OPPOSITION Nо B 3 113 748

 

Cart Technology, S.L., c/ San Nazario 12 con entrada por la C/ Corazón de María 67, 28002 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Kartell S.P.A., Via Delle Industrie, 1, 20082 Noviglio (MI), Italy (applicant), represented by Notarbartolo & Gervasi S.p.A., Viale Achille Papa, 30, 20149 Milan, Italy (professional representative).

On 25/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 113 748 is rejected in its entirety.

 

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

 

REASONS

 

On 10/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 162 511 ‘KARTELL’ (word mark). The opposition is based on Spanish trade mark registration No 4 023 670, . 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 12: Vehicles; apparatus for locomotion by land, air or water; carts; trolleys; shopping trolleys; luggage trolleys.

Class 39: Distribution of carts, trolleys, shopping trolleys, luggage trolleys.

The contested goods are the following:

Class 12: Cars; electric cars; robotic cars; automobile windshields; vehicle doors; wheels [of automobiles]; car doors; shock absorbers for automobiles; luggage racks for cars; torsion bar for automobiles; gear boxes for passenger vehicles; automobile hoods; automobile bodies; automobile chains; brake blocks for vehicles; hydraulic circuits for vehicles; horns for motor cars; seat covers for cars; cushions for use with car seats; interior fittings for automobiles; coverings for car seats; brakes for passenger vehicles; brake facings for vehicles; electric motors for motor cars; bumpers for automobiles; automobiles and structural parts therefor; windscreens of automobiles; tyres for motor vehicles; head-rests for car seats; luggage carriers (containers) for motor vehicles; ski carriers for cars; suspension systems for automobiles; rear-view mirror for automobiles; automobile chassis; windscreen wipers for motor cars; sunroofs for vehicles; sliding roofs for cars; convertible hoods for cars.

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.

 

The contested cars; electric cars; robotic cars; automobiles are included in the opponent's broad category of vehicles. Therefore, they are identical.

The contested vehicle doors; hydraulic circuits for vehicles; automobile bodies; automobile chains; automobile hoods; shock absorbers for automobiles; bumpers for automobiles; automobile chassis; ski carriers for cars; brake facings for vehicles; brake blocks for vehicles; coverings for car seats; structural parts therefor [automobiles]; head-rests for car seats; suspension systems for automobiles; windscreen wipers for motor cars; sunroofs for vehicles; electric motors for motor cars; horns for motor cars; automobile windshields; wheels [of automobiles]; car doors; luggage racks for cars; torsion bar for automobiles; gear boxes for passenger vehicles; seat covers for cars; cushions for use with car seats; interior fittings for automobiles; brakes for passenger vehicles; windscreens of automobiles; luggage carriers (containers) for motor vehicles; rear-view mirror for automobiles; sliding roofs for cars; convertible hoods for cars are similar to the opponent's vehicles because they coincide in relevant public and producer. Furthermore, they are complementary and may share the same origin.

The contested tyres for motor vehicles are similar to the opponent's vehicles because they coincide in relevant public and distribution channels. Moreover, these goods are complementary.

 

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 also 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.

Taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

The degree of attention is also deemed to be relatively high for goods such as  tyres for motor vehicles, that can be rather expensive besides having an impact on the safety.

  

 

c) The signs

	KARTELL
Earlier trade mark	Contested sign

  

The relevant territory is Spain.

 

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. It consists of the verbal element ‘CART’ depicted using fanciful white capital letters followed by the verbal element ‘TEC’, reproduced using black capital letters the last of which is slightly rotated counterclockwise.  

The contested sign is a word sign, ‘KARTELL’.

None of the aforesaid elements has a meaning per se in Spanish. However, account must be taken of the fact that the three letters ‘TEC’ are likely to be perceived as the abbreviation of the Spanish adjectives ‘técnico/tecnológico’ or a general reference to ‘tecnología’, the equivalent of which in English is technology. This abbreviation will be perceived as having a clear allusive content in relation to the goods in Class 12 to the fact that they are ‘technological’, and is, therefore, weak.

As regards the remaining elements, it must be kept in mind that the word ‘KART’ exists in Spanish, and is the equivalent of the English term that is used to define a very small motor vehicle with four wheels, used for racing.

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).

The Opposition Division deems that this element might be perceived in both signs, due to the similarities the element ‘CART’ shares with ‘KART’ and the coincidence in the initial part of the contested sign ‘KARTELL’. In case these elements are associated with the aforementioned meaning, it followss that, in view of the nature of the goods in Class 12, they are weak.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in three letters, namely ‘-ART’, that correspond to the second, third and fourth letters of the first element ‘CART’ of the earlier mark and to the second, third and fourth letter of the contested sign. However, they differ in their first letters, namely ‘C’ of the earlier mark and ‘K’ of the contested sign, in the last three letters ‘-ELL’ of the contested sign and in the second element ‘TEC’ of the earlier mark.

The coincidences are, in any case, confined to parts of the signs that are weak.

Therefore, the signs are, at most, visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CART-TE-‘ of the earlier mark and ‘KARTE-‘ of the contested sign, although it can be expected that the pronunciation of the two ‘TT’ of the earlier mark will be interrupted by a small pause. The signs differ in the pronunciation of their last letters, respectively ‘C’ of the earlier mark and ‘LL’ of the contested sign. Also from an aural perspective, it is important to note that the coincidences between the signs are limited to parts of the signs that are weak.

Thus, it can be concluded that the signs are aurally, at most, similar to an average 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 similar meaning, namely the concept of ‘KART’ but in consideration of the limited distinctiveness of this concept they have in common, the signs are conceptually, at most, 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 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 must be seen as low for all the goods and services in question. 

 

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, the degree of similarity between the marks 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, Sabel, EU:C:1997:528, § 22).

The goods are partly identical and partly similar. They are directed at the general public and also at the professional public. The degree of attention will vary from average to high and the distinctiveness of the earlier mark is low.

The signs are, at most, visually and conceptually similar to low degree and aurally similar to an average degree by virtue of the presence of letters that compose elements of limited distinctiveness. While the earlier mark will be perceived as being clearly formed by two different verbal elements, namely ‘CART’ and ‘TEC’, the contested sign will still be considered as a whole, although its initial part has a semantic content that directly refer to the kind of goods in Class 12, that is to say, inter alia, ‘karts and their accessories and/or components’.

As already mentioned, the similarities between the signs concern a verbal element that is of limited distinctiveness and secondary within the overall impression given by the signs. For these reasons the Opposition Division deems that said similarities are not sufficient to lead to a likelihood of confusion on the part of the public, also taking into account the high degree of attention of both the general and the professional public.

Considering all the above, 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

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Christophe DU JARDIN

 

 

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.