OPPOSITION No B 2 705 997

Jago AG, Ingersheimer Straße 12, 70499 Stuttgart, Germany (opponent), represented by Reble Klose Schmitt Partnerschaftsgesellschaft Von Rechts- Und Patentanwälten MBB, Konrad-Zuse-Ring 32, 68163 Mannheim, Germany (professional representative)

a g a i n s t

Novax Societa' Per Azioni, Corso Massimo D'Azeglio 30, 10125 Torino, Italy (applicant), represented by Ing. C. Corradini & C. S.R.L., Via Dante Alighieri 4, 42121 Reggio Emilia, Italy (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 997 is upheld for all the contested services.

2.        European Union trade mark application No 15 196 645 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 196 645 in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 11 745 429. 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 11 745 429.

1. The goods and services

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

Class 35:        Wholesaling and retailing of goods in the fields of: Toys for children, Children's furniture, Transport for children, animal products, goods for cats, goods for small animals, goods for dogs, goods for birds, fitness products, cycling requisites, outdoor products, photography requisites, hobby products, beauty and wellness products, sanitary goods, DIY products, solar products, Tools, Machinery, Living room furniture, Office furniture, home appliances, Goods for dining rooms and bars, hi-fi and electrical goods, Shelves, bedroom furniture, Insect screens and blinds, Garden furniture, Greenhouses, gardening equipment, Garden lighting, barbeque, Letterboxes, household goods, gardening products, construction requisites, goods for the home, leisure products; Advertising; On-line advertising; Distribution of promotional matter; Business management; Business administration; Office functions.

Class 38:        Telecommunications.

Class 39:        Transport; Packaging and storage of goods; Travel arrangement.

The contested services are the following:

Class 35:        Presentation of goods on communication media of all kinds, for retail and wholesale purposes; Electronic commerce services, Namely providing of product information via websites and telecommunications networks for advertising and sales purposes; The bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods, both at sales outlets and via electronic means, communications media and websites; Retailing or wholesaling of goods via sales outlets, online, websites or communications media of all kinds; Presentation of goods for sale on communications media of all kinds, including chemicals used in industry and agriculture, manures and fertilisers, tempering and soldering preparations, adhesives used in industry, paints, varnishes, lacquers, preservatives against rust and deterioration of wood, colorants, mordants; Presentation of goods on communication media, for sales purposes, Including herbicides, Preparations for destroying vermin, Fungicides, Herbicides, Common metals and their alloys, Building materials of metal, Transportable buildings of metal, Metal cables and wires (not for electrical purposes), Ironmongery and small items of metal hardware, Metallic pipes, Safes, Goods of metal, not included in other classes; Presentation of goods on communication media, for sales purposes, Including machines and Machine tools, Motors and engines (except for land vehicles), Internal combustion engines (not for land vehicles), log splitters, machines for cleaning and washing floors, snow blowers, snow blowers, Conveyors (machines), Beating machines, Compactors, machines for cutting; Presentation of goods on communication media, for sales purposes, Including agricultural machines, Strumenti agricoli, Other than hand-operated, Mowing and reaping machines, Motorised mowing and reaping machines, lawnmowers, brush cutters, motorised branch cutters, hedge trimmers, chain saws, tillers, Cultivators (machines), Cross-cutting saws, motorised augers, blowers, suction machines, leaf blowers, sprayers and nebulisers; Presentation of goods on communication media, for sales purposes, Including motorised pumps, Pumps (machines), Pumps (parts of machines, engines or motors), Submersible pumps, Centrifugal pumps, Pneumatic pumps, rotary pumps, Vacuum pumps (machines), Power generators, Screwdrivers, Sanding machines, Hand tools and instruments (hand operated), Cutlery, Forks and spoons, Side arms, other than firearms and Razors; Presentation of goods for sale on communications media of all kinds, including apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bicycles, vehicles, apparatus for locomotion by land, air or water; Presentation of goods for sale on communications media of all kinds, including rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal; Presentation of goods on communication media, for sales purposes, Including building materials (non-metallic),, Non-metallic rigid pipes for buildings, asphalt, Pitch and bitumen, Transportable constructions, not of metal, Monuments, not of metal; Presentation of goods on communication media, for sales purposes, Including furniture, Mirrors (looking glasses), frames, Goods of wood, Cork, Cane, Reed, wicker, Of horn, Bone, Ivory, Whalebone, Tortoiseshell, Amber, Mother-of-pearl, Meerschaum, Substitutes for all these materials, or of plastics; Presentation of goods on communication media, for sales purposes, Including household or kitchen utensils and containers (not of precious metal or coated therewith), Combs and spongers, Brushes (except paint brushes), Brush-making materials, Articles for cleaning purposes, Steel wool; Presentation of goods for sale on communications media of all kinds, including unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile); The bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods, at retail outlets, at wholesale warehouses, via mail order catalogues, via electronic means, via websites.

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

The term ‘including’, used in the applicant’s list of services, indicates that the specific services 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used also in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 services in Class 35

The contested Presentation of goods on communication media of all kinds, for retail and wholesale purposes; Presentation of goods for sale on communications media of all kinds, including chemicals used in industry and agriculture, manures and fertilisers, tempering and soldering preparations, adhesives used in industry, paints, varnishes, lacquers, preservatives against rust and deterioration of wood, colorants, mordants; Presentation of goods on communication media, for sales purposes, Including herbicides, Preparations for destroying vermin, Fungicides, Herbicides, Common metals and their alloys, Building materials of metal, Transportable buildings of metal, Metal cables and wires (not for electrical purposes), Ironmongery and small items of metal hardware, Metallic pipes, Safes, Goods of metal, not included in other classes; Presentation of goods on communication media, for sales purposes, Including machines and Machine tools, Motors and engines (except for land vehicles), Internal combustion engines (not for land vehicles), log splitters, machines for cleaning and washing floors, snow blowers, snow blowers, Conveyors (machines), Beating machines, Compactors, machines for cutting; Presentation of goods on communication media, for sales purposes, Including agricultural machines, Strumenti agricoli, Other than hand-operated, Mowing and reaping machines, Motorised mowing and reaping machines, lawnmowers, brush cutters, motorised branch cutters, hedge trimmers, chain saws, tillers, Cultivators (machines), Cross-cutting saws, motorised augers, blowers, suction machines, leaf blowers, sprayers and nebulisers; Presentation of goods on communication media, for sales purposes, Including motorised pumps, Pumps (machines), Pumps (parts of machines, engines or motors), Submersible pumps, Centrifugal pumps, Pneumatic pumps, rotary pumps, Vacuum pumps (machines), Power generators, Screwdrivers, Sanding machines, Hand tools and instruments (hand operated), Cutlery, Forks and spoons, Side arms, other than firearms and Razors; Presentation of goods for sale on communications media of all kinds, including apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, bicycles, vehicles, apparatus for locomotion by land, air or water; Presentation of goods for sale on communications media of all kinds, including rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal; Presentation of goods on communication media, for sales purposes, Including building materials (non-metallic),, Non-metallic rigid pipes for buildings, asphalt, Pitch and bitumen, Transportable constructions, not of metal, Monuments, not of metal; Presentation of goods on communication media, for sales purposes, Including furniture, Mirrors (looking glasses), frames, Goods of wood, Cork, Cane, Reed, wicker, Of horn, Bone, Ivory, Whalebone, Tortoiseshell, Amber, Mother-of-pearl, Meerschaum, Substitutes for all these materials, or of plastics; Presentation of goods on communication media, for sales purposes, Including household or kitchen utensils and containers (not of precious metal or coated therewith), Combs and spongers, Brushes (except paint brushes), Brush-making materials, Articles for cleaning purposes, Steel wool; Presentation of goods for sale on communications media of all kinds, including unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile) are all included in the broad category of the opponent’s advertising. Therefore, these services are identical. 

Likewise, the contested electronic commerce services, namely providing of product information via websites and telecommunications networks for advertising and sales purposes consist of providing others with assistance in the sale of their goods by promoting their launch and/or sale and therefore, they have some relevant points in common with the opponent’s advertising. These services can coincide in their purpose, their method of use and their providers. Moreover, they have similar natures. These goods are similar. 

The contested bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods, both at sales outlets and via electronic means, communications media and websites; the bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods, at retail outlets, at wholesale warehouses, via mail order catalogues, via electronic means, via websites are similar to the opponent’s wholesaling and retailing of goods in the fields of: Toys for children, Children's furniture, Transport for children, animal products, goods for cats, goods for small animals, goods for dogs, goods for birds, fitness products, cycling requisites, outdoor products, photography requisites, hobby products, beauty and wellness products, sanitary goods, DIY products, solar products, Tools, Machinery, Living room furniture, Office furniture, home appliances, Goods for dining rooms and bars, hi-fi and electrical goods, Shelves, bedroom furniture, Insect screens and blinds, Garden furniture, Greenhouses, gardening equipment, Garden lighting, barbeque, Letterboxes, household goods, gardening products, construction requisites, goods for the home, leisure products. The services at issue have the same natures since both are retailing/wholesaling services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. The relevant consumer may coincide too.

The remaining contested retailing or wholesaling of goods via sales outlets, online, websites or communications media of all kinds  and the opponent’s Wholesaling and retailing of goods in the fields of: Toys for children, Children's furniture, Transport for children, animal products, goods for cats, goods for small animals, goods for dogs, goods for birds, fitness products, cycling requisites, outdoor products, photography requisites, hobby products, beauty and wellness products, sanitary goods, DIY products, solar products, Tools, Machinery, Living room furniture, Office furniture, home appliances, Goods for dining rooms and bars, hi-fi and electrical goods, Shelves, bedroom furniture, Insect screens and blinds, Garden furniture, Greenhouses, gardening equipment, Garden lighting, barbeque, Letterboxes, household goods, gardening products, construction requisites, goods for the home, leisure products coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they are for retailing and wholesaling purposes. To that extent these services are similar to a low degree. However, in the absence of an express limitation by the applicant in order to clarify its services, it cannot be assumed that they coincide in other criteria

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 services found to be identical or similar (to different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise, in advertising and retailing/wholesaling field. The degree of attention may vary from average to high, depending on the price and (specialised) nature and conditions of the purchased services. A higher degree of attention is paid for example to advertising, as this could have consequences for the functioning of a business and their price could also be relatively high.

3. The signs

JAGO
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 German-speaking part of the relevant public for which the terms ‘JAGO’ and ‘YAGOS’ are meaningless.

The earlier mark is a word mark composed of the term ‘JAGO’.

The contested sign is a figurative mark consisting of the verbal element ‘YAGOS’, written in standard uppercase white letters on squares in different shades of grey and placed in different heights within the sign.

As mentioned above, the verbal elements ‘JAGO’ and ‘YAGOS’ have no meaning for the examined relevant public and are, therefore, inherently distinctive in relation to the services at issue.

As regards the figurative elements of the contested sign (squares, colour of letters, etc.), account must be taken that 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). Therefore, in view of the composition of the sign, the verbal element is the one that will be used to refer to it.

The signs under dispute have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in three letters, namely ‘A-G-O’, placed in the same position and differ in their first letters ‘J’ versus ‘Y’ and the last letter ‘S’ of the contested sign. Taking into account that the coincidence in the signs is placed in their distinctive elements and represents the majority of their letters placed in the same sequence ‘A-G-O’, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters in the sequence ‘JAGO’ and ‘YAGO-*’, because the first letters of the signs will be pronounced identically in German. In this context the pronunciation differs only in the last letter ‘S’ of the contested sign, which has no a counterpart in the earlier mark. Both signs are composed of two syllables and, therefore, their rhythm and intonation are also similar. Consequently, the signs are considered aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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 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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services at issue are identical and similar (to different degrees).

The earlier mark and the contested sign are visually similar to an average degree, aurally similar to a high degree and the signs have no clear concepts that would help a consumer to distinguish them.

The signs in dispute coincide in majority of their letters, namely, from a visual point of view in ‘A-G-O’ and phonetically in ‘J-A-G-O’ and ‘Y-A-G-O-*’, because the letters ‘J’ and ‘Y’ will be pronounced identically by the relevant public. The differences are limited to their first letters ‘J’ versus ‘Y’ (only visually) and to the last letter ‘S’ of the contested sign.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Therefore, the Opposition Division considers that the visual and, in particular, considerable aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory for identical and similar services (including similar to a low degree), even considering that the degree of attention of the relevant consumers in relation to the services at issue may be higher than average.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 745 429. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 11 745 429 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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

Liliya YORDANOVA

Monika CISZEWSKA

Gueorgui IVANOV

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.