OPPOSITION No B 2 604 786

Talexco, S.L., Calle Los Vascos, 14 28040 Madrid, Spain (opponent), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. Cerro del Aguila, 2, Portal 3, Planta 2, Puerta 5, 28702 San Sebastian de los Reyes (Madrid), Spain (professional representative)

a g a i n s t

Hukla Matratzen Benelux, Bodemstraat 12, 3830 Wellen, Belgium, (applicant).

On 26/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 604 786 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 542 914, namely against all the goods in Classes 10 and 20. The opposition is based on Spanish trade mark registration No 2 388 360. The opponent invoked Article 8(1)(a) and (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.

1. The signs

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 consisting of the term ‘AEROCARE’ written in lower-case black type face, stylised to the extent that the letters are composed of a succession of small black spots. There is a wavy line below ‘AEROCARE’, composed of a succession of joined-up dots.

The contested sign is a figurative mark consisting of the term ‘PHYSIONOMICA’ written in lower-case blue type face. There is a wavy line below ‘PHYSIONOMICA’, composed of a succession of vertical and parallel grey stripes in various sizes and two shades.

The element ‘AERO’ of the earlier sign, which is a frequently used prefix in Spanish, will be associated with the concept of ‘air’ or will be related to aeronautics or aircraft. Bearing in mind that the earlier goods are ‘air mattresses for medical use, especially anti bedsore’ in Class 10, this element is weak for these goods.

As the contested sign has no element which has a meaning in the relevant territory, the contested sign has no elements that could be considered clearly more distinctive than other elements.

Neither of signs has elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the verbal elements of the signs are dissimilar. There is no similarity between the figurative elements included in the earlier mark and those of the contested sign, the shapes of the wavy lines being entirely different as described above.

As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Aurally, the earlier mark is pronounced as ‛AEROCARE’ and the contested sign as ‛PHYSIONOMICA’ in the contested sign. The sound of each term is dissimilar. Moreover, the figurative elements of the signs are not subject to a phonetic assessment.

As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, although the earlier mark as a whole does not have any meaning for the public in the relevant territory, the public who speaks Spanish will identify the element ‘aero’, which is a frequently used prefix in Spanish which is associated with the concept of air or is related to aeronautics or aircraft. However, the contested sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. The fact that both marks contain wavy lines does not bring about any conceptual similarity either. Whereas the earlier mark’s wavy line is a dotted and regularly curving wave, bringing to mind a flattened sinusoidal wave, the contested sign’s wavy line forms an irregular sequence of wobbles or bumps of varying thickness and it does not communicate any concept as such.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Richard THEWLIS

Julie GOUTARD

Benoit VLEMINCQ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.