OPPOSITION No B 2 859 133

Consitex S.A., Via Ligornetto, 13, 6855 Stabio, Switzerland (opponent), represented by Caramelli Lazzarotto Associati, Corso Re Umberto, 10, 10121 Torino, Italy (professional representative)

a g a i n s t

Birgit Faller-Füllgraff, Kreuzmattstrasse 16, 6047 Kastanienbaum, Switzerland (applicant), represented by (F200) Asg Rechtsanwälte GmbH, Friedrichstr. 200, 10117 Berlin, Germany (professional representative).

On 15/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 859 133 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 019 622 for the figurative mark , namely against all the goods and services in Classes 25 and 35. The opposition is based on the following earlier marks:

1. International trademark registration No 1 151 811 designating the European Union;

2. International trademark registration No 862 153 designating the European Union;

3. International trademark registration No 1 235 259 ‘Z ZEGNA’ designating the European Union;

4. European Union trademark registration No 3 429 461 .

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier trademarks listed above and, in relation to International trademark registration No 1 235 259, it also invoked Article 8(5) EUTMR.

SUBSTANTIATION OF EARLIER INTERNATIONAL TRADEMARK REGISTRATIONS DESIGNATING THE EUROPEAN UNION No 1 151 811, No 862 153 and No 1 235 259

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the evidence filed by the opponent in relation to international trademark registrations designating the European Union No 1 151 811, No 862 153 and No 1 235 259 consists of extracts from the Office’s own database eSearch plus. This evidence is not sufficient to substantiate the opponent’s earlier trade marks, because mere extracts from the Office’s database cannot provide all the necessary information in relation to international registrations even when those registrations designate the European Union. This is so because the eSearch plus database extracts that have been submitted emanate not from the administration by which the trade mark was registered, namely the WIPO, but from the EUIPO itself.

In this respect, the Court has already held that the Office is not responsible for managing international registrations and it is not the administration by which the trade mark was registered. For the purposes of Rule 19(2)(a)(ii) EUTMIR, it is therefore necessary, even in the case of an international registration which designate the European Union, to submit the relevant registration certificate or equivalent document (26/11/2014, T−240/13, Alifoods, EU:T:2014:994, § 28).

The Office used to accept printouts from the eSearch plus database (previously CTM-Online) for the purposes of substantiating international registrations designating the EU, but it changed its practice on 01/07/2012 to the extent that no exception to Rule 19(2)(a) EUTMIR (in the version in force at the time of commencement of the adversarial part) is provided in Title XIII of the EUTMR.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks. The examination of the present opposition will continue on the basis of the other earlier mark invoked, namely European Union trademark registration No 3 429 461 .

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 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).

The element ‘ZegnaSport’ of the earlier mark is presented as a single word whereby the letters ‘Z’ and ‘S’ are written in uppercase, whereas the rest of the letters are presented in lower case.

It is noted that, as it follows from case-law, 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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, although ‘ZegnaSport’ as such does not exist in any of the relevant languages, the element ‘Sport’ will be readily identified and singled out because, besides being presented in title case letters, it will also be recognised by the relevant public as a meaningful term. The word ‘Sport’ (which exists in English and French) designates all types of physical activity that people do to keep healthy or for enjoyment. This term is a basic English word which will be understood by the average consumer throughout the whole relevant territory because it is found in identical or similar terms in the relevant languages or because it is part of everyday vocabulary (inter alia, 16/10/2013, T-453/12, ZOOSPORT, EU:T:2013:532, § 57 confirmed by 15/07/2014, C-676/13 P, ZOOSPORT, EU:C:2014:2080; 31/01/2013, T-54/12, SPORT, EU:T:2013:50, § 26).

In relation to the goods on which the opposition is based, namely clothing, shoes, headgear in Class 25, ‘Sport’ is considered descriptive and thus non-distinctive since it will directly inform consumers that those goods are intended, or suitable, for practising or taking part in an activity involving physical exertion (see, to that effect, inter alia, 27/11/2017, R 234/2017-5, 361º SPORT (fig.) / 361º et al., § 36; 31/01/2013, T-54/12, SPORT, EU:T:2013:50, § 29-30).

The word ‘Zegna’ included at the beginning of the earlier mark, has no meaning for the relevant public. At most it can be perceived as a surname by the Italian-speaking part of the public. In any event, since it has no connection with the goods for which the earlier mark is registered in Class 25, it is distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

As to the contested sign, the word ‘TRADIZION’ will be most likely associated with the concept of ‘tradition’, that is the ‘transmission of customs or beliefs from generation to generation’, at least by part of the relevant public such as the English-, French-, Italian- and Spanish-speaking consumers, given the existence of very similar corresponding terms (tradition in English and French, tradición in Spanish, tradizione in Italian). As the opponent also underlines, ‘TRADIZION’ should be considered descriptive and laudatory insofar as it conveys information to the relevant public (who understand it with the meaning described above) on the characteristics of the goods and services at issue, namely clothing; headgear; footwear in Class 25 and retailing and wholesaling relating to clothing, footwear, headgear and fashion accessories; presentation of goods and companies; advertising, marketing and promotional services in Class 35. In particular, this term can indicate that those goods and services possess a certain quality on account of them being crafted and offered according to techniques which have been used and perfected over time (04/02/2019, R 257/2018-2, Tradición cz, s.l. / Rivero cz et al, § 99 and case law cited therein).

For the remaining part of the relevant public who will not recognise any meaning in the word ‘TRADIZION’, since this term will not be associated with any concept it is considered distinctive.

The depiction on top of the element ‘TRADIZION’ will most likely be perceived as a highly stylised letter ‘Z’, given the identity of such depiction with the letter ‘Z’ in the word ‘TRADIZION’. This element has no connection with the relevant goods and services and is, therefore, distinctive.

Moreover, the highly stylised letter ‘Z’ in the contested sign is the dominant element as it is the most eye-catching.

Visually and aurally, the signs will only coincide in that both include a letter ‘Z’, as the first letter of the word element in the earlier mark and depicted as a single letter in the contested sign. Furthermore, the signs have some other letters in common, which are placed in different position in the marks (***na**ort / TRA****ON). However, such coincidences are considered not sufficient to find the signs visually or aurally similar, not even to a low degree.

In this respect, it is noted that, as the General Court has held, the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

As the signs only coincide in irrelevant aspects, it is concluded that the signs are not visually or aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As seen above, the earlier mark will convey the concept of ‘Sport’ and, for at least the Italian-speaking part of the public, ‘Zegna’ will convey the idea of a surname. The contested mark will be associated, where pertinent, with the concept of the letter ‘Z’ and that of ‘tradition’.

As the signs will be associated with dissimilar meanings or at least one of them has a meaning, the signs are conceptually not similar.

As the signs merely coincide in irrelevant aspects or, by the conceptual point of view are even not conceptually similar, they are deemed dissimilar.

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.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Zuzanna STOJKOWICZ

Claudia ATTINA

Cynthia DEN DEKKER

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.