OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 511 189
Lignotrend GmbH & Co. KG, Landstr. 25, 79809 Weilheim, Germany (opponent), represented by Maucher Börjes Jenkins, Urachstr. 23, 79102 Freiburg im Breisgau, Germany (professional representative)
a g a i n s t
Maligno S.R.L., Via Degli Artigiani 48 - Frazione Santa Margherita, 12016 Peveragno (CN), Italy (applicant), represented by Luca Roatis Avv. Luca Roatis Studio Trinchero, Piazza Rossetti, 7, 12051 Alba (CN), Italy (professional representative).
On 15/03/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of Community trade mark application No
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.
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 international trade mark registration No 755 893 designating the European Union.
The goods on which the opposition is based are the following:
Class 19: Construction materials, not of metal.
The contested goods are the following:
Class 19: Building materials (non-metallic); Chimneys, not of metal; Mantlepieces; Mouldings, not of metal, for building; Non-metallic transportable buildings; Mosaics for building; Works of art of stone, concrete or marble; Parquet flooring; Tile floorings, not of metal; Arbours [structures not of metal]; Doors, not of metal; Fences, not of metal; Surfacings, not of metal, for building; Wood panelling; Wall linings, not of metal, for building.
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 19
The contested building materials (non-metallic) and the opponent’s construction materials, not of metal are synonyms and they are considered identical.
The contested chimneys, not of metal; Mantlepieces; Mouldings, not of metal, for building; Mosaics for building; Parquet flooring; Tile floorings, not of metal; Arbours [structures not of metal]; Doors, not of metal; Fences, not of metal; Surfacings, not of metal, for building; Wood panelling; Wall linings, not of metal, for building are included in, or overlap with the broad category of the opponent’s construction materials, not of metal. Thus, they are considered identical.
The contested non-metallic transportable buildings are dissimilar to the opponent’s construction materials, not of metal. Non-metallic transportable buildings are complex, prefabricated, finished products which can easily be dismantled and reassembled and transported from one location to another. They may include trade-show booths and model houses that are transported to exhibitions for temporary installation. Although the contested goods may contain materials included in the opponent’s list of goods, a connection sufficiently close for a finding of similarity cannot be established. The purpose of a transportable building as a finished product and the purpose of construction materials required for constructing buildings are clearly different, as are the target publics. Consumers are aware that producers of transportable buildings generally do not produce the building materials required to make them and, therefore, will not assume that the finished building and all its components have the same commercial origin.
The contested works of art of stone, concrete or marble are also dissimilar to the opponent’s construction materials, not of metal. They are different from the opponent’s goods in terms of nature, intended purpose and method of use, and these goods are not in competition with or complementary to each other. The mere fact that some construction materials covered by the earlier mark may form part of various works of art is not sufficient for a finding of similarity between them.
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 specialised goods and are directed at members of the general public active in the DIY field and at business customers with specific professional knowledge or expertise. In view of the specialised nature of the relevant goods, the degree of attention will be higher than average.
Earlier trade mark
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark consisting of the word ‘LIGNO’ without any specific meaning for the relevant public.
The contested sign is a figurative mark consisting of the stylised word ‘MALIGNO’, the elements ‘LUXURYINTERIORS’ and ‘1947’ written altogether in a standard font and a rectangular frame depicted in a dashed line. Part of the relevant public (e.g. Spanish- and English-speaking public) will understand or associate the word ‘MALIGNO’ with the meaning of ‘evil in influence, intention, or effect’ (in English due to its resemblance with the word ‘malign’). The element ‘LUXURYINTERIORS’ will be understood by the English-speaking consumers as meaning ‘a part, surface, or region that is inside or on the inside, and that is of rich, comfortable or indulgent nature’. The element ‘1947’ will be perceived by the relevant public as a reference to a specific year.
The earlier mark has no elements that could be considered clearly more distinctive or more dominant than other elements.
The element ‘LUXURYINTERIORS’ of the contested sign will be associated with the above explained meaning. Bearing in mind that the relevant goods are building materials that can be used in the construction/decoration of luxury interiors, this element is non-distinctive for all the goods and for English-speaking part of the relevant public.
The element ‘1947’ of the contested sign will be perceived as the reference to a specific year, and as such, likely to be perceived as indicating the year of establishment of the applicant’s company. Thus, this element is weak for all the goods for the relevant public.
The dashed line forming a rectangle in the contested sign will be perceived as a frame of a purely decorative nature and thus it is weak for all the goods for the relevant public.
The element ‘MALIGNO’ in the contested sign is the dominant element as it is the most eye-catching.
Visually, the signs coincide in ‘LIGNO’. They differ in the letters ’MA’, the elements ‘LUXURYINTERIORS’ and ‘1947’, the stylisation of these elements and the dashed line forming a rectangle of the contested sign.
As regards the differentiating letters ‘MA’ it should be noticed that they appear at the beginning of the verbal elements in the contested sign and attract more of the consumers’ attention. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.
Moreover, the earlier mark forms only a part of the verbal element in the contested sign and does not visually play an independent distinctive or dominant role in the overall impression of the contested mark, particularly as it is not separated visually by, for example, a space, hyphen or a capital letter.
Therefore, the signs are similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘LIGNO’, present identically in both signs. The pronunciation differs in the syllable ‘MA’ at the beginning of the verbal elements in the contested sign. The elements ‘LUXURYINTERIORS’ and ‘1947’ are unlikely to be pronounced due to their small size in the contested sign.
Therefore, the signs are similar to an average degree.
Conceptually, as the earlier sign lacks any meaning in the relevant territory and, depending on the part of the relevant public, the contested sign will be associated with at least one meaning (i.e. a specific year), 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 claimed that the earlier trade mark is reputed and 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
It has been established in the previous sections of this decision that the goods are considered partly identical and partly dissimilar to the opponent’s goods. It has also been concluded that the signs are aurally similar to an average degree and visually similar to a low degree. The earlier mark is of normal distinctiveness but has no concept attached to it.
The marks coincide in the letters and sounds ‘LIGNO’ which constitute the whole of the earlier mark. However, they form only a part of the word ‘MALIGNO’ in the contested sign and the earlier mark is not recognisable as such in the contested mark because it does not play an independent distinctive role in the overall impression of the contested mark, particularly as it is not separated visually by, for example, a space, hyphen or a capital letter. To find otherwise would require artificially dissecting the mark in a manner that does not comport with settled trade mark law and practice, whereby the consumer normally perceives a sign as a whole and does not proceed to analyse its various details.
The contested mark contains additional letters and sounds and, consequently, the marks differ in their visual and aural length. Furthermore, the differing letters and sounds ‘MA’ appear in the initial part of the contested mark and, therefore, will be readily noticed by the relevant public. Further visual differences, such as the additional verbal element, the typeface, and the presence of other figurative elements, also decrease the likelihood of confusion for the relevant consumer.
The above findings are reinforced by the fact that consumers of the goods in question are more attentive and will most likely bring professional knowledge or expertise when purchasing such items. Certainly, these particular consumers will be highly attentive to the competing offers on the market and will deliberate carefully before selecting the goods in question; their awareness and attention to detail will be higher than normal and the differences found between marks at hand will be sufficient to rule out any likelihood of confusion in the relevant territory.
The right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on the earlier German trade mark No 39 752 647 ‘LIGNO’ (word).
Since this mark is identical to the one which has been compared and is claimed to cover the same scope of goods, the outcome cannot be different. Therefore, no likelihood of confusion exists on the part of the public.
REPUTATION – ARTICLE 8(5) CTMR
According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
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)(c) CTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) CTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier international trade mark registration.
On 28/04/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 03/09/2015.
The opponent did not submit any evidence concerning the reputation of the international trade mark registration on which the opposition is based.
Given that the above mentioned necessary requirement of Article 8(5) CTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
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.