OPPOSITION Nо B 3 105 723

 

Duca Visconti di Modrone S.P.A., Corso di Porta Romana, 3, 20122 Milan, Italy (opponent), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

Berkshire Blanket & Home Co., Inc., 44 East Main Street, 01082 Ware, United States of America (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, HX1 2HY Halifax, United Kingdom (professional representative).

On 30/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 105 723 is rejected in its entirety.

 

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

REASONS

 

On 10/12/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 082 519, ‘VELVETSOFT’ (word mark), namely against all the goods in Classes 24 and 25. The opposition is based on European Union trade mark registration No 10 990 729, ‘VELVIS’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

 

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 24: Textiles and textile goods, not included in other classes; bed covers; table covers; glass cloths [towels]; face towels of textile; towels of textile; bath linen, except clothing; household linen; bed linen; table linen, not of paper; diapered linen; brocades; calico; canvas for tapestry or embroidery; tablemats, not of paper; haircloth [sackcloth]; bed blankets; bed covers of paper; travelling rugs [lap robes]; curtain holders of textile material; bed clothes; dimity; cotton fabrics; crepe [fabric]; crepon; damask; labels of cloth; handkerchiefs of textile; pillowcases; mattress covers; felt; sanitary flannel; flannel [fabric]; hat linings, of textile, in the piece; covers [loose] for furniture; covers for cushions; pillow shams; fitted toilet lid covers of fabric; linings [textile]; flags, not of paper; gauze [cloth]; washing mitts; jersey [fabric]; cheviots [cloth]; sheets [textile]; marabouts [cloth]; filtering materials of textile; plastic material [substitute for fabrics]; material (textile -); drugget; billiard cloth; printers' blankets of textile; wall hangings of textile; eiderdowns [down coverlets]; door curtains; tick [linen]; furniture coverings of plastic; furniture coverings of textile; sleeping bags [sheeting]; coasters [table linen]; bunting; bolting cloth; banners; cloth; lining fabric for shoes; woollen cloth; fabric, impervious to gases, for aeronautical balloons; table runners; shrouds; taffeta [cloth]; tablecloths, not of paper; moleskin [fabric]; hemp cloth; calico cloth (printed -); ticks [mattress covers]; oilcloth for use as tablecloths; gummed cloth, other than for stationery; cheese cloth; buckram; curtains of textile or plastic; shower curtains of textile or plastic; fabric; adhesive fabric for application by heat; hemp fabric; jute fabric; linen cloth; rayon fabric; ramie fabric; silk [cloth]; silk fabrics for printing patterns; esparto fabric; elastic woven material; fabric of imitation animal skins; fibreglass fabrics for textile use; knitted fabric; non-woven textile fabrics; upholstery fabrics; fabric for footwear; lingerie fabric; fabrics for textile use; traced cloths for embroidery; chenille fabric; frieze [cloth]; place mats, not of paper; serviettes of textile; napkins, of cloth, for removing make-up; trellis [cloth]; quilts; tulle; velvet; net curtains; mosquito nets; zephyr [cloth].

Class 25: Clothing, footwear, headgear; clothing of imitations of leather; clothing of leather; motorists' clothing; cyclists' clothing; clothing for gymnastics; dresses; dressing gowns; bath robes; non-slipping devices for footwear; clothing; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; underwear (anti-sweat -); smocks; boas [necklets]; teddies [undergarments]; suspenders; studs for football boots; corsets [underclothing]; galoshes; skull caps; footwear; boots for sports; stockings; stockings (sweat-absorbent -); slippers; socks; breeches for wear; short-sleeve shirts; shirts; stuff jackets [clothing]; bodices [lingerie]; hats; top hats; paper hats [clothing]; coats; hoods [clothing]; hat frames [skeletons]; footmuffs, not electrically heated; belts [clothing]; money belts [clothing]; tights; shoulder wraps; detachable collars; camisoles; headgear for wear; collar protectors; ear muffs [clothing]; layettes [clothing]; corselets; suits; beach clothes; masquerade costumes; neckties; ascots; bathing caps; shower caps; headbands [clothing]; pocket squares; scarfs; fittings of metal for footwear; ready-made linings [parts of clothing]; gabardines [clothing]; spats; jackets [clothing]; fishing vests; garters; skirts; jumper dresses; aprons [clothing]; girdles; gloves [clothing]; mittens; ski gloves; welts for footwear; waterproof clothing; ready-made clothing; paper clothing; knitwear [clothing]; jerseys [clothing]; leg warmers; leggings [trousers]; liveries; singlets; hosiery; swimsuits; sweaters; muffs [clothing]; maniples; pelerines; mantillas; sleep masks; skorts; miters [hats]; pants; bathing trunks; vests; babies' pants [clothing]; trousers; parkas; pelisses; furs [clothing]; shirt yokes; chasubles; pyjamas; cuffs; ponchos; pullovers; tips for footwear; stocking suspenders; sock suspenders; brassieres; heelpieces for footwear; heelpieces for stockings; sandals; bath sandals; saris; sarongs; shoes; esparto shoes or sandals; bath slippers; gymnastic shoes; beach shoes; football boots; sports shoes; ski boots; shawls; sashes for wear; underpants; lace boots; wimples; topcoats; outerclothing; dress shields; gaiter straps; petticoats; slips [undergarments]; shirt fronts; half-boots; boots; fur stoles; soles for footwear; inner soles; heels; pockets for clothing; tee-shirts; togas; footwear uppers; boot uppers; turbans; wet suits for water-skiing; combinations [clothing]; uniforms; veils [clothing]; cap peaks; wooden shoes.

 

The contested goods are the following:

 

Class 24: Bed sheets, sheet sets, pillow cases, pillow shams, bed blankets, bed covers, bed spreads, duvets, comforters, quilts, throws, bed throws, blanket throws and blanket throw sets; baby bedding, namely, bundle bags, swaddling blankets, fitted crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of paper; crib bedding, namely, sheets, bed blankets, baby crib throws, quilts, comforters and crib bumpers; and fitted fabric covers for baby changing pads.

Class 25: Infant wearable blankets; wearable blankets in the nature of blankets with sleeves, wearable blanket throws in the nature of throws with sleeves, robes, scarves; hats; sleep masks; clothing, namely, loungewear, pajamas, sleepwear, slippers, wraps, and sweatshirts.

Contested goods in Class 24

 

The contested bed sheets, sheet sets, pillow cases, pillow shams, bed blankets, bed covers, bed spreads, duvets, comforters, quilts, throws, bed throws, blanket throws and blanket throw sets; baby bedding, namely, bundle bags, swaddling blankets, fitted crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of paper; crib bedding, namely, sheets, bed blankets, baby crib throws, quilts, comforters and crib bumpers; and fitted fabric covers for baby changing pads are all included in the broad category of, or overlap with, the opponent’s textile goods, not included in other classes. Therefore, they are identical.

Contested goods in Class 25

The contested infant wearable blankets; wearable blankets in the nature of blankets with sleeves, wearable blanket throws in the nature of throws with sleeves, robes, scarves;; clothing, namely, loungewear, pajamas, sleepwear, wraps, and sweatshirts are all included in the broad category of, or overlap with, the opponent’s clothing. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Sleep masks are identically contained in both lists of goods.

The contested slippers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 deemed average.

c) The signs

 

VELVIS	VELVETSOFT
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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

‘VELVIS’ has no meaning in any of the languages of the relevant territory and is distinctive to a normal degree in relation to the relevant goods, whereas ‘VELVETSOFT’ is a combination of the English words ‘VELVET’ and ‘SOFT, which the English-speaking part of the public, at least, will understand as meaning ‘a cloth usually made from silk or cotton with a thick, soft surface’ and ‘not hard or firm’, respectively. For this part of the public, both words may be perceived as an indication of a quality or a characteristic of the goods, namely that they are made of velvet and that they are soft to touch. Hence, these elements are non-distinctive for the English part of the public. Yet, while it is not excluded that other parts of the relevant territory may understand both words or at least ‘soft’ which is nowadays commonly used on all sorts of goods to describe their aforementioned quality or characteristic, it remains that part of the public in the relevant territory does not understand ‘velvet’ and, possibly, ‘soft’. Therefore, at least the former is distinctive to a normal degree in relation to the contested goods.

In view of all the foregoing, and contrary to the opponent’s view, conceptually, the signs are not similar for the part of the public that understands at least one of the elements of the contested sign whereas for the remaining part of the public for which the contested sign has no meaning whatsoever, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in their initial letters ‘VELV-’. They also have the letter ‘S’ in common but this letter is placed in a different position within the signs. The signs differ in their final letters, namely ‘-I(S)’ in the earlier mark and ‘-ET(S)OFT’ in the contested sign.

The opponent contends that 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. While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark it must be stressed that this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, account must be held of the following aspects which clearly have an impact on the overall visual impression created by the signs at issue. First of all, the General Court has held that the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency. Therefore, it is inevitable that many words will have the share some letters, but they cannot, for that reason alone, be regarded as visually similar (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). In addition, apart from the aforementioned differences, the signs differ also significantly in their lengths (6 letters vs 10 letters) and the length of the signs may influence the effect of the differences between them.

In view of all the foregoing and taking further into account the degree of distinctiveness of the different elements composing the contested sign for the different parts of the public, the signs are visually only similar to a low degree.

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 ‛VELV-’, present identically in both signs. The pronunciation of the signs differs in any event in the sound of the letter ‘I’ of the earlier mark and the sound of the letters ‘ET*OFT’ of the contested sign. While the signs also share the sound of the common letter ‘S’, it remains that this coincidence is subdued by the sound of the respective preceding letters which are different, namely ‘I’ in the earlier mark’ and ‘ET’ in the contested sign. Therefore, the signs are similar to a 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 considers that the expression ‘VELVIS’ has to be deemed as having a high degree of distinctiveness, since it does not have any link with the nature, quality or characteristics of the goods it refers to. Yet, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and in any event, the opponent did not file any evidence in order to prove such a claim within the time limit set to the opponent to substantiate the earlier right and submit further material which, following an extension, ultimately expired on 20/07/2020. It should be recalled that a mark will not 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). An enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market.

 

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 has indeed no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, contrary to the opponent’s view and in accordance with the Office’s practice as detailed in the Office’s guidelines, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

In the present case, all the contested goods - directed at the general public with an average degree of attention -, have been found identical to the opponent’s goods whereas the signs have been found to be visually and aurally similar to a low degree.

The opponent recalls the case law according to which likelihood of confusion within the meaning of Article 8(1)(b) EUTMR must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, a similarity between the trademarks and between the goods and services. Accordingly, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, and vice versa.

Furthermore, the opponent reminds of the principle according to which the more distinctive is the earlier mark, the greater will be the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character” (see ECJ C-39/97, judgment of 29/09/1998, case “Canon”.).

Yet, first of all, it should be noted that, the earlier mark does not enjoy enhanced distinctiveness. Indeed, the distinctiveness of the earlier mark must be seen as normal as established above.

In addition, while indeed likelihood of confusion implies some interdependence between the relevant factors, this principle does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by the signs.

In the present case, even taking the interdependence principle into account, the Opposition Division does not consider that there is a likelihood of confusion between the signs at issue. Indeed, the Opposition Division considers that in spite of the letters that the signs have in common, the differences are clearly perceptible whether visually or aurally and that, therefore, they clearly outweigh the similarities. Actually, visually, these differences are all the more relevant given that the goods at issue are goods that customers are generally bought in shops where customers can choose themselves those they wish to buy themselves in the shops or can be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused as detailed above are particularly relevant when assessing the likelihood of confusion between them. For the sake of completeness, even if the elements ‘VELVET’ and/or ‘SOFT’ of the contested sign are non-distinctive for part of the public, this circumstance does not change anything to the above since both elements convey a concept which helps to distinguish even better the contested sign from the meaningless earlier mark.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

 

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

 

 

Félix ORTUÑO LÓPEZ

Martina GALLE

Chiara BORACE

 

 

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.