OPPOSITION No B 2 727 686

Ente Autonomo Fiera Internazionale di Milano, Largo Domodossola, 1, 20145 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C. Srl, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Industrial Química del Nalón S.A., Avenida de Galicia 31 33005 Oviedo, Spain (applicant), represented by José Francisco Ibáñez González, Plaza Conde del Valle de Suchil, 3 – 1º I 28015 Madrid, Spain (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 686 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 15 248 421. The opposition is based on, inter alia, EU trade mark registration No 1 966 407. The opponent invoked Article 8(1)(a) and (b) and 8(5) 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 1 966 407.

1. The goods and services

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

Class 16: Printed matter, newspapers and periodicals, books and catalogues.

Class 35: Study, design and creation of advertising material and campaigns, publication of publicity texts; preparation, organisation, promotion and setting up of fairs and exhibitions for others.

Class 38: Communications by computer terminals; message sending via computer networks.

Class 41: Organisation of congresses and seminars.

Class 42: Management of exhibition facilities.

The contested goods and services are the following:

Class 1: Adhesives for use in industry; Starches for use in manufacturing and industry; Detergents for use in manufacture and industry; Fertilisers, and chemicals for use in agriculture, horticulture and forestry; Putties, and fillers and pastes for use in industry; Filtering media of chemical and non-chemical substances included in the class; Chemical preparations and materials for film, photography and printing; Unprocessed and synthetic resins; Salts for industrial purposes; Chemical substances, chemical materials and chemical preparations, and natural elements.

Class 2 Thinners and thickeners for coatings, dyes and inks; Raw natural resins; Coatings; Dyes, colorants, pigments and inks.

Class 3: Essential oils and aromatic extracts; Toiletries; Tailors’ and cobblers’ wax; Cleaning and fragrancing preparations; Animal grooming preparations; Abrasive preparations; Grinding preparations.

Class 4: Dust controlling compositions; Fuels and illuminants; Electrical energy; Lubricants and industrial greases, waxes and fluids.

Class 5: Hygienic preparations and articles; Dental preparations and articles; Medical and veterinary preparations and articles; Pest control preparations and articles; Dietary supplements and dietetic preparations.

Class 35: Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Import and export services.

Class 40: Printing, and photographic and cinematographic development; Energy production; Slaughtering; Air and water conditioning and purification; Duplication of audio and video recordings; Custom manufacture and assembly services; Food and beverage treatment; Butchering; Recycling and waste treatment; Textile, leather and fur treatment; Treatment [recycling] of chemicals; Treatment of materials using chemicals.

Class 42 Testing, authentication and quality control; Science and technology services; Design services; IT services; Scientific and industrial research; Industrial analysis services; Scientific research and analysis; Programming of electronic control systems.

Some of the contested goods and services are identical to goods and services 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 and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed at the public at large and also at professionals. The relevant public’s degree of attention towards the goods and services is likely to vary according to the category of goods and services in question, ranging from average to high depending on the nature and the price of the goods and services.

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 figurative mark consists of a black circle containing on each side three white stripes of an even width. The earlier mark has no element that could be considered more dominant or distinctive than other elements.

The contested sign consists of the word ‘Nalón’, which is meaningless in the European Union, although a part of the public in Spain may recognise it as the name of a river in the north of Spain (https://www.turismoasturias.es/descubre/naturaleza/otros-espacios/rios/rio-nalon).

Above this verbal element is a figurative element consisting of a blue circle containing three white stripes on each side, the width of which increases slightly towards the centre of the circle.

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).

When perceiving a mark as a whole, consumers tend to focus more on the verbal elements than on the figurative elements; therefore, in the contested sign, the word ‘Nalón’ is the more important element of the contested mark.

Visually, in the contested sign, the verbal element ‘Nalón’, has no counterpart in the earlier mark. The only resemblance between the conflicting marks concerns the presence in each of a circle containing lines in similar positions. However, their colours are different and the lines are different in that they are uniform in the earlier mark, whereas, in the contested sign, the width of each line increases slightly towards the centre of the circle.

Therefore, the signs are visually similar to a low degree at most.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare it aurally with the contested sign.

Conceptually, although a part of the public in Spain will perceive the meaning of the word ‘Nalón’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, because ‘Nalón’ is meaningless, the marks are not conceptually similar either.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services 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

In the present case, it has been established that the signs are similar only on a visual level, and only to a low degree.

The inherent distinctiveness of the earlier mark is average. No evidence has been submitted to demonstrate its enhanced distinctiveness.

In view of the low degree of visual similarity between the signs, the Office finds that the differences between the marks would not escape the relevant public’s attention, even taking into account 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) and the fact that, for some of the goods and services, the degree of attention would be higher than average.

The visual differences between the marks, including the presence of the word ‘Nalón’ in the contested mark (found to be the more important element within the mark) are sufficient to outweigh the signs’ visual similarity such that there is no likelihood of confusion in the European Union.

The mere fact that the marks both include figurative elements that depict three parallel straight lines on each side of a circle does not invalidate that finding, since there is no element in the earlier mark that resembles the verbal elements in the contested mark.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• Italian trade mark registration No 480 929 for the figurative mark for goods and services in Classes 16, 35 and 42.

• Italian trade mark registration No 1 441 639 for the figurative mark for goods and services in Class 41 and 43.

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The other earlier rights invoked by the opponent are the following:

• Italian trade mark registration No 445 659 for the figurative mark  for goods and services in Classes 1, 2, 3 4, 5, 35 and 40.

• Italian trade mark registration No 1 484 848 for the figurative mark  for goods and services in Classes 16, 35, 41 42 and 43.

These earlier rights are less similar to the contested mark. This is because they contain the additional words ‘FIERA MILANO’, which are not present in the contested trade mark. The words ‘FIERA MILANO’ will be pronounced and are not present in the contested sign; therefore, they are clearly aurally different: ‘Nalón’ versus ‘FIERA MILANO’. In Italian, the words ‘FIERA MILANO’ have a clear meaning and ‘Nalón’ is meaningless; therefore, the signs are conceptually dissimilar. The overall impressions created by the conflicting signs are clearly dissimilar. According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Consequently, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on these earlier rights.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

The examination will continue on the basis of the other ground claimed by the opponent, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 11/07/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 16/11/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Francesca DINU

Birgit FILTENBORG

Loreto URRACA LUQUE

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.