OPPOSITION No B 2 596 206

Cotonella S.p.A., Via T. Edison, 33, 25050 Sonico (BS), Italy (opponent), represented by Studio Torta S.p.A., Via Viotti, 9, 10121 Turin, Italy (professional representative)

a g a i n s t

Pixel 307 S.L., Ctra. Eivissa a Sta. Eulària (antiguo 299), 07840 Santa Eulària des Riu, Spain (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

On 17/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 596 206 is upheld for all the contested goods, namely 

Class 25: Headgear; Footwear; Clothing.

2.        European Union trade mark application No 14 181 101 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 181 101, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 9 279 084. 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 9 279 084.

1. The goods

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

Class 25: Clothing, footwear, headgear, underwear, pyjamas for men, women and children.

The contested goods are the following:

Class 25: Headgear; Footwear; Clothing.

Headgear; Footwear; Clothing are identically contained in both lists of 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 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 Italian-speaking part of the relevant public.

The earlier mark is a figurative mark. It consists of the verbal element ‘ANYMA’ in slightly stylised letters featuring an inverted comma above the central letter ‘Y’ in the first line. In the second line the verbal elements ‘di COTONELLA’ appear in much smaller letters. They are not centred but placed to the right, beneath the letters ‘MA’ of the first verbal element ‘ANYMA’.

The contested sign is also a figurative mark. It consists of the verbal element ‘ANIMA’ in slightly stylised letters with the digit ‘4’ above the letter ‘M’. All elements are in blue colour.

The marks have no elements that could be considered clearly more distinctive than other elements.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements. Contrary to the applicant’s argument the digit ‘4’ does not catch the consumers’ main attention due it size and position. This is because the digit is clearly not bigger than the letters of the verbal element ‘ANIMA’ and, in fact, it appears slightly smaller than the letters.

The element  in the earlier sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the string of letters ‘AN*MA’, although the way these letters are stylised differs. However, the signs differ in 1) the letters ‘Y’ or ‘I’ in the middle of the signs, 2) the other words ‘di COTONELLA’ of the earlier mark, which are, however, not dominant, 3) the inverted comma above the letter ‘Y’ of the earlier mark and 4) the digit ‘4’ in the contested sign.   

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).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛A-N-Y/I-M-A’, present identically in both signs. The coinciding element is distinctive and the dominant element of the earlier mark. The pronunciation differs in the sound of the digit ‛QUATTRO’ of the contested mark and the sound of the letters ‘di COTONELLA’ of the earlier sign. However, it is doubtful if all the differing elements will be pronounced, because particularly the words ‘di COTONELLA’ appear in much smaller size in the earlier mark. 

Therefore, the signs are highly similar.

Conceptually, the public in the relevant territory will perceive the contested sign as a combination of the digit 4 and the word ‘soul’. Since the verbal element ‘ANYMA’ of the earlier mark and the word ‘ANIMA’ are pronounced identically, they convey the same meaning when perceived aurally, namely ‘soul’. In addition, the components ‘di COTONELLA’ of the earlier mark is perceived as a reference to the designer’s name.

As the signs will be associated with a similar meaning and this meaning is distinctive, the signs are conceptually similar to an average 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 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.

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).

The goods are identical and they are directed at the public at large whose level of attention is average. The applicant claims that the goods are addressed to different consumers but does not provide any reasons for this claim. Considering that the goods are clearly identical, the Opposition Division cannot see how the relevant public of these goods could be different.

For the Italian-speaking public the dominant verbal element ‘ANYMA’ of the earlier mark is phonetically identical with the word ‘ANIMA’ of the contested sign. These words are also conceptually identical. Overall, when taking into account all the additional elements of both signs, the signs are visually and conceptually similar to an average degree and aurally similar to a high degree.

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 9 279 084. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 9 279 084 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 mark invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Francesca CANGERI SERRANO

Beatrix STELTER

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.