OPPOSITION Nо B 3 115 827

 

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

 

Dongguan Chuanxin Gift Co., Ltd., Shop A, F/1, No.519, Huangjiang Avenue, Huangjiang Town,, Dongguan, People’s Repuplic of China ( (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 28/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 115 827 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 202 320 is rejected in its entirety.

 

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

 

REASONS

 

On 09/04/2020, the opponent filed an opposition against all the goods (Class 21) of European Union trade mark application No 18 202 320 ‘AsaNana’ (word mark). The opposition is based on European Union trade mark registration No 15 434 756, ‘NANA’. 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, inter alia, the following:

 

Class 21: Candlesticks, glassware, porcelain, earthenware and stoneware (all included in class 21), household items, namely storage containers, butter dishes, salt and pepper mills, trays, dustbins; Cooking utensils, namely cooking spoons, Storage baskets, Strainers, Beaters, Skimmers, Spatulas, Corkscrews, electric and non-electric, Bottle openers, electric and non-electric; Waste paper baskets; Linen bins; Bread baskets for household purposes; Basins [bowls]; Stands for bowls; Cookware, buckets and hand-operated utensils for chopping, milling and pressing; Garden vessels, flower pots, bins; Money boxes of plastic; Metal coin banks; Vanity cases, Toilet utensils for body care, Appliances for removing make-up, non-electric, Hairbrushes, Nail brushes, Perfume vaporizers, Powder compacts, not of precious metal, Shaving brushes and shaving brush stands, Soap boxes, soap dispensers, soap holders, soap dishes; Combs and sponges, Comb (electric); Brushes (except paintbrushes); Toilet roll holders, Toothbrushes and dental floss; Toothbrushes, electric; Decorations of glass, porcelain, earthenware and stoneware; Non-metal coin banks; Household or kitchen utensils and containers.

The contested goods are the following:

 

Class 21: Glass flasks; cosmetic utensils; fitted vanity cases; make-up brushes; make-up sponges; isothermic bags; containers for household or kitchen use; toothbrushes, electric; barbecue mitts; kitchen mitts; oven mitts; drying racks for laundry; combs for animals; electric brushes, except parts of machines; eyelash brushes; cleaning instruments, hand-operated; car washing mitts; litter boxes for pets; litter trays for pets; egg yolk separators; bottle openers, electric and non-electric; Griddles [cooking utensils]; Grills [cooking utensils].

 

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 and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

Contested goods in class 21

Toothbrushes, electric; containers for household or kitchen use; bottle openers, electric and non-electric is/are identically contained in both lists of goods (including synonyms).

The contested make-up brushes; eyelash brushes are included in the opponent's broad category of brushes (except paintbrushes). Therefore, they are identical.

The contested kitchen mitts; isothermic bags; barbecue mitts; oven mitts; drying racks for laundry; combs for animals; cleaning instruments, hand-operated; car washing mitts; litter boxes for pets; litter trays for pets; egg yolk separators; griddles [cooking utensils]; grills [cooking utensils] are included in the opponent's broad category of household or kitchen utensils and containers. Therefore, they are identical.

The contested electric brushes, except parts of machines overlap with the opponent's toothbrushes and dental floss, since there are electric toothbrushes. Therefore, they are identical.

The contested glass flasks are included in the opponent's broad category of decorations of glass, porcelain, earthenware and stoneware. Therefore, they are identical.

The contested cosmetic utensils; make-up sponges are included in the opponent's broad category of toilet utensils for body care. Therefore, they are identical.

The contested fitted vanity cases are included in the opponent's broad category of vanity cases. 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 considered to be average.

 

 

c) The signs

 

NANA	AsaNana
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 marks are word marks. The protection of a word mark concerns the word as such and, in principle, it is, therefore, irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration. The perception of the relevant public, who will not fail to notice the use of irregular capitalisation, cannot be disregarded.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Apart from that, an element may also be identified as a part of a single word where a visual separation allows it to be perceived independently, such as irregular capitalisation. Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts.

This being said, in the present case the public will most likely break down the contested sign into its two elements ‘Asa’ and ‘Nana’, because of its irregular capitalisation. Furthermore, for part of the public its element ‘Nana’ (being also the earlier mark) has a concrete meaning.

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.

The common element ‘Nana’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in Ireland and Malta.

 

The first element ‘Asa’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark ‘nana’, forming also the second element of the contested sign, will be understood as ‘a silly person; a fool’ by the relevant public (see Oxford Dictionary). In relation to the goods at hand, however, it has no specific meaning and is, therefore, fully distinctive. 

Visually and also aurally the signs coincide in ‘Nana’. However, they differ in the additional Element ‘Asa’ of the contested sign.

  

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Insofar as both signs will be perceived as referring to a foolish person, the signs are conceptually similar to an average 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 .

e) Global assessment, other arguments and conclusion

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods are identical. The signs are visually, aurally and conceptually similar to an average degree.

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).

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).

While it is true that the first part of a mark’s word elements may be more likely to catch the consumer’s attention than the other parts that follow, because the public reads from left to right, this assumption does not, however, apply in all cases (16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, § 70 and the case-law cited). The assertion that the beginning of the mark applied for is the part that particularly attracts the consumer’s attention cannot be assessed independently of the facts of the present case, and in particular the specific characteristics of the signs at issue (13/04/2011, T‑228/09, U.S. Polo Assn., EU:T:2011:170, § 37).

Both signs contain the element ‘Nana’, which is fully distinctive. They differ in the element ‘Asa’, which is prefixed in the contested sign and is absent from the earlier mark. The contested sign, thus, reproduces the earlier mark in its entirety. The elements ‘Asa’ and ‘Nana’ carry equal weight in the overall impression of the contested sign, so that consumers have no reason to exclusively focus on the first element ‘Asa’. Moreover, the irregular capitalization of the contested sign makes the element ‘Nana’ clearly perceivable in it.

Therefore, and despite the differences at the beginning of the contested sign (which as a whole has no concrete meaning), consumers will perceive the element ‘Nana’, which is identical to the earlier trade mark, as having an independent distinctive role, and will assume that the identical goods of both parties are from the same or economically linked undertakings (see 11/06/2014, T-401/12, JUNGBORN / BORN, EU:T:2014:507, § 35-36).

Considering all the above, there is a likelihood of confusion on the part of 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 EUTM registration No 15 434 756. It follows that the contested trade mark must be rejected for all the contested goods.

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

 

 

Lars HELBERT

Konstantinos MITROU

Tobias KLEE

 

 

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.