OPPOSITION No B 2 512 922
Calzanetto, S.L., Pol. ind. Las Atalayas - c/ de la libra, 129 - buzón 20.021, 03114 Alicante, Spain (opponent), represented by Arpe patentes y marcas, S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative)
a g a i n s t
Dansk Supermarked A/S, Rosbjergvej 33, 8220 Brabrand, Denmark (applicant), represented by Bech-Bruun law firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative).
On 19/04/2018, the Opposition Division takes the following
Class 3: Soaps; bleaching preparations included in Class 3; substances for laundry use; cleaning, polishing and scouring preparations; stain removers; dry cleaning preparations; abrasive preparations (not for dental use); soaps.
Class 21: Sponges (not for surgical purposes); materials included in class 21 for cleaning purposes; steel wool; brushes, brooms; rubber gloves; brush-making materials; articles for cleaning purposes; nail brushes; dusters; cleaning clothes.
Union trade mark application No
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
The contested EUTMA has been partially refused (including for the services in Class 35 against which the current opposition was initially also directed) as a result of the entry into force of the decision of the Opposition Division in opposition proceedings No 2 514 506. Following the request of the Office the opponent in the present proceedings informed EUIPO that the current opposition is maintained. In the letter received by the Office on 26/03/2018 it is stated that the opposition is only maintained against the goods in Classes 1, 3, 18, 21 and 25 as specified in the notice of opposition.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Spanish national trade mark registration No 1 687 018, Spanish national trade mark registration No 1 692 703 and Spanish national trade mark registration No 2 831 459, all for the sign .
The contested application was published on 23/01/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 23/01/2010 to 22/01/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Spanish national trade mark registration No 1 687 018
Class 21: Sponges; brushes (except paint brushes) and articles for cleaning purposes especially for shoes cleaning.
Spanish national trade mark registration No 1 692 703
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Spanish national trade mark registration No 2 831 459
Class 1: Preparations for waterproofing textiles and chemicals goods for waterproofing leather.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.
On 27/10/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 01/01/2017 to submit evidence of use of the earlier trade marks. Upon request of the opponent this time limit has been extended until 01/03/2017. On 17/02/2017, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, in particular, the following:
Annex No. 1 Printout of the website www.calzanetto.com containing information about the history of the company Calzanetto S.L. as a manufacturer shoe care sponges.
Annex No. 5 Invoices related to the creation and maintenance of the opponent’s website.
Annex No. 6 Affidavit signed by D. Willem C.M. Pierse in his capacity of a representative of Calzanetto S.L. Mr. Pierse provides numbers related to the sale volumes of products (sponges) marketed under the trade mark CALZANETTO during the period 2009 – 2015. According to the affidavit during the said period the company sold in total twelve million units of sponges.
Annex Nos. 7-12 Over 300 sample invoices issued by the opponent during the relevant period to companies in Spain, other Member States and worldwide for the sales of shoe cleaning and polishing articles, mainly sponges. The invoices display in their left corner the sign . The goods are also referenced by the verbal element ‘CALZANETTO’, for instance ‘CALZANETTO STAND. 40’, ‘CALZANETTO NEUTRAL SHINE’, ‘CALZANETTO STAND.BLACK’, etc. The sample invoices show sales of hundreds and thousands of items for amounts reaching several thousands of Euros each.
Annex Nos. 13-18 Invoices related to the purchasing of cardboard boxes and labels for the goods.
Annex Nos. 19-22 Advertising materials showing the earlier sign.
Annex Nos. 23-29 Pictures showing various goods bearing the earlier sign.
The submissions of the opponent contain also a fair number of pictures of the goods and the packaging. The sign appears, among others, in the following forms: , , , .
The Opposition Division examined the entire set of evidence submitted by the opponent but listed above only the evidence that it finds relevant and sufficient to draw the respective conclusions with regard to the genuine use of the earlier marks. The evidence that is not listed is either irrelevant for the assessment of genuine use (for instance Annex No. 4 as correctly pointed out by the applicant) or does not present any additional facts and information than the ones that can be already inferred from the evidence listed above (for instance Annex No 33).
A significant number of invoices refer to the relevant territory, which is Spain. This can also be inferred from the language of the documents (‘Spanish’), and some addresses in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The evidence shows that the mark has been used in accordance with its function and as registered or in a form which differing in some elements which however do not alter its distinctive character.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier sign during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.
In the present case, the evidence shows genuine use of the sign for the following goods:
Class 21: Sponges for cleaning shoes; Articles for cleaning purposes, especially for cleaning shoes.
It can be inferred from the submissions of the applicant dated 11/05/2017 that the latter accepts that the use of the earlier mark for sponges has been proven. In this regard the Opposition Division notes that sponges in general cover a very broad spectrum of articles depending on their purpose. In the case at hand the opponent proved use only for a particular type of sponges, namely sponges for cleaning shoes. On the other hand the Opposition Division notes that the goods manufactured by the opponent in many cases are a bit more complex than just a sponge. They are often containing a special cleaning/polishing liquid and are attached to a plastic ‘handle’ and are put in a box. Moreover, the opponent has shown use of the earlier sign also in relation to articles such as shoe deodorisers and renovators and repellents for shoes, cleaning and polishing articles for car interior surfaces and leather surfaces (jackets, trunks) which justifies acceptance of use for the broad category of articles for cleaning purposes, especially for cleaning shoes, where the word ‘especially’ used in the specification of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them.
Since the opponent did not prove use for the goods covered by Spanish national trade mark registration No 1 692 703 and Spanish national trade mark registration No 2 831 459 the opposition is hereby rejected pursuant to Article 47(2) and (3) EUTMR as far as it is based on these two earlier rights.
The examination proceeds based on the opponent’s Spanish national trade mark registration No 1 687 018 for the goods in Class 21: Sponges for cleaning shoes; Articles for cleaning purposes, especially for cleaning shoes.
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 goods on which the opposition is based are the following:
Class 21: Sponges for cleaning shoes; Articles for cleaning purposes, especially for cleaning shoes.
The contested goods are the following:
Class 1: Unprocessed artificial resins, unprocessed plastics; tanning substances; adhesives used in industry; water softeners; chemicals for domestic or garden use; cellulose thinners; glue.
Class 3: Soaps; bleaching preparations included in Class 3; substances for laundry use; cleaning, polishing and scouring preparations; stain removers; dry cleaning preparations; abrasive preparations (not for dental use); soaps; deodorants; anti-perspirants.
Class 18: Parasols and walking sticks, saddlery; luggage, travelling bags and cases; wallets and purses; bags; sports bags; holdalls; handbags; briefcases; satchels; wash bags; vanity cases; leather key cases; music cases.
Class 21: Small domestic utensils and containers (none of precious metal or coated therewith); combs, sponges (not for surgical purposes); materials included in class 21 for cleaning purposes; steel wool; brushes, brooms; rubber gloves; household or kitchen utensils and containers (not of precious metal or coated therewith); brush-making materials; articles for cleaning purposes; nail brushes; dusters; cleaning clothes; kitchen tools.
Class 25: Articles of clothing, footwear and headgear; sportswear.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
Contested goods in Class 1
The contested goods in Class 1 are mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. The finished products of the opponent target a different public and do not share the same distribution channels. The goods obviously differ in their nature, purpose and method of use. Furthermore, they are neither in competition, nor complementary. The mere fact that the opponent’s goods may eventually contain chemicals for domestic use is not enough to render the goods similar. Therefore, the opponent’s goods in Class 21 and the contested goods in Class 1 are dissimilar.
Contested goods in Class 3
The contested goods in Class 3 are cleaning preparations and toilet preparations. As far as the cleaning preparations are concerned, namely: soaps; bleaching preparations included in Class 3; substances for laundry use; cleaning, polishing and scouring preparations; stain removers; dry cleaning preparations; abrasive preparations (not for dental use); soaps they are at least similar to the opponent’s articles for cleaning purposes, especially for cleaning shoes.
It is to be noted that deodorants and anti-perspirants in Class 3 are for human beings or animals. Deodorants and anti-perspirants other than for human beings or for animals are classified in other classes, for instance, Class 5. Therefore, and bearing in mind their different purpose as compared to cleaning articles and cleaning preparations, the different distribution channels and the fact that they are neither complementary, nor in competition the Opposition Division finds them dissimilar to the opponent’s goods.
Contested goods in Classes 18 and 25
The goods of the opponent and the contested goods in Classes 18 and 25 are among the most frequently used consumer goods or in any case very well-known to the consumers. Without going into a detailed description of the goods under comparison it can be immediately concluded that there are no coinciding relevant criteria which taken alone or in combination may give rise to any level of similarity between the goods under comparison. The goods are clearly dissimilar.
Contested goods in Class 21
The contested sponges (not for surgical purposes) include as a broader category the opponent’s sponges for cleaning shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested materials included in class 21 for cleaning purposes; articles for cleaning purposes are identically contained in both lists of goods (including synonyms).
The contested nail brushes; dusters; cleaning clothes; steel wool; brushes, brooms are included in the opponent’s broader category of articles for cleaning purposes, especially for cleaning shoes. Therefore, they are identical.
The contested rubber gloves are similar to the opponent’s articles for cleaning purposes, especially for cleaning shoes, as they can coincide in distribution channels and end users. Moreover, even though they are not strictly complementary in the sense that one is indispensable for the use of the other, they are often used in combination.
The contested brush-making materials are similar to a low degree to the opponent’s articles for cleaning purposes, especially for cleaning shoes. The latter include a wide variety of brushes. Brushes are rather simple articles consisting of just few components, mainly a handle and a bristle. The goods are produced by the same manufacturers and can occasionally coincide in distribution channels (do-it-yourself shops) and end users.
The contested small domestic utensils and containers (none of precious metal or coated therewith); combs, household or kitchen utensils and containers (not of precious metal or coated therewith); kitchen tools are dissimilar to the opponent’s goods, as they are different in nature, do not coincide in producer and distribution channels. Even though they may be found in big supermarkets they are in different sections. Their purpose and method of use are clearly different. Finally, they are neither in competition, nor complementary.
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 to various degrees are directed mainly at the public at large, except brush-making materials which are rather directed at professionals, manufacturers of brushes. In both cases the degree of attention is considered to be lower than average since the goods in conflict are cheap and basic as far as their characteristics are concerned.
Earlier trade mark
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).
Both marks are figurative marks. The earlier one is composed of the verbal element ‘CALZANETTO’ in a stylised typescript placed in a frame with rounded corners. Since the latter is an element of purely decorative nature, it is considered that the verbal element is more distinctive than the figurative element.
The contested sign is the verbal element ‘Netto’ represented in a rather standard but heavily bold typescript.
In relation to the graphic features of the two signs it is to be recalled that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).
Both marks have no elements that can be considered dominant (visually more eye-catching) than other elements.
Even though the earlier sign is composed of a single verbal element, the relevant consumer will see it as composed of two components – ‘CALZA’ and ‘NETTO’. This is because normally when perceiving a verbal sign, the consumer 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). ‘CALZA’ as such has a meaning in Spanish, namely: a wedge. It is, however, much more likely (bearing in mind the relevant goods at hand) that it will be perceived as resembling or referring to the word ‘CALZADO’ meaning ‘shoe’. Bearing in mind that the relevant goods are or can include shoe cleaning articles it is considered that this element is weak.
The word ‘Netto’ does not exist in Spanish. It is also to be noted that the doubled letter ‘T’ is very uncommon for the Spanish language in general and as such rather striking and attracting the attention of the consumer.
Visually, the signs coincide in the component ‘NETTO’. However, they differ in the component ‘CALZA’ of the earlier mark and the figurative elements of both marks – the frame of the earlier and the stylisation of the verbal elements in both marks as described above.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the verbal component /NETTO/, present identically in both signs. The pronunciation differs in the component /CALZA/’ of the earlier sign, which has no counterpart in the contested mark.
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. Since one of the signs (the contested one) will not be associated with a meaning the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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, despite the presence of weak elements in the mark, as stated above in section c) of this decision, namely the verbal component ‘CALZA’ and the frame with rounded corners.
Global assessment, other arguments and conclusion
The goods are partly identical, partly similar to various degrees and partly dissimilar. The signs are visually and aurally similar on behalf of the shared component ‘Netto’. The distinctiveness of the earlier mark is normal. The level of attention of the relevant public is lower than average.
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 Opposition Division finds that the likelihood of association cannot be excluded in the particular case at hand since one of the two identifiable components of the earlier mark actually represents the entire contested mark. This component is likely to attract the attention of the consumer more because of the uncommon doubled letter ‘T’ and also because of the weak character of the component ‘CALZA’ where the remaining elements – namely the graphic features of both marks are not of such a significance in terms of visual impact as to prevent the consumers to associate the two marks. In this case the consumer may erroneously think that the goods and services belong to various product lines of the same undertaking.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and, therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.
Both parties refer to previous decisions of the Office to support their arguments. However, 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, according to settled Case-Law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. It must be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case.
The previous cases referred to by the parties are not relevant to the present proceedings because they obviously refer to different signs in overall different factual backgrounds.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including those similar to a low degree only) to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
André Gerd Günther
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.