OPPOSITION No B 2 690 231

Ezzat Safadi, 102 Av. de Fontenaille “Le Caire Blanc”, 13100 Aix-en-Provence, France (opponent)

a g a i n s t

Hotung Investments Limited, P.O. Box 71, Craigmuir Chambers, Road Town, Tortola, British Virgin Islands (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 02/03/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 231 is upheld for all the contested goods.

2.        European Union trade mark application No 14 989 982 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 989 982. The opposition is based on European Union trade mark registration No 13 729 512 ‘SAFECO FRANCE’. The opponent invoked Article 8(1)(a) and (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 goods and services

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

Class 17:        Insulating materials.

Class 20:        Soft furnishings [cushions].

Class 24:        Textile goods, and substitutes for textile goods; Fabrics; Wall fabrics; Coated fabrics; Flame resistant fabrics; Linings [textile]; Printed textile piece goods; Grid-type fabrics; Rubberized textile fabrics; Adhesive fabric; Towelling [textile]; Elastic woven material; Industrial fabrics; Knitted fabric; Waterproof textile fabrics; Adhesive fabric for application by heat; Woollen cloth; Jute fabric; Cotton fabrics; Fabric on the roll; Lace fabrics; Fabrics for shirts; Linen cloth; Canvas for tapestry or embroidery; Apparel fabrics; Ramie fabric; Rayon fabric; Reinforced fabrics [textile]; Piled fabrics; Fabric cascades; Silk [cloth]; Nylon fabric; Curtain fabric; Heat-activated adhesive fabrics; Materials for soft furnishings; Upholstery fabrics; Mesh-woven fabrics; Narrow woven fabrics; Fabrics made from synthetic threads; Furnishing fabrics in the piece; Fabrics for industrial use; Elastic fabrics for clothing; Knit lace fabrics; Chemical fiber fabrics; Rubber covered yarn fabrics; Waste cotton fabrics; Mixed fiber fabrics; Worsted fabrics; Lingerie fabric; Polymer coated fabrics; Metal fiber fabrics; Inorganic fibre mixed fabrics; Vapour permeable fabrics; Semi-synthetic fiber fabrics; Non-woven reinforcing fabrics; Textile fabrics for lingerie; Non-woven fabrics for use with paddings; Non-woven fabrics for use with linings; Sponge cloths for textile use; Cloth bunting; Chemical fibre mixed fabrics; Hemp yarn fabrics; Resin impregnated textile fabrics; Broad woven industrial fabrics; Breathable waterproof fabrics; Wool loop knit fabrics; Tartan travelling rugs; Wool yarn fabrics; Fabrics covered with motifs to be embroidered; Cotton base mixed fabrics; Fabrics for use in covering armchairs; Knitted fabrics of wool yarn; Interior decoration fabrics; Fabric of imitation animal skins; Silk-cotton mixed fabrics; Hemp base mixed fabrics; Knitted fabrics of cotton yarn; Textile fabrics for the manufacture of clothing; Plastic reinforced fabrics; Knitted fabrics of silk yarn; Wool base mixed fabrics; Tensioning fabrics for upholstery; Fabrics for use as linings in clothing; Textile piece goods made of cotton; Polypropylene spunbonded non-woven textile fabrics; Silk base mixed fabrics; Fabrics for use in making jerseys; Elastic yarn mixed fabrics; Fabrics for the manufacture of furnishings; Textile fabrics for use in the manufacture of furniture; Textile fabrics for making into linens; Materials for use in making clothes; Hemp-cotton mixed fabrics; Hemp-wool mixed fabrics; Sponge cloths [textile piece goods]; Fabrics for manufacturing sun protectors; Wool-cotton mixed fabrics; Hemp-silk mixed fabrics; Fabric for use in the manufacture of bags; Fabric for use in the manufacture of umbrellas; Fabrics made from silk, other than for insulation; Textile fabrics for use in the manufacture of towels; Textile fabrics for use in the manufacture of sheets; Fabric for use in the manufacture of wallets; Fabrics made from cotton, other than for insulation; Coated fabrics for use in the manufacture of luggage; Traced cloth for embroidery; Fabrics made from wool, other than for insulation; Fabrics for manufacturing garden furniture; Fabric coated with rubber or plastics; Textile fabrics for use in the manufacture of curtains; Fabrics made from acrylic, other than for insulation; Fabrics made from nylon, other than for insulation; Fabrics made from polyester, other than for insulation; Fiberglass fabrics, for textile use; Fabrics made from linen, other than for insulation; Textile fabrics for use in the manufacture of beds; Paper yarn fabrics for textile use; Textile fabrics for use in the manufacture of wall coverings; Fabrics made from artificial fibres [other than for insulation]; Textile fabrics for making up into household textile articles; Kit comprised of fabrics for making quilts; Textile fabrics for use in the manufacture of pillowcases; Fabrics of inorganic fibres, other than for insulation; Woollen fabrics for use in the manufacture of jackets; Covered rubber yarn fabrics [for textile use]; Woollen fabrics for use in the manufacture of suits; Fabrics of organic fibres, other than for insulation; Fibre fabrics for use in the manufacture of articles of clothing; Face cloths; Fabrics made from natural fibres, other than for insulation; Fabrics of man-made fibres being textile goods in piece form; Fabrics of chemically produced fibres, other than for insulation; Fabrics for use in the manufacture of exterior coverings for chairs; Fabrics of carbon fibre, other than for insulation; Coated fabrics for use in the manufacture of leather goods; Textile fabrics for use in the manufacture of bedding; Heat resistant fabrics [other than for insulation]; Fabrics being textile piece goods for use in patchwork; Fabrics [textile piece goods] made of carbon fibre; Fibre fabrics for use in the manufacture of linings of bags; Fabrics being textile piece goods for use in manufacture; Fibre fabrics for the manufacture of the exterior coverings of furniture; Fabrics being textile piece goods for use in embroidery; Fabrics made of mixed synthetic and natural fibres, other than for insulation; Fabrics for sale in kit form for making toy monsters; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres.

Class 26:        Accessories for apparel, sewing articles and decorative textile articles.

Class 42:        Design services relating to furnishing fabrics; Consultancy relating to selection of furnishing fabrics [interior design].

The contested goods are the following:

Class 20:        Blinds of textile.

Class 24:        Bed clothes; bed covers; bed sheets; bed linen; blankets; pillow shams; pillowcases; quilts; comforters; duvets; covers for pillows, cushions or duvets; table-cloths (not of paper); table linen (textile); towels of textile; curtains of textile or plastic; shower curtains of textile or plastic; covers (loose) for furniture; fitted toilet lid covers of textile; textile linings; serviettes of textile; upholstery fabric; knitted fabric; non-woven textile fabric; hemp cloth; hemp fabric; woollen cloth; cotton fabric; jersey (fabric); frieze (cloth); zephyr (cloth); rayon fabric; gauze (cloth); elastic woven material and silk fabric for printing patterns; fabric; eiderdowns (down coverlets); textile materials; bath linen except clothing; household linen; textiles and textile goods; travellers’ rugs; textiles for making articles of clothing.

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 blinds of textile are similar to a low degree to the opponent’s textile fabrics for use in the manufacture of curtains in Class 24, since the goods have the same distribution channels and relevant public. In addition, they are complementary. In some cases (as in the case of these goods), the degree of transformation required from material to end product is insignificant: the fabric is merely cut into shape and/or sewn to obtain the finished product. Furthermore, many establishments allow customers to purchase either the base material or ready-made blinds made from that material. Therefore, the relevant public may expect these goods to come from the same undertakings.

Contested goods in Class 24

The contested bed clothes; bed covers; bed sheets; bed linen; blankets; pillow shams; pillowcases; quilts; comforters; duvets; covers for pillows, cushions or duvets; table-cloths (not of paper); table linen (textile); towels of textile; covers (loose) for furniture; fitted toilet lid covers of textile; textile linings; serviettes of textile; eiderdowns (down coverlets); bath linen except clothing; household linen; travellers’ rugs are included in the broad category of, or overlap with, the opponent’s textile goods. Therefore, they are considered identical.

The contested curtains of textile or plastic; shower curtains of textile or plastic are goods made of this type of cloth or woven fabric or made of a material that functions as a substitute for textiles, namely plastic. Therefore, they are included in the broad category of the opponent’s textile goods (in the case of curtains of textile) and substitutes for textile goods (in the case of curtains of plastic) and are deemed to be identical.

The contested upholstery fabric; knitted fabric; non-woven textile fabric; hemp fabric; cotton fabric; jersey (fabric); frieze (cloth); zephyr (cloth); rayon fabric; gauze (cloth); silk fabric for printing patterns are included in the broad category of the opponent’s fabrics. Therefore, they are identical.

Hemp cloth refers to woven or felted fabric made from the fibre of the cannabis plant, which is extracted from the stem and used to make strong fabrics (information extracted from Oxford Dictionaries on 01/03/2017 at https://en.oxforddictionaries.com/). It is therefore included in the broad category of the opponent’s fabrics and must be considered identical.

Textile goods; woollen cloth; fabric are identically contained in both lists of goods.

The contested elastic woven material for printing patterns is included in the broad category of the opponent’s elastic woven material. Therefore, they are identical.

The contested textile materials; textiles; textiles for making articles of clothing overlap with the opponent’s materials for use in making clothes. Therefore, they are 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 or similar to a low degree comprise both goods for everyday consumption and specialised goods and are directed at the public at large and at business customers with specific professional knowledge or expertise in various industrial sectors, such as the textile or design sector. The degree of attention is average.

3. The signs

SAFECO FRANCE	SAFECO
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). This applies by analogy to international registrations designating the European Union. 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 non-English-speaking part of the relevant public (such as the Italian-, French- and Spanish-speaking parts of the relevant public).

Both signs are word marks; the earlier mark and the contested sign comprise the word ‘SAFECO’, which has no meaning for the public in the relevant territory and is, therefore, distinctive to an average degree.

The word ‘FRANCE’, which appears as an additional element in the earlier sign and which will be understood by the relevant public as a reference to that country, is not distinctive, as it refers to a geographical location and could, therefore, be perceived by consumers as indicating the place of origin of the relevant goods. Consequently, the impact of this element is limited when assessing the similarity between the marks, and the more distinctive element of the earlier mark is the word ‘SAFECO’.

Visually and aurally, the signs have the word ‘SAFECO’ in common. They differ in the additional word ‘FRANCE’ in the earlier sign. The relevant consumers will focus on the coinciding distinctive element ‘SAFECO’ and not on the element ‘FRANCE’ at the end of the earlier sign.

In this regard, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘FRANCE’ of the earlier mark will evoke a concept, it is not sufficient to establish any conceptual similarity or dissimilarity, as this element is non-distinctive and cannot function as an indicator of commercial origin. Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity between the signs.

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 his 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 the non-distinctive element ‘FRANCE’ as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical or similar to a low degree. The similarities and dissimilarities between the signs have been established.

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).

Based on the principle of imperfect recollection and also having regard to the principle of interdependence, and in particular to the fact that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the signs, it is considered that the similarities between the signs are sufficient to cause the relevant public to believe that the conflicting goods, which are identical or similar to a low degree, come from the same undertaking or from economically linked undertakings. The relevant public could therefore believe that the contested sign is a modification of the earlier mark based on the same core element, perhaps used for a different line of products.

Bearing in mind the foregoing, there is a likelihood of confusion because the differences between the signs are confined to the word ‘FRANCE’, which is non-distinctive in relation to the relevant goods.

Considering all the above, there is a likelihood of confusion at least on the part of the non-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 EUTM registration No 13 729 512. It follows that the contested trade mark must be rejected in its entirety.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Arkadiusz GORNY

Carlos MATEO PÉREZ

Denitza STOYANOVA-VALCHANOVA

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.