OPPOSITION No B 2 699 463

Victor Antonio Lopez Rodriguez,  Canónigo Molina Alonso, 20, 04004 Almeria, Spain (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

T.E.A. Sas di Elena Console & C., Contrada Santa Dominica 48/E, 88100 Catanzaro,

Italy (applicant), represented by Studio Rubino SRL, Via Lucrezia della Valle, 84, 88100 Catanzaro, Italy (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 463 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 15 061 286, namely against all the services in Class 41. The opposition is based on Spanish trade mark registration No 3 556 254, which covers services in Classes 35 and 41. 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.

1. The signs

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).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.

The earlier mark comprises the letter “A” together with the numeral “1” depicted in turquoise lettering with bold, paintbrush-style strokes and further flecks of turquoise around the characters which add spatter to the painted-effect graphic. Neither of the elements is more dominant than the other. In relation to the services on which the opposition is based, namely those in Classes 35 and 41, the inherent distinctiveness of these elements, merely representing the first letter of the alphabet and a numeral, as well as its juxtaposition is considered to be average for the Spanish consumer.

The contested sign consists of a fanciful representation of three curvilinear strokes which intersect at one point to create a cross-section which is open on three sides. The fourth section, which is closed, contains a small, multi-coloured fan device. This graphic lies to the left of the letter “i”, which is depicted in a curved font.

The contested services are a range of services in Class 41, featuring the arrangement of exhibitions including art exhibitions, displays and events for educational, entertainment and cultural purposes. The Opposition Division accepts that the services in Class 41 on which the opposition is based essentially include the same.

The opponent claims that the contested sign and the earlier mark both feature the letters “AI”, without however putting forward a cogent line of argument as to why the relevant consumer would perceive either of the signs in this way when viewed in concreto and by themselves. There is no reason to suggest that the earlier mark will be seen as the capital letters “AI” as opposed to “A1”. It is a known fact that a glyph made up of a line and a downward-facing serif, with or without a short horizontal line at the bottom, represents the number one.

It can be reasonably assumed that, due to the whimsical and unusual stylisation, the majority of the relevant public will not perceive the letter “A” in the contested sign. Rather, the sign will be perceived as a fanciful figurative device together with an arbitrary letter “i”, which has no meaning aside from the letter itself, and which is distinctive in respect of the pertinent services. The colourful fan-line device lacks any meaning. Due to its rather decorative nature, the distinctiveness of this element is weak. Furthermore, on account of its small size and position in relation to the other, more visually eye-catching elements, it is considered that the impact of this secondary element on the overall impression of the contested sign is limited.

Admittedly, a minor part of the public may perceive the highly stylised letters “Ai” together with a fan-like element in the contested sign. For those members of the Spanish public, the element “Ai” will have no meaning in respect of the Class 41 services, and will be distinctive to an average degree.

Visually, the signs coincide inasmuch as they are short signs which depict two elements or two characters. The majority of the Spanish public will see the contested sign as a fanciful, figurative representation placed in front of the letter “i”, which is depicted in an orthodox, rounded calligraphy. At most, a minority may see a coinciding letter “A” in the signs. However, even for such a minority there are striking differences in all aspects. The earlier mark is composed of bold daubs of linear lettering, crudely smeared in a uniform colour. It further features flecks reminiscent of splashes of paint. It depicts the letter “A” together with a number “1”. On the other hand, the contested sign’s characters are portrayed in narrowing, slender contours which are black and elongated. They scissor and curve away from each other in contrast to the robust up and down brush-work motion of the former. The first character further contains an arbitrary, multi-coloured swatch of staggered colour.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In short signs, small differences may frequently lead to a different overall impression.

It is concluded that the signs are visually dissimilar.

Aurally, the opponent argues that the signs are phonetically identical, however there is no reality to this argument. The relevant public will pronounce the earlier mark as the letter “A”, followed by the number “1” in Spanish, “uno”. The contested mark, on the other hand, will be pronounced as the single letter “i”, or, for that minority of the public who perceive an “A”, the mark will be pronounced as the diphthong “ai”. The pronunciation will be strikingly different for each of the putative scenarios.

As the phonetic coincidence is not perceptible in the contested sign even for the minor part of the public which discerns the word “Ai” in the contested sign, it is concluded that the signs are not aurally similar.

Conceptually, neither of the marks have any clear meaning for the relevant public. The former represents a letter and a number, while the contested mark depicts an abstract device together with the letter “i”. A limited number of Spanish people may perceive the word “Ai”, fanciful in respect of the services. However, these elements will not be associated with any specific semantic content. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs do not coincide in any relevant aspect, they are dissimilar overall.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Consequently, the opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Keeva DOHERTY

Natascha GALPERIN

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.