OPPOSITION No B 2 920 976

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Pocketpiano S.L., Av. Ernest Lluch 32, TCM2 1º, oficina 1.11 TecnoCampus de Mataró, 08302 Mataró, Spain (applicant), represented by Pons Consultores de Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 22/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 976 is upheld for all the contested goods, namely

Class 25: Clothing; headgear.

2. European Union trade mark application No 16 611 411 is rejected for all the contested goods. It may proceed for the remaining non-contested goods in Class 15.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 611 411 for the mark ‘ ’, namely against all the goods covered in Class 25. The opposition is based on European Union trade mark registration No 15 490 097 for the mark ‘ ’. The opponent invoked Article 8(1)(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 goods

The goods on which the opposition is based are the following:

Class 25: Clothing; footwear; headgear; children's wear; children's footwear; children's headwear.

The contested goods are the following:

Class 25: Clothing; headgear.

Consequently, all the contested goods are identically contained in the list of the earlier goods.

2. 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 directed at the public at large.

The degree of attention is considered to be average.

3. 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 coinciding term 'PIANO’ will be understood as a large musical instrument with a row of black and white keys by a substantial part of the relevant public throughout the European Union, given the identical (e.g. in English, Dutch, French, Portuguese, Slovakian, Spanish and Swedish language), or very close equivalent words (e.g. ‘pian’ in Romanian) in different languages of the EU Member States. Nonetheless, it is normally distinctive since it is an arbitrary term in relation to the goods at issue (i.e. clothing and headgear).

The earlier mark is a complex sign, composed of the verbal elements ‘POCO PIANO’, placed one above the other, in a fairly standard, black font, depicted in upper case letters. A darker and lighter grey colour fill is applied to the area inside the shape of the letters ‘P’ and ‘O’. The Italian/Spanish term ‘POCO’ (meaning ‘little’) will be understood by the Italian-, Spanish- and Portuguese- (on account of the similar Portuguese term ‘pouco’) speaking public (but nevertheless will still be normally distinctive, since fancy, in relation to the goods); the term will not be understood by the remaining part of the public, for which this element is meaningless and thus of normal distinctiveness. To the left of the verbal elements, a giraffe is depicted (in grey and black colour) and the whole is depicted against a white rectangular shape with rounded corners and with a grey shaded border, which will be perceived as a (clothing- or other apparel-) label and thus is of very limited distinctiveness. The image of the giraffe is meaningless in relation to the goods and is thus normally distinctive; the element of the rectangular shape will be perceived as being of a purely decorative nature and lacks distinctiveness.

Account must also be taken of the fact 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), in the present case the image of a giraffe in the earlier mark. In the dispute at hand, the Opposition Division considers that the verbal elements will have a stronger impact on the consumers which will refer to the earlier mark by its verbal components ‘POCO PIANO’, and not by describing its image of the giraffe.

For the sake of completeness, it is to be noted that the depiction of a grey heart in a very small size above the last letter ‘O’ of ‘POCO’ is considered negligible, due to its size and position within the complex earlier mark; it is certainly not noticeable at first sight. Therefore, as it is likely to be disregarded by the relevant public, it will not be taken into consideration in the assessment herein under.

The contested sign is composed of the verbal elements ‘POCKET PIANO’, placed one above the other, in a fairly standard, black bold font, depicted in upper case letters. A black colour fill is applied to the area inside the shape of the letters ‘P’ and ‘O’ as well as ‘A’. For the part of the public that is familiar with English or is English-speaking, the term ‘pocket’, in combination with ‘piano’ would allude to a small piano or a piano that could fit in a pocket, or could be understood as a small bag part of a piece of clothing and which is used for carrying small things (in the latter case, it is thus to be considered weak in relation to clothing for this part of the public). However, for the part of the public that does not understand English, this element is meaningless and thus of normal distinctiveness. The figurative aspects of the contested sign (i.e. the minimal stylisation of the letters and the positioning of the one term on top of the other), albeit not totally devoid of distinctiveness, will be perceived as being of a rather decorative nature and will have less impact on the consumers than the verbal components, by which the consumer will refer to the contested sign.

None of the signs has elements that are more visually eye-catching (dominant) than others.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that is not familiar with English and Italian or Spanish language, such as a substantial part of the relevant public in Romania and Slovakia, and for whom the words ‘POCO’ and ‘POCKET’ will be meaningless and normally distinctive, as explained above.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs refer to the same concept of the musical instrument (piano), conveyed by the common element which is also normally distinctive, the signs are conceptually similar to an average degree. The signs differ in the figurative element in the earlier mark that will be associated with the concept of a giraffe; however this element - as seen above - will have less impact than the verbal components. The remaining figurative aspects are secondary and unable to establish any conceptual distance between the signs on account of their limited distinctiveness, if any.

Visually, the signs coincide in the distinctive component ‘PIANO’, which is normally distinctive and forms the second verbal element in both signs. Furthermore this common element also is placed in the same position (i.e. underneath the first verbal element) in both signs. In addition, its stylisation is very similar in both signs on account of its depiction in black upper case letters, in a filled font. The signs also coincide in the first three letters (‘POC-‘) of their first verbal element (i.e. ‘POCO’ in the earlier, ‘POCKET’ in the contested sign) as well in their stylisation: both coinciding initial strings of letters share the coloured fill that is applied to the area inside the shape of the letters ‘P’ and ‘O’.

The signs differ in the endings of their first verbal elements (‘-O’ in the earlier, ‘KET’ in the contested sign) and in the additional figurative element of the giraffe in the earlier mark, which will however as mentioned above will have less impact than the verbal elements. The remaining visual differences lie in their stylisation and the rectangular background shape of the earlier mark which will be perceived as secondary and decorative, thus without much impact on a visually level since they will not be able to significantly catch the attention of the relevant public.

Hence, the marks are visually similar to at least an average degree.

Aurally, the signs coincide in the beginning of their first verbal element ‘POC-‘ (of normal distinctiveness and in their entire second verbal element ‘PIANO’ (also normally distinctive). They merely differ in the pronunciation of the endings of their first verbal elements (‘-O’ vs ‘KET’).

Furthermore, it must be taken into account that the common initial string of letters ‘POC-‘, as the first element of the signs’ first verbal components, will catch the primary attention of the consumer when encountering them, more than the slight difference in their endings which will more easily go unnoticed. This is because 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.

Therefore, the marks are considered to be aurally similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the contested goods in Class 25 were found identical to those of the earlier mark and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually similar to at least an average degree and phonetically similar to a high degree; conceptually the mark are similar to an average degree to the extent that both signs refer to the same concept of a piano.

Account must also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 covered are from the same or economically linked undertakings.

In the present case, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In particular, it is common in the clothing and headgear sector for the same manufacturer or provider to use sub-brands, that is to say, signs that derive from a principal mark and which share with it a common element, in order to distinguish its various lines from one another. Therefore, it is to be considered that a substantial part of the relevant public under analysis could reasonably believe that the contested figurative sign ‘POCKET PIANO’ designates a different clothing or headgear line originating from the same undertaking that manufactures or provides the goods bearing the earlier figurative mark ‘POCO PIANO’.

Therefore, taking into account the principle of interdependence, despite the differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded.

Considering all the above, there is a likelihood of confusion on the part of the public under analysis, as detailed above. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 490 097. It follows that the contested trade mark must be rejected for all the contested goods.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Edith VAN DEN EEDE

Francesca CANGERI SERRANO

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.