OPPOSITION No B 2 565 425
Grotto S.P.A., Via Ponte dei Granatieri, 4, 36010 Chiuppano (Vicenza), Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)
a g a i n s t
Gas Monkey Holdings Llc, 12020 Chandler Blvd. Ste 200, North Hollywood CA 91607, United States of America (applicant), represented by Marks & Clerk Llp, Fletcher House, Heatley Road, The Oxford Science Park, Oxford OX4 4GE, United Kingdom (professional representative).
On 16/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 565 425 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 013 619. The opposition is based on European Union trade mark registration No 8 273 708. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils; cosmetics, hair lotions; dentifrices; roll-on deodorants and solid deodorants for personal use.
Class 9: Photographic, cinematographic, optical, and teaching apparatus and instruments; apparatus and instruments for conducting, distributing, transforming, accumulating, adjusting and controlling electric current; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing apparatus and computers; electronic publications downloadable; spectacles, frames, lenses, cases, cords, eyeglass chains; video games.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; jewellery, goldware.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery, adhesives for stationery or household purposes, artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type, printing blocks; notebooks, pens, periodicals, magazines, books.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; bags: umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, shoes, headgear; coats, overcoats, blousons, greatcoats, pants, jeans, jackets, shirts, skirts, hosiery, tailored jackets, tracks, sweatshirts, stockings, socks, neckties, hats, berets, headscarves, footwear, boots, slippers.
Class 35: Advertising; business management; business administration; office functions; dissemination of advertisements; dissemination of advertising matter; rental of advertising space; Commercial and industrial management assistance and consultancy, professional business consultancy, modelling for advertising or business promotion, franchising, that is services provided by a franchiser consisting of assistance in the management and development of a commercial concern (services for others); commercial information on fashion; franchising, namely services provided by a franchisor consisting of the transfer of know-how relating to commercial aspects of franchising.
Class 42: Scientific and technological services including related research and design services; industrial analysis and research services; textile testing; styling (industrial design); industrial design; styling; research and development of new products; creation and development of computer software and hardware; consultancy relating to the interior fittings of shops and design of related signs (services for others).
The contested goods are the following:
Class 14: Jewellery; costume jewellery; watches; key rings.
Class 16: Printed matter; stationery; stickers.
Class 18: Leather and imitations of leather; travelling bags; bags; wallets; umbrellas; key cases.
Class 25: Clothing; footwear; clothing, namely, shirts, t-shirts, jackets, sweatshirts, hooded sweatshirts, socks, gloves, underwear, belts; headgear, namely, hats and beanies.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large. The degree of attention varies depending on the nature of the goods, from average to high (for goods such as jewellery, which can be very expensive).
- The signs
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GAS |
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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 a word mark containing a word of three letters. The word has a meaning in various languages: any substance that is gaseous at room temperature and atmospheric pressure (in English, Bulgarian, Spanish, Dutch, Slovenian, Slovak among others). The word is distinctive for all the goods and services. The mark has no dominant element.
The contested sign is a figurative mark. It contains a very detailed and stylised depiction of a monkey’s head with open mouth and outstretched tongue. Above that image are conjoined words, in stylised title case typeface in black and with white borders ‘GasMonkey’. Underneath the monkey’s head is a word ‘Garage’ in the similar stylised font. The word GAS is perceived with the same meaning as explained above. The word MONKEY is perceived as an English word for that specific animal. by part of the public that understands it. The image of the monkey is perceived with its natural meaning by the entire public. The word ‘Garage’ is perceived, by part of the public, as an English word referring to a place to park a car or where cars are repaired. The same word with similar meaning is also present in other languages, such as Italian, French, German, Dutch or Swedish.
The contested mark has no elements that could be considered clearly more distinctive than other elements. The mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the element GAS, which forms the earlier mark and is present in the contested mark. However, the marks differ in the stylisation of that coinciding element, as well as in the remaining distinctive elements of the contested mark, including the remaining words and the device element together with the overall stylisation and build-up of the mark. The earlier mark contains a single word of three letters, while the contested mark contains three words of fifteen letters in total.
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. Therefore, in short words, as is the earlier mark in the present case, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable GAS. The pronunciation differs in the sound of the letters MONKEY GARAGE of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are aurally similar to a low degree.
Conceptually, the meaning of the elements in both marks has been explained above. Due to the coinciding element GAS, perceived by part of the public, the marks are conceptually similar only to a low degree for the part perceiving this word. For the remaining public, who will not perceive the meaning of other words or no meaning in any of the words, but will perceive a meaning of the monkey image in the contested mark, the marks 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in Italy. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness in Italy and a normal distinctiveness in the remaining part of the relevant territory.
- Global assessment, other arguments and conclusion
The contested goods have been assumed to be identical. The similarities and dissimilarities of the marks have been described in detail in section c).
The level of attention of the relevant public will vary from average to higher than average.
The signs are similar only to the extent that they share the letters GAS. However, the signs differ significantly in the remaining word elements and their overall length (three letters vs fifteen letters), and complex and memorable figurative elements and stylisation of the contested mark. All these additional elements diminish the relevance of the coinciding element in the contested mark, which, despite its placement at the beginning of the word element, is likely to be overlooked by consumers when considering the mark as a whole.
It should be noted that ‘(…) 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’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41).
The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
In the present case the strong visual, conceptual and aural differences prevail and are sufficient to counteract the similarities.
In addition, it is noted that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable and striking visual differences between the signs caused by the additional and different verbal/figurative elements are particularly relevant when assessing the likelihood of confusion between them.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same since in the present case there is a totally different overall impression featured in the contested sign, which also contains a very memorable and distinctive image of a monkey’s head and the additional stylised words.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use in Italy, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
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
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Ric WASLEY |
Erkki MÜNTER |
Begoña URIARTE VALIENTE
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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.