OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 416 413
Esther Llongueras Poveda, C/ Pere Berruguete, 4 – Ciutat Diagonal, 08950 Esplugues De Llobregat, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)
a g a i n s t
2112 S.r.l., Via Aristide de Togni 7, 20123 Milano, Italy (applicant), represented by Perani & Partners SPA, Piazza San Babila, 5, 20122 Milano, Italy (professional representative).
On 26/10/2015, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods and services of
Community trade mark application No
Spanish trade mark registration No 2 899 424
Spanish trade mark registration No 2 975 666
The opponent invoked Article 8(1)(a) and (b) CTMR.
The opponent indicated in the Notice of Opposition, submitted on 07/10/2015, that the opposition was based on all the goods and services for which the earlier trade marks are registered. Within this same document, it listed goods and services in Classes 3 and 35.
On the same date, the opponent submitted arguments in support of the opposition, in which it indicated (i.e. within the sections entitled ‘ARGUMENTS’ and ‘PREVIOUS ISSUES’) that the two earlier marks (i.e. Spanish trade mark registrations No 2 899 424 and No 2 975 666) were registered for goods and services in Classes 3, 35, 41 and 44.
There is a discrepancy between the two documents. In the Notice of Opposition, the indication ‘based on all’ the goods and services is followed by a list of only two classes, whereas in the opponent’s arguments it is stated that the totality of the goods and services for which the earlier marks were registered belong to a total of four classes.
Accordingly, there is a discrepancy in the information and documents submitted by the opponent within the opposition period, in relation to the classes on which the opposition is based.
The Guidelines refer to a similar scenario in which the registration certificate of an earlier mark was submitted within the opposition period but there occurred a discrepancy between the Notice of Opposition and the registration certificate. In the case described in the Guidelines, the registration certificate showed more classes than those listed in the Notice of Opposition, despite the fact that it was indicated that the opposition was based on ‘all goods and services’ for which the earlier mark is registered.
The Guidelines for Examination in the Office, Part C, Opposition, when this contradiction takes place, state:
‘Additionally, where the opponent indicates in the opposition form that the opposition is based on ‘all goods and services for which the earlier right is registered’ but then lists only ‘part’ of these goods and services (when compared with the registration certificate or relevant official extract attached to the opposition form) the Office will, in order to overcome the contradictory information contained in the Notice of Opposition, assume that the opposition is based on ‘all goods and services for which the earlier right is registered’.
Therefore, being this followed by analogy the opposition is considered to be based on all goods and services for which the earlier marks are registered, namely those in Classes 3, 35, 41 and 44.
SUBSTANTIATION OF EARLIER TRADE MARK NO 2 899 424
According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.
According to Rule 19(3) CTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.
According to Rule 98(1) CTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.
In the present case, the Notice of Opposition was not accompanied by any evidence regarding the earlier rights.
On 10/11/2014, the opponent submitted the registration certificates of the two Spanish trade marks on which the opposition is based, together with a translation.
However, the translation of the registration certificate of earlier Spanish trade mark No 2 899 424 does not meet the requirements set in Rule 98(1) CTMIR, since it does not reproduce the structure and contents of the original documents. The discrepancy is found in a piece of text appearing in the translation that does not exist in the original Spanish registration certificate, namely the last line of the first page of the translation and the first paragraph of the second page of the translation, which reads, in the English translation, as follows:
‘CLASS 41 GRANTED LIMITED TO:
EDUCATION AND RECREATION SERVICES; TRAINING SERVICES; CONTESTS SERVICES ORGANIZATION; EXHIVITIONS, CONFERENCES, SEMINARS; TEXT PUBLICATION THAN ADVERTISING TEXTS; EXHIBITION SEVICES ORGANIZATION CULTURAL EDUCATIONAL PURPOSES’
It follows that the translation of the registration certificate of earlier Spanish trade mark No 2 899 424 submitted by the opponent cannot be taken into account.
According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.
opposition will now proceed on the basis of earlier Spanish trade
No 2 975 666 .
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
PRELIMINARY REMARK – THE TRANSLATION OF THE GOODS AND SERVICES OF EARLIER TRADE MARK No 2 975 666
The Opposition Division notes that there are discrepancies between the wording of the goods and services in the translation of the registration certificate of earlier Spanish trade mark No 2 975 666 and the goods and services listed in the Notice of Opposition, as the basis of the opposition.
This discrepancy relates not only to the number of classes listed, to which the previous PRELIMINARY REMARK refers, but also to the exact wording used.
In relation to this discrepancy, the Opposition Division will rely on the wording of the goods and services included in the translation of the registration certificate of earlier Spanish trade mark No 2 975 666, and not that included in the Notice of Opposition.
Therefore, the Opposition Division considers that the goods and services listed in the translation of the registration certificate are those on which the opposition is based.
The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Products cosmetics and perfumes, essential oils and cosmetics, hair lotions; dye and hair dyes; hair removal wax; soaps, champus; softener cream or conditioning hair.
Class 35: Services retail products cosmetics, perfumes, drogueria, health, beauty and beauty; support services in the organization and operation of business especially in business franchise system; services market research and statistical information; services public relations and personnel selection.
Class 41: Education and recreation services; training services; contests services organization, exhibitions, conferences, seminars; text editing services; exhibition services organization without commercial purpose.
Class 44: services of hairdressing salon; health and beauty care for people; cosmetic treatments, and cosmetic surgery.
The contested goods and services are the following:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices, eaux de cologne; Creams (Cosmetic -); Aftershave; Skincare cosmetics; Perfumery; Make-up; Shaving preparations; Perfumery; Air fragrancing preparations; Shampoo.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments; Rings [jewellery, jewelry (Am.)]; Cufflinks; Bracelets [jewellery, jewelry (Am.)]; Pendants; Chronographs; Timepieces; Tie pins; Wire of precious metal [jewellery, jewelry (Am.)]; Earrings; Shoe ornaments of precious metal; Hat ornaments (of precious metal); Watches; Key rings [trinkets or fobs]; Tie pins; Ornamental pins; Ornamental pins.
Class 35: Advertising; Business management; Business administration; Office functions; Fashion shows for promotional purposes (Organization of -); Sales promotion for others; Resale of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, eau de Cologne, cosmetic creams, after-shave lotions, cosmetic preparations for skin care, perfumery preparations, make-up preparations, shaving preparations, perfumes, air fragrancing preparations, shampoos, sun glasses, spectacle frames, spectacles, spectacle cases , precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, rings (jewellery), cufflinks, bracelets (jewellery), charms (jewellery), chronographs (watches), chronometers, tie clips, threads of precious metal (jewellery), earrings, shoe ornaments of precious metal, hat ornaments of precious metal, watches, key rings (trinkets or fobs), tie pins, ornamental pins, brooches (jewellery), leather and imitations of leather and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear.
Some of the contested goods and services are identical 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.
Earlier trade mark
The relevant territory is Spain.
As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.
Aurally, the earlier sign is pronounced by the Spanish public as ‘tuen-ti-o-ne’, if considered as one single term divided into three lines, or as ‘tue’ ‘nti’ ‘one’, if perceived as three different terms. The contested sign is pronounced by these consumers as ‘nú-me-ro-vein-ti-u-no’. Although the marks coincide in the syllable ‘ti’, this element occupies a different position within the marks, and is preceded and followed by different letters in each mark. Therefore, it is not likely to be perceived as a similarity between the marks. Accordingly, it is concluded that the signs are not aurally similar.
Conceptually, the public in the relevant territory will perceive the contested mark as formed by two elements, namely ‘Nº’, which is a known abbreviation referring to ‘número’ (i.e. ‘number’ in English), and the number 21. Accordingly, this mark is perceived as having the concept of ‘número 21’ (i.e. ‘number 21’, in English).
The earlier mark will be perceived as meaningless by the vast majority of consumers in the relevant territory. However, the part of the public with at least some English knowledge could perceive it as ‘twenty one’, being the English words used to refer to a number. In this scenario, the signs are conceptually identical, since they will be both perceived as having the same concept of number 21.
Taking into account the abovementioned conceptual coincidence, which could exist for at least part of the public, the signs under comparison are similar to a low degree for that part of the public. For the part of the public with no English knowledge, this conceptual coincidence does not exist. Therefore, for these consumers the signs are dissimilar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 considered identical are directed at both the public at large and at professional consumers. The degree of attention will vary from average to higher than average.
Global assessment, other arguments and conclusion
The goods and services are assumed to be identical.
The signs are dissimilar for the vast majority of the relevant public (i.e. those with no English knowledge), and similar to a low degree for the part of the public with some English knowledge.
According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar for the part of the public with no English knowledge, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled in relation to them, and the opposition must be rejected.
For the part of the public with some English knowledge, number 21 could be perceived as the concept in both signs. This leads to a low degree of similarity between the marks.
However, the result of the visual and aural comparison, in relation to the part of the public with some English knowledge, leads to the exclusion of a likelihood of confusion, despite the assumed identity between the goods and services involved. The visual comparison referred to concluded with a total lack of visual coincidences. From the aural perspective, it must be noted that, even if the same concept of number 21 is perceived in both marks, the contested sign will always be read and pronounced in Spanish (i.e. ‘número veintiuno’), whereas the earlier mark will be read and pronounced in English (i.e. ‘twenty one’). Accordingly, the coincidence in concept for this part of the public cannot lead to a finding of aural similarity. Therefore, the coincidence in concept per se is clearly not enough to lead consumers to believing that the marks come from the same or economically-linked undertakings, even assuming identity of the goods and services.
The opponent argues that the signs are aurally identical, since Spanish consumers are used to pronouncing certain numbers included in marks in English, and this would be the case with the contested mark. In order to demonstrate this, the opponent lists some marks that, it explains, are found on the Spanish market and which include a number that is pronounced in English. These marks are ‘7 up’, ‘7-Eleven’, ‘20 Century Fox’ and ‘1&1 web’. The Opposition Division notes that the marks listed by the opponent are very few and, in addition, contain a number followed in all cases by an English term. This could lead consumers to pronouncing the entire sign in English. However, this is not the case in the present opposition, where the contested mark does not include any English term that could lead Spanish consumers to pronounce the number contained in the sign in English.
The opponent refers to previous decisions of the Office to support its arguments. However it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the CTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).
In the present case, the previous cases referred to by the opponent are not relevant, since they refer to signs and/or goods and services that are totally different from the ones at issue herein (e.g. Maserati QUATTRO porte).
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.
For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR because the signs are obviously not identical.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.