for glasses, made of paper; table cloths; paper towels for cosmetic purposes; umbrellas made of paper for cocktail; paper table sleepers; paper cup holders.

Class 35: Retail services connected with stationery; Retail services for works of art provided by art galleries; Retail services in relation to printed matter; Retail services in relation to stationery supplies; Retail services in relation to art materials; Retail services in relation to works of art; Retail services in relation to disposable paper products; Wholesale services in relation to stationery supplies; Wholesale services in relation to art materials; Wholesale services in relation to works of art; Wholesale services in relation to printed matter; Wholesale services in relation to disposable paper products.

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.

As put forward by the opponent, it is true that in relation to most of the goods and services concerned, the degree of attention will be average since they concern relatively inexpensive everyday goods. However, in relation to at least some of the services concerned, such as retail services for works of art provided by art galleries, the degree of attention may also be high since they may involve expensive goods which are not purchased frequently.

Therefore, the degree of attention of the relevant public may vary from average to high depending on the goods and services in question.

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).

Both signs are figurative marks. The earlier mark is composed of the verbal element ‘ProArt’, within two black lines, the first part is depicted in standard black font and the second part in a bold stylised font and the first letter ‘P’ and letter ‘A’ are in upper case. Below these elements, in a legible, but small size, there is the word ‘Künstlerbedarf’ between two dots and underlined by a black line.

The contested sign is composed of the words ‘Pro’, in white, standard font, within a green rectangle and ‘Cart’, in black standard font, within a white rectangle all of which is surrounded by a rectangular thin grey line. At the upper right side there is the symbol ®, which merely informs that the mark is registered, and will therefore not be taken into account in the comparison of the signs.

Although, 'ProArt' in the earlier mark is depicted as 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 view of this principle, the relevant public will split the verbal element into the two elements ‘Pro’ and ‘Art’ which will both have a concrete meaning for the relevant public throughout the European Union as explained further below. Such dissection is also emphasised by the use of the initial capitalisation of the letter 'P' as well as the atypical capitalisation of the letter ‘A’ in the middle of the verbal element. The fact that the element ‘Pro’ is presented in a different font and the following part, ’Art’, is in a bold different typeface also allows one to reasonably assume that the relevant public will perceive them as separate elements.

The word element ‘Pro’ of both signs will be understood by the relevant public within the European Union as a common abbreviation for ‘professional’ (11/09/2014, T‑127/13, Pro outdoor, EU:T:2014:767, § 58) but it may also be understood in the sense of ‘advantage, benefit; in favour of’ at least by a part of the public since this is the first and often the only meaning for this word in languages such as Spanish, Dutch and German (30/04/2020, R 1798/2019-1, -Vpro (fig.) / B PRO by Boomerang (fig.) et al., § 33). Either way, the element ‘Pro’ in the present case, will be of weak distinctive character, as it will either be perceived as being a laudatory claim referring to the positive, or best, qualities associated with goods and services used by professionals or addressed to professionals, or otherwise associated with the meaning of a positive, affirmative adverb.

The word ‘ART’, of the earlier mark, will be perceived by the relevant public in the whole European Union as something artistic and, therefore, beautiful and pleasant to the eye (28/09/2016, T-593/15, THE ART OF RAW / *art (fig.) et al., EU:T:2016:572, § 31-33; (06/12/2016, T-735/15, SHOP ART (fig.) / *art (fig.) et al., EU:T:2016:704, § 41). Indeed, this word exists in the same or very similar forms in most of the relevant languages and is a commonly used English word. This word is descriptive for most of the goods and services concerned which are or may be directly related to art, such as artists' materials, palettes, modelling materials and sculptures in Class 16 and retail services, namely in relation to artists' materials, paper goods and in the field of arts and crafts in Class 35 and is, for that reason, non-distinctive in relation to the same. Furthermore, in relation to the goods and services that are not, or not directly, related to art, such as toilet paper in Class 16 and mail order services, namely in relation to stationery in Class 35, the word 'ART' still evokes the idea that there has been an artistic design work that confers a valuable aesthetic character on those goods (including those sold via mail order services). Thus, in relation to those goods and services the word ‘ART’ constitutes a laudatory term and has for that reason a limited distinctive character in relation to them.

The word ‘Künstlerbedarf’ means 'art supplies' for the German-speaking part of the public. Bearing in mind what has been stated above in relation to the meaning and distinctiveness of the word ‘ART’ in relation to the goods and services concerned, for the same reasons as those outlined above, for this part of the public this element is therefore also either non-distinctive or weak in relation to the same. For the remaining part of the public, it is meaningless and, therefore, distinctive to a normal degree as such. Nevertheless, bearing in mind the position at the bottom of the sign and much smaller size, the verbal element ‘Künstlerbedarf’ will either way be perceived as a secondary element in the earlier mark. The black lines and dots in the earlier mark are merely decorative and are therefore non-distinctive as such.

The verbal element ProArt is the dominant (visually most eye-catching) element in the earlier mark in view of its position at the top and much larger size.

The term ‘Cart’ will be understood by the English-speaking part of the public as ‘an old-fashioned wooden vehicle that is used for transporting goods or people. Some carts are pulled by animals’ or to ‘a small vehicle with a motor’ (information extracted from Collins English Dictionary on line on 05/08/2020 at https://www.collinsdictionary.com/dictionary/english/cart). Another part of the relevant public, for example the German-speaking part, will understand the word ‘Cart’ also as ‘small motor vehicle in which golfers can ride between shots’. Furthermore, a part of the relevant public may also associate the term with ‘Kart’, a small vehicle used for racing and another part of the public may perceive it as a fanciful, meaningless word. In any event neither of these concepts, or the lack thereof, has any particular meaning in relation to the relevant goods and services, and therefore, the term ‘Cart’ has a normal distinctiveness. For the part of the public which associates the term ‘Cart’ to the concept mentioned, this element alludes to the subject matter of Retail services in relation to printed matter and Wholesale services in relation to printed matter and it is therefore weak in relation with these services and it is distinctive in relation to the rest of goods and services. For the public that may perceive it as a meaningless word, this element is distinctive in relation to all the goods and services.

The rectangular background (in two different colours) of the contested sign is non-distinctive as such since the use of such backgrounds is commonplace. The contested sign has no element that is more dominant than other elements.

Visually, the signs coincide in the element ‘Pro’, present at the beginning of both signs. However, this element is weak, as explained above. The signs also coincide in the letters ‘-art’, which will however be perceived as consisting of the word 'Art' in the earlier mark and is either non-distinctive as such or otherwise still of a limited distinctiveness as explained above, whereas these letters will clearly be perceived as forming part of the word 'Cart' in the contested sign, regardless of whether it is distinctive to a normal degree or weak. The signs also differ in the stylisation, figurative elements and colours of both signs, which, without being especially unusual or striking still produce an overall different impression due to the different fonts, decorations and colours and the fact that the earlier mark is depicted as one verbal element whereas the contested sign is depicted in two separate words clearly delimited by a vertical line and the use of two different background colours. Finally, even if it will have little impact in the overall impression produced by the earlier mark (in view of its position, smaller size and limited distinctiveness, if any), the signs also differ to the extent that the earlier mark contains the additional verbal element ‘Künstlerbedarf’.

Therefore, even if both signs contain verbal elements that share most of their letters, the signs are still visually similar only to a low degree overall.

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 ‘Pro’ at the beginning of both signs and in the sound of the letters ‘art’. They only differ in the sound of the first letter ‘C’ of the contested sign’s second word ('Cart') but which will be clearly audible. However, taking into account that the additional verbal element ‘Künstlerbedarf’ will be perceived as a secondary element as explained above and bearing in mind that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, e.g. 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41), the relevant public is unlikely to pronounce this word when referring to the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As explained above, the verbal element 'ProArt' in the earlier mark will be perceived as a conceptual unit by the public throughout the relevant territory either as meaning 'professional art' or as meaning 'to the benefit/in favour of art' whereas the verbal elements 'Pro' and 'Cart' of the contested sign will be perceived, by a part of the public, as a conceptual unit that is different, namely 'professional' or 'to the benefit/in favour of' a specific type of vehicle (in any of the meanings set out above). For this part of the public, the signs are not conceptually similar since the overall concepts they convey are different.

However, as regards the part of the public that may not perceive any meaning in the additional word 'Cart' of the contested sign, the signs are conceptually similar to a low degree to the extent that they will both be associated with the weak concept of the coinciding word 'Pro' (in either of its meanings as set out above).

As regards the additional verbal element ‘Künstlerbedarf’ in the earlier mark, it will either be perceived as meaningless and will thus not have an impact on the conceptual comparison between the signs or it will otherwise be associated with 'art supplies' and thus merely reinforce the concept conveyed by the word 'Art', which is not present in the contested sign. Consequently, this element in the earlier mark will not create any conceptual similarities between the signs or any further differences between them.

Therefore, the signs are either conceptually not similar or otherwise conceptually similar only to a low degree overall.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole is at most below average in relation to the goods and services in question. In this respect, even if the additional verbal element ‘Künstlerbedarf’ must be considered distinctive as such for a large part of the public in the relevant territory, it will still have a marginal impact in the overall impression produced by the sign in view of its secondary nature and the dominant verbal element 'ProArt' is at most weak for the reasons set out.

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 and services were assumed to be identical and the degree of attention on the part of the public may vary from average to high depending on the goods and services in question.

The signs are visually similar to a low degree, aurally similar to a high degree and, depending on the relevant public in question, conceptually not similar or otherwise conceptually also similar only to a low degree. Furthermore, the distinctiveness of the earlier mark as a whole is at most below average.

The signs coincide in their verbal element ‘Pro’, at the beginning of both signs but which has a weak distinctive character for the reasons set out above in section c) of this decision. Furthermore, even if the respective additional words in both signs also share the letters ‘-art’, the signs will readily be perceived by consumers as containing two different words, namely ‘Art’ in the earlier mark as opposed to ‘Cart’ in the contested sign and thus with a clearly different conceptual connotation. Moreover, even if the additional word ‘Cart’ in the contested sign may be meaningless for a part of the public, that part of the public would still immediately grasp the meaning of the additional word ‘Art’ in the earlier mark and would therefore still be able to clearly distinguish between them.

It is of crucial importance that the similarity of the signs is therefore essentially confined to an element of limited distinctiveness. The earlier mark’s second element ‘Art’, is furthermore a short element and the shorter a sign, the more easily the public is able to perceive all of its single elements. As the contested sign ‘Cart’ is neither a long word, thus, the difference in their first letter will be easily noticed as will their different figurative elements and the atypical capitalisation of the letter ‘A’ in the depiction of ‘ProArt’ as one verbal element.

Moreover, even if the signs have been found to be aurally highly similar, the goods themselves in Class 16 are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see, by analogy, 15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). In relation to the retail and wholesale services concerned in Class 35, the visual aspect of the signs will also be important as the relevant public will generally perceive the marks visually, either as displayed on the signs of the establishments, for example when a customer enters a retail store, or as shown on the relevant websites or in product catalogues if the services are offered online or by mail order. Therefore, the visual aspect of the signs is particularly relevant in the case at hand.

Assessment of the similarity between two signs involves more than taking just one component of a composite trade mark and comparing it with another mark. The general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35).

Therefore, even if the signs share many of their letters, since both the visual and, in particular, the immediate conceptual difference between the signs will not go unnoticed by consumers in relation to the goods and services concerned, the phonetic similarities, even if high, are not sufficient to lead to a likelihood of confusion on the part of the public in relation to 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.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Sam GYLLING

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.