OPPOSITION No B 3 062 650

Marcó Dachs, S.A., Zona Industrial de Morena, 3, 17253, Mont-Ras (Girona), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036, Barcelona, Spain (professional representative)

a g a i n s t

Apassionata World GmbH, Kantstraße 24, 10623 Berlin, Germany (applicant), represented by Schlarmann Ahlberg Partnerschaftsgesellschaft mbB, Neuer Wall 40, 20354 Hamburg, Germany (professional representative).

On 04/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 650 is partially upheld, namely for the following contested goods:

Class 9: Recorded sound recording and image carriers of all kinds, namely cassettes, recording discs, compact discs, CD-ROMs, MiniDiscs, DVDs, DAT tapes and DAT cassettes, videos, diskettes, audio plays; motion pictures and television series on DVDs; scanners (data processing equipment) and magnetic data carriers; optical data media; computer software.

Class 16: Goods of paper and cardboard, namely school cones, exercise books, diaries, memo pads, notebooks, writing pads, sticky notes and adhesive notes; printed matter, namely printed matter of all kinds, including books, newspapers, periodicals, magazines, brochures, catalogues, periodic printed matter, publicity columns, all of the aforesaid goods in bound, loose-leaf and printout form on paper and film; chromolithographs, photographs, pictures, graphic representations, handbooks, posters, greetings cards, postcards, picture cards, transfers, stickers; photo albums and collectors' albums, self-adhesive film and tape for decorative purposes, calendars, pocket calendars, advent calendars, greeting cards, bookmarkers; stationery, in particular pencil cases, pens, ball pens, fountain pens, rulers, compasses and sharpener.

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 17 592 312 is rejected for all the above goods. It may proceed for the remaining goods and services, namely the following:

Class 9: Riding helmets.

Class 35: Merchandising; advertising in all media; direct mail advertising; demonstration of goods; online services provided by an e-commerce provider, namely presentation of goods and services, order placement, shipping and invoice management, including in the context of e-commerce; presentation of goods and services; updating of advertising material; market research; public relations services; organising advertising events; professional business and organisational consultancy, in particular with regard to cultural, entertainment and sporting events; sponsorship in the form of advertising; franchising, namely providing of business know-how; none of the aforesaid services belonging to the food industry sector.

The application also proceeds in relation to the remaining non-contested services in Classes 41 and 43.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 592 312 for the word mark ‘NATA’, namely against all the goods and services in Classes 9, 16, 25 and 35. The opposition is based on Spanish trade mark registration No 2 743 388 for the figurative mark and on international trade mark registration No 810 462 designating the European Union for the word mark ‘NATA’. 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.

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 Spanish trade mark registration No 2 743 388.

a) The goods and services

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

Class 2: Paints and washes.

Class 8: Penknives; palette knives; perforating tools for numbering; numbering punches; perforating tools; scissors.

Class 9: Teaching apparatus and instruments; adding machines; pocket calculators; electronic agendas; audiovisual teaching apparatus; computerised notebooks; postal scales for weighing letters and parcels; video game cartridges; videotapes; optical magnifying glasses; animated cartoons; teaching apparatus; electric locks; mouse mats; accounting machines; transparencies (photography); slide projectors; dictating machines; copying apparatus and machines; measuring instruments; paper scales.

Class 16: Rubber erasers; paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs (printed); stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching materials (except apparatus); plastic materials for packaging purposes not included in other classes; printing type; printing blocks; paper stationery; school supplies (stationery); aquarelles; adhesive bands for stationery or household purposes; adhesives; albums; binders (loose-leaf-); modelling clay; drawing pads; ball pens; paper bags; board erasers; broaches; paintbrushes; painters’ easels; boxes of paper or cardboard; tracing paper; transfers (decalcomanias); calendars; carbon paper; charcoal pencils; file folders; writing paper; cardboard articles; drawing pins; clips; paper cutters; graphic prints; bookbindings; nibs; writing brushes; drawing sets; greeting cards; pencils; pencil sharpeners; slate pencils; pencil leads; pencil holders; note books; books; bookmarkers; drawing pens; paperweights; pastel pencils; paintings; writing slates; pencil sharpeners; envelopes; ink; inkwells; chalk.

Class 18: Leather and imitations of leather; goods made from these materials, not included in other classes; rucksacks; school haversacks; satchels; bags; travelling handbags; wallets; schoolbags; folders; pocket wallets; briefcases (leather goods); carrying cases; attaché cases; card wallets (leatherware).

Following a limitation requested by the applicant, the contested goods and services are the following:

Class 9: Recorded sound recording and image carriers of all kinds, namely cassettes, recording discs, compact discs, CD-ROMs, MiniDiscs, DVDs, DAT tapes and DAT cassettes, videos, diskettes, audio plays; motion pictures and television series on DVDs; scanners (data processing equipment) and magnetic data carriers; optical data media; computer software; riding helmets.

Class 16: Goods of paper and cardboard, namely school cones, exercise books, diaries, memo pads, notebooks, writing pads, sticky notes and adhesive notes; printed matter, namely printed matter of all kinds, including books, newspapers, periodicals, magazines, brochures, catalogues, periodic printed matter, publicity columns, all of the aforesaid goods in bound, loose-leaf and printout form on paper and film; chromolithographs, photographs, pictures, graphic representations, handbooks, posters, greetings cards, postcards, picture cards, transfers, stickers; photo albums and collectors' albums, self-adhesive film and tape for decorative purposes, calendars, pocket calendars, advent calendars, greeting cards, bookmarkers; stationery, in particular pencil cases, pens, ball pens, fountain pens, rulers, compasses and sharpener.

Class 25: Clothing, footwear, headgear.

Class 35: Merchandising; advertising in all media; direct mail advertising; demonstration of goods; online services provided by an e-commerce provider, namely presentation of goods and services, order placement, shipping and invoice management, including in the context of e-commerce; presentation of goods and services; updating of advertising material; market research; public relations services; organising advertising events; professional business and organisational consultancy, in particular with regard to cultural, entertainment and sporting events; sponsorship in the form of advertising; franchising, namely providing of business know-how; none of the aforesaid services belonging to the food industry sector.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 9

The contested recorded sound recording and image carriers of all kinds, namely cassettes and videos cannot be clearly separated from the opponent’s videotapes, as the latter may also be recorded and have content. Therefore, these categories of goods overlap and are considered identical.

The contested magnetic data carriers include, as a broader category, the opponent’s videotapes. 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 broad category of the contested scanners (data processing equipment) includes scanners which have been specifically adapted for teaching/educational purposes. As a result, these goods overlap with the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are considered identical.

The contested recorded sound recording and image carriers of all kinds, namely, recording discs, compact discs, CD-ROMs, MiniDiscs, DVDs, DAT tapes and DAT cassettes, diskettes, audio plays; motion pictures and television series on DVDs are highly similar to the opponent’s videotapes, as they all belong to the broad category of recorded media carriers. Therefore, they coincide in their ultimate purpose and also have a similar nature. They often originate from the same undertakings and target the same consumers through the same commercial channels. In addition, they may be in competition, as consumers might choose between different media formats to obtain the same content.

The broad category of the contested optical data media includes recorded data media, such as recorded CD’s or DVDs. Therefore, for the reasons indicated in the previous paragraph, this broad category is highly similar to the opponent’s videotapes.

The contested computer software is considered similar to the opponent’s computerised notebooks, which are in essences portable computers. These goods may be complementary and target the same consumers through the same distribution channels. In addition, they often originate from the same undertakings.

The contested riding helmets consist of specific head protection for use during horse riding. These goods have no relevant characteristics in common with any of the opponent’s goods in Classes 2, 8, 9, 16 and 18. Their specific purposes set them clearly apart, as they satisfy manifestly different consumer needs and have different natures. They are neither complementary nor in competition; they originate from different undertakings and target different consumers, through different commercial channels. Therefore, they are considered dissimilar.

Contested goods in Class 16

The contested printed matter, namely printed matter of all kinds, including books, newspapers, periodicals, magazines, brochures, catalogues, periodic printed matter, publicity columns, all of the aforesaid goods in bound, loose-leaf and printout form on paper and film are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested stationery, in particular pencil cases, pens, ball pens, fountain pens, rulers, compasses and sharpener are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested goods of paper and cardboard, namely exercise books, diaries, notebooks are included in, or at least overlap with, the broad categories of the opponent’s note books, books. Therefore, they are identical.

The contested goods of paper and cardboard, namely memo pads, writing pads cannot be clearly separated from the opponent’s drawing pads. These categories of goods overlap and are, therefore, considered identical.

The contested goods of paper and cardboard, namely sticky notes and adhesive notes are included in, or at least overlap with, the broad category of the opponent’s adhesive bands for stationery or household purposes. Therefore, they are identical.

The contested chromolithographs, photographs, pictures, graphic representations, handbooks, posters, greetings cards, postcards, picture cards, transfers, stickers; photo albums and collectors' albums, self-adhesive film and tape for decorative purposes, calendars, pocket calendars, advent calendars, greeting cards, bookmarkers are identical to the opponent’s printed matter; photographs (printed); adhesives for stationery or household purposes; albums; transfers (decalcomanias); calendars; graphic prints; greeting cards; books; bookmarkers, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested goods of paper and cardboard, namely school cones are identical or at least highly similar to the opponent’s paper bags, as the latter may also have a conical shape and be used for the same purpose. Therefore, these goods have the same nature and method of use. They may target the same consumers, through the same channels and originate from the same undertakings. In addition, they may be in competition.

Contested goods in Class 25

The contested clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Goods such as the opponent’s bags, rucksacks, attaché cases, etc. in Class 18 are related to articles of clothing, headgear and footwear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

Contested services in Class 35

The contested merchandising; advertising in all media; direct mail advertising; demonstration of goods; presentation of goods and services; updating of advertising material; market research; online services provided by an e-commerce provider, namely presentation of goods and services, order placement, shipping and invoice management, including in the context of e-commerce; public relations services; organising advertising events; professional business and organisational consultancy, in particular with regard to cultural, entertainment and sporting events; sponsorship in the form of advertising; franchising, namely providing of business know-how; none of the aforesaid services belonging to the food industry sector consist essentially of advertising services, as well as of specialised business services (market research, business and organisational constancy). All these services are aimed at aiding another undertaking (the client), to better develop and carry on its business operations.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In doing so, many different means and products might be used. These services are provided by specialised companies that research their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy for advertising their goods and services through newspapers, websites, videos, the internet, etc.

The market research and business consultancy services are provided by specialised consultants that study the needs of the client (another undertaking) and provide them with the necessary assistance in order to help them expand and increase their market share, to operate more efficiently, to expand and develop their business operations at the appropriate time/market segments, etc.

These contested services are not sufficiently related to any of the opponent’s goods in Classes 2, 8, 9, 16 and 18. The natures and intended purposes of the goods and services under comparison are different. Furthermore, they are neither in competition with each other nor complementary. In addition, the abovementioned contested services in Class 35 and the opponent’s goods will not have the same providers. Moreover, advertising services and business consultancy and research are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements/marketing reports is insufficient for finding similarity. Therefore, the abovementioned contested services in Class 35 are dissimilar to the opponent’s goods in Classes 2, 8, 9, 16 and 18.

b) 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 different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention is considered to be average.

c) The signs

	NATA
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 contested sign is a word mark, consisting of the term ‘NATA’. In word marks, it is the word as such which is protected; therefore, it is irrelevant if the sign appears in upper or lower case letters, or in a combination thereof.

The earlier mark is a figurative mark, containing the verbal elements ‘NATA BY MILAN’, written in a standard script. The figurative component of the sign is limited to the slight stylisation of its verbal elements (‘NATA’ and ‘BY’ appear in manifestly commonplace lower case lettering, whereas ‘MILAN’ appears in larger and bold letters, which display a minimum degree of stylisation). The inherent distinctiveness of the figurative component of the sign is very low and will have a rather minimal impact for the public, which is used to perceiving such slight stylisations as mere graphic ornaments intended to draw their attention to the corresponding brands. Therefore, the public will instantly attribute more trade mark significance to the verbal elements of the sign.

The word ‘NATA’, appearing in both signs, will be understood by the relevant public as “sustancia espesa, untuosa, blanca o un tanto amarillenta, que forma una capa sobre la leche que se deja en reposo” (Dictionary of the Real Academia Española online at https://dle.rae.es/?id=QHOuYrw) which means ‘cream, the thick yellowish-white liquid taken from milk’. This word bears no relation to the relevant goods or their essential characteristics and is, therefore, considered normally distinctive.

The expression ‘BY MILAN’ in the earlier mark will be understood as a reference to the name of the undertaking responsible for the respective goods, due to the common use of the element ‘BY’ on the marketplace to convey precisely that type of information. As a whole it is also a distinctive component of the sign, since ‘MILAN’ will be understood as the commercial name of a company/enterprise.

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

Visually, the signs coincide in the independent element ‘NATA’, which is fully distinctive. They differ in the remaining verbal elements of the earlier mark, ‘BY MILAN’, and in its figurative component.

It should be noted 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In addition, as previously explained, the figurative component of the earlier mark is not particularly distinctive and will have a rather minimal impact for consumers.

Account should also be taken of the fact that the contested sign as a whole reproduces identically the initial and fully distinctive word ‘NATA’ of the earlier mark. 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.

Therefore, even though the verbal elements ‘BY MILAN’ establish a noticeable difference in length and structure, bearing in mind all the above it is concluded that the signs are visually similar to an average degree.

Aurally, the signs coincide in the identically pronounced first element ‘NATA’. They differ phonetically in the sounds of the components ‘BY MILAN’ of the earlier mark.

Bearing in mind the significant weight attributed to the reproduction of the initial, independent and distinctive element ‘NATA’ of the earlier mark as the only element in the contested sign, as explained above, there is an average level of aural similarity.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the meaning of ‘NATA’, a word understood by the relevant public and which is normally distinctive in relation to the relevant goods. The differing semantic content deriving from the elements ‘BY MILAN’ of the earlier mark is distinctive, but its importance in the overall impression conveyed by the sign should not be overestimated. Indeed, due to the fact that this expression identifies the name of the company/undertaking responsible for the respective goods, the initial element ‘NATA’ is likely to be perceived as the name of a particular brand-line of goods originating from the company ‘MILAN’.

Therefore, the marks are overall conceptually similar to an average degree, on account of the fully distinctive coinciding initial element ‘NATA’.

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

d) 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.

e) Global assessment, other arguments and conclusion

The signs are visually, aurally and conceptually similar to an average degree, as explained in section c) above.

Account is 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 and 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Although the signs display noticeable differences, these differences will have a lesser impact for the relevant consumers than the coincidence in the distinctive term ‘NATA’. As mentioned above, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. In addition, the slight stylisation of the verbal elements of the earlier mark will be perceived as ordinary graphic means of bringing the elements in question to the attention of the public. Therefore, the relevant public will pay little attention to the figurative component of the earlier mark and will attribute more trade mark significance to its verbal elements.

As regards those verbal elements, it should be noted that the coinciding meaningful element ‘NATA’ is considered distinctive to an average degree in relation to all the relevant goods and also that it appears as an independent element in the most conspicuous position of the earlier mark: its beginning.

Therefore, given the reproduction of this distinctive and initial element in the contested sign, it is likely that the relevant public, even if it does not confuse the signs directly, will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may legitimately believe that the contested sign, ‘NATA’, is a new shortened version or simply a continuation of the brand-line of goods ‘NATA’ of the earlier mark, which no longer identifies in the brand itself the name of the undertaking responsible for the production of the goods (‘by MILAN’), since it is a common market practice for brands to sometimes appear isolated/on their own and sometimes with supplementary indications, such as the formula ‘By … (name of company)’.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘NATA’, and that there is, in relation to identical and similar goods, a likelihood of confusion, including a likelihood of association, on the part of the relevant public.

Therefore, the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 2 743 388. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

- International trade mark registration No 810 462 for the word mark ‘NATA’ designating the European Union.

Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Dorothee SCHLIEPHAKE

Gueorgui IVANOV

Jakub MROZOWSKI

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.