OPPOSITION No B 2 515 206

El Gato Negro SL, Plaza Mayor Nº 30, 28012 Madrid, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professionnal representative)

a g a i n s t

Filatura e Tessitura di Tollegno S.p.A., Via Roma 9, 13818 Tollegno (Biella), Italy (holder), represented by Racheli S.R.L., Viale San Michele del Carso 4, 20144 Milan, Italy (professionnal representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 515 206 is partially upheld, namely for the following contested goods:

Class 23: Yarns in pure or mixed wool.

Class 24: Fabrics in pure or mixed wool.

2.        International registration No 1 220 134 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 220 134 for the word mark ‘LANA GATTO’. The opposition is based on, inter alia, Spanish trade mark registration No 840 326 for the figurative mark. 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.

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 Spanish trade mark registration No 840 326.

 

1. The goods

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

Class 23: Wool, cotton, silk and fiber acrylics.

The contested goods are the following:

Class 23: Yarns in pure or mixed wool.

Class 24: Fabrics in pure or mixed wool.

Class 25: Articles of clothing in pure or mixed wool, namely, coats, overcoats, raincoats, jackets, trousers, pants, skirts, suits, shorts, pullovers, track suits, gymnastic suits, sweaters, cardigans, pyjamas, T-shirts, shirts; stockings and socks; nightdresses, underwear, gloves, belts, neckties, hats, shawls, neckerchiefs, scarves; footwear, namely slippers.

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

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

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 23

The opponent’s wool includes yarns of wool. Therefore, the contested yarns in pure or mixed wool are included in the broad category of the opponent’s wool and these goods are identical.

Contested goods in Class 24

The contested fabrics in pure or mixed wool are similar to a low degree to the opponent’s wool, cotton, silk and fiber acrylics which cover yarns and thread used in sewing and weaving. These goods are necessarily used with textiles (i.e. fabrics) to sew textile products. To this extent, these goods are complementary. For the same reason, they might be purchased at the same sales outlets and target the same public.

Contested goods in Class 25

The contested articles of clothing in pure or mixed wool, namely, coats, overcoats, raincoats, jackets, trousers, pants, skirts, suits, shorts, pullovers, track suits, gymnastic suits, sweaters, cardigans, pyjamas, T-shirts, shirts; stockings and socks; nightdresses, underwear, gloves, belts, neckties, hats, shawls, neckerchiefs, scarves; footwear, namely slippers are not similar to the opponent’s goods. Even though the applicant’s articles of clothing and footwear are made of wool, this is not enough to justify a finding of similarity. These goods serve completely different purposes: clothing and footwear are meant to be worn by people, for protection and/or fashion, whereas the opponent’s goods are for sewing and weaving. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking.

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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered average.

3. The signs

	LANA GATTO
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).

The earlier mark is a figurative sign consisting of the Spanish expression ‘EL GATO NEGRO’ (‘the black cat’ in English), written in three lines, in black, rather standard characters The element ‘EL’ is weak since it is a definite article that introduces the distinctive expression ‘GATO NEGRO’. The term ‘NEGRO’ is followed by two characters that can be interpreted as ‘S L’ or ‘8 L’. When perceived as ‘S L’, this element is non-distinctive since it describes the legal form of the opponent. On the right hand-side of these verbal elements, a stylised black cat is depicted. This element essentially illustrates the meaning of the expression ‘EL GATO NEGRO’.

Regarding the figurative element of the earlier mark, 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).

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The contested sign is the word mark ‘LANA GATTO’. The Spanish term ‘LANA’ means ‘wool’. In relation to the relevant goods (yarns and fabrics in pure or mixed wool), this element is non-distinctive. The word ‘GATTO’, due to its similarity and phonetic identity with the corresponding Spanish word ‘gato’, is likely to be perceived as meaning ‘cat’. In relation to the goods, this element is distinctive.

Visually, the second element of the signs ‘GATO’ and ‘GATTO’, which are distinctive and independent within the signs, coincide in the letters ‘G-A-T-*-O’ and differ in the double letter ‘T’ of the contested sign. The signs differ in the non-distinctive element ‘LANA’ of the contested sign and in the remaining verbal and figurative elements of the earlier mark. Taking into account the above considerations about the distinctive elements of the signs, the signs are considered visually similar at least to a low degree.

Aurally, the pronunciation of the signs coincides in the syllables /ga-to/ present identically in both signs. The pronunciation differs in the sound of the non-distinctive element ‘LANA’ of the contested sign and in the sound of the elements ‘EL’, ‘NEGRO’ and ‘S L’ or ‘S 8’ of the earlier mark if pronounced. Indeed, it is likely that the element ‘S L’, when perceived as such by a part of the public, might not be pronounced due to its non-distinctive character. Taking into account the above considerations about the distinctive elements of the signs, they are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element of the earlier mark means ‘the black cat’ and the figurative element reinforces this concept. The contested sign conveys the concept of a cat and the element ‘LANA’ which means ‘wool’ is not distinctive. As both signs will be associated with the concept of a cat, they are conceptually similar to an average degree.

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 its 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 a weak element (‘EL’) and, for part of the public, a non-distinctive element in the mark (S L), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

The goods are partly identical and similar to a low degree and partly dissimilar.

The distinctive character of the earlier mark is normal and the degree of attention of the public is average.

The signs are visually similar at least to a low degree and aurally and conceptually similar to an average degree. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark given the relevant similarities between the signs.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

• Spanish trade mark registration No 1 247 610 for the figurative mark for services of distribution and storage of inner and outer clothing for men, women and children, boots, shoes and sport shoes, threads and twisted of silk, cotton, acrylic fibers and natural derivates of wool in Class 39.

• Spanish trade mark registration No 2 583 241 for the figurative mark  for retail services in commerce and through a global computer network of threads and twisted of silk, wool, cotton in Class 35.

These other earlier rights invoked by the opponent cover services which are clearly different to the remaining goods of the contested trade mark in Class 25.

Regarding the opponent’s services in Class 39, they refer to distribution and storage services. These services are provided by specialist companies such as transport companies whose business is not the manufacture and sale of the goods that are distributed and stored (kept in a particular place for a fee). The nature, purpose and method of use of these goods and services are different. They do not have the same providers/producers or distribution channels and are not in competition. Therefore, the opponent’s services in Class 39 are dissimilar to the contested goods in Class 25.

Regarding the opponent’s services in Class 35, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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 and directed against the remaining goods because the signs and/or the goods and services are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Frédérique SULPICE

Benoit VLEMINCQ

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.