OPPOSITION No B 3 062 504

El Corte Ingles, S.A., Hermosilla, 112, 28009, Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010, Madrid, Spain (professional representative)

a g a i n s t

Luigi Corti, Viale Sicilia 28, 58043 Castiglione della Pescaia, Italy (applicant), represented by Luca Verga, Piazza Monte Grappa n. 12, 21100 Varese, Italy (professional representative)

On 03/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 504 is upheld for all the contested goods.

2. European Union trade mark application No 17 867 523 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 867 523 ‘ ’ (figurative mark). The opposition is based on Spanish trade mark registrations Nos 1 815 632, 1 815 629 and 1 815 635, all for the figurative 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.

a) The goods

The goods of the earlier trade marks on which the opposition is based are the following:

ES 1 815 629

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

ES 1 815 632

Class 23: Threads for textile use.

ES 1 815 635

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

The contested goods are the following:

Class 20: Spools, not of metal (not being parts of machines or apparatus), non-mechanical spools, not of metal (not beings parts of machines); Non-mechanical reels of plastic materials for the storage of hose.

Class 26: Bobbins for retaining embroidery floss or wool [not parts of machines]; Knitting bobbins [other than parts of machines]; Tatting shuttles.

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 20

The contested spools, not of metal (not being parts of machines or apparatus), non-mechanical spools, not of metal (not beings parts of machines), non-mechanical reels of plastic materials for the storage of hose are similar to a low degree to the opponent’s goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics in Class 20.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), ‘goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’ in Class 20 lack the clarity and precision to specify the scope of protection that they give as they do not provide a clear indication of what is covered. However, the nature of both the contested and the opponent’s goods can be considered the same, as they are or include goods made of the same material and it is reasonable to infer that the goods may be produced by the same companies, given that the required knowhow and machinery may also be the same. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that the methods of use or distribution channels are the same or that they are in competition or complementary. Therefore, the goods can only be found to be similar to a low degree.

Contested goods in Class 26

The contested bobbins for retaining embroidery floss or wool [not parts of machines], knitting bobbins [other than parts of machines], tatting shuttles are similar to an average degree to the opponent’s lace and embroidery. They share the same distribution channels and public. Furthermore, they are complementary.

Contrary to the applicant´s arguments, the Opposition Division does not consider that the public for whom the contested goods and the opponent’s goods are intended are different. Nothing in the wording of the contested goods may lead to a conclusion that the contested goods are intended solely for the manufacturing industries and that the contested goods are intended for the general public.

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 similar to various degrees are directed at the public at large. However, it cannot be excluded that some of the goods at issue may be specialised goods directed at business customers with specific professional knowledge or expertise.

Hence, the degree of attention will vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Earlier trade marks	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 element ‘Tiendas’ of the earlier mark will be understood as ‘shops’ by the relevant public. In relation to the goods, it is non-distinctive as it refers to the places where these goods can be purchased.

However, the other verbal element of the earlier mark ‘cortty’ and the sole verbal element of the contested sign ‘corti’ have no meaning for the relevant public and are therefore distinctive.

Both signs are composed of figurative elements of a purely decorative nature. Hence, the verbal components of the sign will have a stronger impact on the consumer than the figurative components. 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).

Visually, the signs coincide in the letters ‘CORT’, which correspond to the beginning of the distinctive verbal element in each signs. However, they differ in the ending of said distinctive element, i.e. the contested sign ends with an ‘I’ whereas the earlier mark has an additional ‘T’ and a ‘Y’. They further differ in the verbal element ‘TIENDAS’ present in the earlier trade mark and which has no counterpart in the contested sign but which is, however, non-distinctive. They also differ in their figurative elements and use of colours.

Bearing in mind that the additional ‘T’ is likely to go unnoticed, that the additional verbal element of the earlier mark is descriptive and that the differing figurative elements are of a purely decorative nature, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal elements ‛CORTI/CORTTY’, as both verbal elements will be pronounced identically by the relevant public. The pronunciation differs in the verbal element ‛TIENDAS’ of the earlier sign, which is non-distinctive, and might even not be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the word element ‘TIENDAS’ of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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.

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are aurally highly similar and visually similar to an average degree. However, they are not conceptually similar. The goods are partly similar to an average degree and partly lowly similar. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the relevant public’s degree of attention may vary from average to high.

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 goods and 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).

In the present case, the lesser degree of similarity of some of the goods is offset by the aural and visual similarity of the distinctive verbal elements in the signs.

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 that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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/services covered are from the same or economically linked undertakings.

Indeed, it is highly 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations Nos  1 815 629 and 1 815 635. 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, 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

Helen Louise MOSBACK

Raphaël MICHE

Vít MAHELKA

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.