OPPOSITION No B 2 670 233

Valpaint SPA, Via dell’Industria, 80, 60020 Polverigi (AN), Italy (opponent), represented by Invention S.R.L., Via delle Armi, 1, 40137 Bologna, Italy (professional representative)

a g a i n s t

Andrea Paolini, Schiener Str. 16, 78337 Oehningen, Germany (applicant), represented by Isenbruck Bösl Hörschler LLP, Eastsite One Seckenheimer Landstr. 4, 68163 Mannheim, Germany (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 670 233 is upheld for all the contested goods, namely:

Class 2:        Dyestuffs, In particular oil-water based natural additives for wall paints.

2.        European Union trade mark application No 15 030 802 is rejected for all the contested goods. It may proceed for the remaining goods and 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 15 030 802, namely against all the goods in Class 2. The opposition is based on European Union trade mark registration No 14 342 828 and Italian trade mark registration No 1 651 410. 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 14 342 828.

1. The goods

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

Class 2:        Paints, varnishes, lacquers; Preparations for protecting wood against deterioration; Colorants; Mordants.

The contested goods are the following:

Class 2:        Dyestuffs, In particular oil-water based natural additives for wall paints.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 2

A colorant is a substance added to other materials to cause a change in colour. Colorants can be dyes, pigments, biological pigments, inks, paints or other coloured chemicals. The contested dyestuffs, in particular oil-water based natural additives for wall paints and the opponent’s colorants have to be regarded as synonyms. Therefore, they are considered identical.

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 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 earlier mark is figurative in nature and consists of the word ‘Nautilus’ written in black stylised lettering. The word ‘Nautilus’ will be understood by a part of the relevant public, such as the English-speaking public, as referring to a pelagic marine mollusc. The applicant argues that the mark would also be understood as alluding to the famous fictional submarine of Jules Verne’s novels. However, as the word exists in certain languages, it must be considered as invoking the main concept of a pelagic marine mollusc.

For the remaining part of the public, it has no meaning. In either case, it is not related to the goods in question and, therefore, it is distinctive.

The contested sign is a figurative sign composed of the distinctive verbal element ‘Nautilus’ and some less distinctive figurative elements. The word ‘Nautilus’ is written in thin white letters and appears in the centre of a black rectangle enclosed within a white oval line. Above the word, there are some additional smoothly curved lines that could be perceived as a stylised nautilus by those who understand the word.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘Nautilus’. They differ in their figurative elements.

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).

As the word element is identically contained in both signs and the consumers will pay less attention to figurative elements, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘Nautilus’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by a part of the relevant public as referring to a marine animal, the signs are conceptually identical for this part of the public. This concept is supported by the device in the contested sign that could be seen as a nautilus by those who understand the word. For the remaining part of the public in the relevant territory, neither of the signs has a meaning. Therefore, the conceptual aspect will not influence the assessment of the similarity between the signs for this part of the public.

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

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical. The signs are visually highly similar and aurally identical. Conceptually, depending on the perception of the relevant public, either the signs are identical or a conceptual comparison is not possible.

The signs have the distinctive verbal element in common and the additional elements of the earlier mark, as explained above under section c) of this decision, either reinforce the concept of this word or would be paid as much attention as the coinciding word. Consequently, the figurative differences between the signs are clearly not sufficient to outweigh the high degree of visual similarity and the aural and (depending on the perception of the public) conceptual identity between the signs.

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 European Union trade mark registration No 14 342 828. It follows that the contested trade mark must be rejected for all the contested goods.

As European Union trade mark registration No 14 342 828 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 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

Jorge ZARAGOZA GÓMEZ

Arkadiusz GORNY

Jessica LEWIS

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.