OPPOSITION No B 3 065 631

Efor Establishment, Kirchstrasse 79, 9490 Vaduz, Liechtenstein (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA, Amsterdam, Netherlands (professional representative)

a g a i n s t

Med S.p.A., Via Beneficio II Tronco 57/c, 48015 Montaletto di Cervia, Italy (applicant), represented by Vittorio Sanguigno, Corso Vittorio Emanuele 146, 80059 Torre del Greco (NA), Italy (professional representative).

On 20/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 631 is upheld for all the contested goods.

2. European Union trade mark application No 17 918 115 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 17 918 115 for the figurative mark . The opposition is based on European Union trade mark registration No 11 369 832 and Benelux trade mark registration No 930 424 for the word marks ‘NANO’. 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 European Union trade mark registration No 11 369 832.

1. The goods

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

Class 12: Boats and vessels.

After the limitation filed by the applicant on 14/12/2018 the contested goods are the following:

Class 12: Boats and water vehicles.

The contested boats and water vehicles are identical to the opponent’s boats and vessels, either because they are identically contained in both lists or because the opponent’s goods are included in, or overlap with, the contested 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 and at business customers with specific professional knowledge or expertise in the marine industry.

Taking into consideration the price of water vehicles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy water vehicles and/or boats, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

3. The signs

NANO
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 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.

The contested sign is a figurative mark composed of the verbal elements ‘nano’, which is the most eye-catching element in the sign, depicted in slightly stylised typeface and ‘tender’ is depicted in italics underneath it, in a subsidiary position and smaller size. Both verbal elements are written in grey lower-case letters.

The verbal element ‘tender’ in the contested sign will be understood in English as meaning: in the nautical field ‘(of a ship) leaning or readily inclined to roll in response to the wind’ or ‘[a] dinghy or other boat used to ferry people and supplies to and from a ship’ (information extracted from Oxford Dictionary on 05/11/2019 at https://www.lexico.com/en/definition/tender). Since a direct correlation can be made with the goods in question, it is non-distinctive. For these reasons, it cannot be perceived as indicating the commercial origin of the goods at issue, consequently the difference in this element has a very low impact in the assessment for the English-speaking part of the public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United Kingdom.

The common element ‘NANO’ of the signs may be understood as alluding to the prefix ‘denoting a factor of 10⁻⁹’ (used in units of measurement) or can also be used in English as short for ‘nanotechnology’ by the relevant public, that is, ‘[t]he branch of technology that deals with dimensions and tolerances of less than 100 nanometres, especially the manipulation of individual atoms and molecules’ (information extracted from Oxford Dictionary on 05/11/2019 at https://www.lexico.com/en/definition/nanotechnology). Since ‘NANO’ alludes to the fact that the goods are produced by utilising nanotechnology, this term is, therefore, weakly distinctive at least for a part of the public. However, it cannot be ruled out that for another part of the public, the verbal element ‘NANO’ will be meaningless since the prefix ‘NANO’ is generally used followed by suffix such as ‘nanotube’, ‘nanosecond’, ‘nanoplankton’. For this part of the public, the verbal element ‘NANO’ is distinctive to a normal degree.

The earlier mark is the word mark ‘NANO’. It will be perceived as explained above and it is either weakly distinctive or has a normal degree of distinctiveness. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in upper- or lower-case letters, or in a combination thereof.

Visually, the signs coincide in the verbal element ‘NANO’, which constitutes the earlier mark in its entirety. However, they differ in the second non-distinctive and ancillary verbal element ‘tender’ and the stylisation of the contested sign. However, the typeface is not so fanciful as to lead consumers’ attention away from the words as it will be perceived as a mere embellishment and has, therefore, hardly any visual impact.

Irrespective of whether the coinciding element ‘NANO’ is perceived as a weak or as a distinctive element, since the difference lies in a non-distinctive element of the contested sign, which has a very reduced visual impact, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘NA-NO’, present identically in both signs. The verbal element ‘tender’ in the contested sign is unlikely to be pronounced because the public normally refers orally to a sign by their dominant and distinctive elements (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342).

In view of the foregoing, even if ‘NANO’ is perceived as being weak, the signs are aurally identical if ‘tender’ is not pronounced and highly similar if it is.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the verbal element ‘tender’ in the contested sign could introduce a point of conceptual difference, this element is non-distinctive and cannot indicate the commercial origin. Therefore, for the part of the public for which the signs will be associated with the same concepts of ‘NANO’ as explained above, the signs are conceptually highly similar. However, for the remaining part of the public as one of the signs has no meaning, they 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods for a part of the public under analysis, while it has a normal degree of distinctiveness for another part of this public.

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 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).

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.

The goods at issue are identical and target the public at large and the professional public who has a high degree of attention. The signs are visually highly similar and conceptually either highly similar or not conceptually similar. They are aurally identical or highly similar. The earlier mark has a low degree of inherent distinctiveness for a part of the public, while it has a normal degree of distinctiveness for another part. Although the distinctiveness of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark with a weak degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

As mentioned above, even if a part of the public perceives ‘NANO’ as weak, the difference in the non-distinctive element ‘tender’, which has reduced visual impact, is not enough to exclude a likelihood of confusion. Indeed, 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 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 English-speaking part of the public. 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 11 369 832. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Angela DI BLASIO

María del Carmen COBOS PALOMO

Catherine MEDINA

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.