OPPOSITION Nо B 3 113 928

 

Industria de Diseño Textil, S.A. (Inditex, S.A.), Avenida de la Diputación "Edificio Inditex", 15142 Arteixo (A Coruña), Spain (opponent), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Kermi Gmbh, Pankofen-Bahnhof 1, 94447 Plattling, Germany (applicant), represented by Patentanwälte Bressel und Partner mbB, Park Kolonnaden Potsdamer Platz 10, 10785 Berlin, Germany (professional representative).

On 09/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 113 928 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 161 709 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 12/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 161 709 ‘ZARI’ (word mark). The opposition is based on the following earlier rights:

 European Union trade mark application No 8 929 952 ‘ZARA’ (word mark);

 European Union trade mark registration No 112 755 ‘ZARA’ (word mark); and

 European Union trade mark registration No 3 177 995 ‘ZARA HOME’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

PRELIMINARY REMARKS

The applicant contests the admissibility of the opposition based on European Union trade mark application No 8 929 952 ‘ZARA’ (word mark).

In this regard, the Court of Justice has confirmed clearly that the Office is under no obligation to examine all the earlier oppositions, rights and legal grounds invoked against the same EUTM application, if one of them suffices to reject the EUTM application. This principle allows for a more expedient treatment of oppositions. The Office is free to choose what it regards as the ‘most effective’ opposition(s), earlier right(s) and legal ground(s) and which one to examine first in light of the principle of procedural economy.

The applicant also refers to the search report provided by the Office (Annex 1) and claims that no EU trade marks were identified to be relevant in respect of the contested sign in terms of likelihood of confusion.

The sole purpose of the search is to inform the applicant for an EU trade mark, in a non-exhaustive manner, whether there are any conflicts with regard to relative grounds for refusal. They are not intended to produce information useful to the examination of absolute grounds for refusal (07/06/2001, T-359/99, EuroHealth, EU:T:2001:151, § 31). The Office’s search report cites only those trade marks that have been discovered and may potentially be invoked under Article 8 EUTMR. It does not preclude other trade marks that have not been discovered and not listed from being invoked in opposition proceedings (11/12/2014, R 1160/2014-1, VALUA (fig. mark) / VALEA et al, § 37).

 

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 European Union trade mark registration No 3 177 995 for the word mark ‘ZARA HOME’.

 

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; electrically heated cushions and blankets, not for medical purposes; toasting apparatus, clothes drying apparatus; baths, bidets, bulbs, electric coffee percolators, electric heaters for baby bottles; cookers, showers, lighters, lanterns, sinks, lamp bulbs, taps, lamps, lavatories, torches, blankets, oil lamps, lamp shades, hair drying appliances, electric clothes dryers; toilet bowls; Aquarium filtration apparatus; ash pits for furnaces; bath fittings; carbon for arc lamps; chimney blowers; distillation apparatus; filters [parts of household or industrial installations]; filters for air conditioning; fire bars; fittings, shaped, for furnaces; fittings, shaped, for ovens; fountains; framework of metal for ovens; friction lighters for igniting gas; furnace grates; gas lighters; hot air bath fittings; humidifiers for central heating radiators; lamp glasses; lampshade holders; lamp globes; lighters; ornamental fountains; pipe line cocks [spigots]; purification installations for sewage; safety accessories for water or gas apparatus and pipes; tanning apparatus [sun beds]; toilet seats; taps [faucets]; ultraviolet ray lamps, not for medical purposes; water-pipes for sanitary installations.

After a limitation on 18/12/2020, the contested goods are the following:

Class 11: Heating elements, radiators. 

The contested heating elements, radiators are included in the broad category of the opponent’s apparatus for heating. 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 displaying an average degree of attention at the time of the purchase.

 

c) The signs

 

 

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the first element of the earlier mark, ‘ZARA’, is not a common name, it may be perceived as a female name by part of the relevant public. However, for another part of the public the term will be meaningless. In any event, since it has no clear and unequivocal meaning in relation to the relevant goods it is distinctive.

It cannot be excluded that the Czech-speaking part of the public could associate the contested sign ‘ZARI’ with the Czech word ‘září’ (meaning September), as claimed by the applicant. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which this element is meaningless and hence distinctive, such as the English‑speaking part of the public, as this is the scenario in which a likelihood of confusion will most likely arise.

The verbal element ‘HOME’ of the earlier trade mark will be understood by the English-speaking part of the public as the place where one lives or where one feels at home This verbal element is non-distinctive in relation to the relevant goods, since it clearly refers to the fact that the apparatus for heating are meant for home and for household purposes.

Visually and aurally, the signs coincide in the first three letters and sounds, ‘ZAR*’, and differ in the last letter and sound, namely ‘A’ of the earlier mark and ‘I’ of the contested sign. The signs also differ in the non-distinctive element ‘HOME’ of the earlier trade mark.

The Opposition Division points out 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.

Therefore, taking into account the distinctiveness of the elements, the signs are visually and aurally similar to an above average degree.

Conceptually, although the relevant public will perceive the meaning(s) of the element(s) 'HOME' and ‘ZARA’ in the earlier mark, as explained above, the contested sign has no meaning. Since the contested sign will not be associated with any meaning, the signs are not conceptually similar. However, the impact of this conceptual difference is rather limited for the part of the public for which ‘ZARA’ is meaningless, taking into account the fact that the element 'HOME' is non‑distinctive .

 

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.

  

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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 the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark, and the sign and between the goods or services identified. 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 are identical and they target the public at large, whose degree of attention is average. The earlier mark has a normal degree of inherent distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Contrary to the applicant’s argument, it has also been concluded that the signs are visually and aurally similar to an above average degree and not conceptually similar. The earlier trade mark contains the verbal element of the contested sign almost in its entirety. The signs differ in one letter and in a non‑distinctive additional element of the earlier mark, ‘HOME’. Given all the circumstances, the Opposition Division finds that the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical and will perceive them as having the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public for which ‘ZARI’ is meaningless, such as the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 177 995. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 3 177 995 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Accordingly, there is no need to assess the evidence of use as requested by the applicant in respect of one of those earlier rights.

Furthermore, since the opposition is fully successful on the basis of the inherent distinctiveness of the earlier mark and on the ground of Article 8(1)(b) EUTMR, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation, as claimed by the opponent, and further examine the other ground of the opposition, namely Article 8(5) EUTMR. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

 

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

 

 

The Opposition Division

 

 

Marta GARCÍA COLLADO

Carlos MATEO PÉREZ

Sofía SACRISTÁN MARTÍNEZ

 

 

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.