OPPOSITION No B 2 764 689

Astro Europa, S.L., C/. Corretger, 59-1-Parque Empresarial Tactica, 46980 Paterna-Valencia, Spain (opponent), represented by J. Lopez Patentes Y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)

a g a i n s t

ASTRA S.A., ul. Poleczki 23, 02-822 Warszawa, Poland (applicant), represented by Patpol SP Z.O.O., Nowoursynowska 162 J, 02-776 Warszawa, Poland (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 764 689 is partially upheld, namely for the following contested goods and services:

Class 16:        School supplies (stationery); writing sets; stationery; stencils (stationery); paper stationery; stationery; albums; desk pads; transparencies (stationery); stationery and educational supplies; books for developing mental and motor activity in children, pictures for colouring, collage and scratching; diaries; arts, crafts and modelling equipment; decoration and art materials and media; graphic representations in the form of drawings and pictures; photographic or art mounts; framed and unframed paintings; photographs; printed educational materials; stamps (seals); stamp ink; stamp pads; origami folding paper; paper; coloured paper; decorated paper; drawing paper; paper and cardboard; disposable paper products; noteboards; glue for stationery or household purposes; works of art and figurines of paper and cardboard; architects´ models; bags and articles for packaging, wrapping and storage of paper, cardboardor plastics; paper stationery; office requisites, except furniture; paintbrushes; wrapping materials made of paper; packaging materials made of cardboard; plastic materials for packaging; canvas stretcher bars for artists; canvas for painting; canvasses for painters; paint applicator rollers; paint boxes (articles for use in school); photograph frames and stands; drawing sets; pen and ball pen sets; sketching, drawing and painting sets for artists; sets ofdrafting instruments for use in schools or for professional use; painting sets for children; glitter glue for stationery purposes; polymer modelling clay; paste for modelling; modelling clay; modelling compounds of plastic, toy putty; stickers [stationery]; albums for stickers; pencil cases; pouches for writing instruments; pencil trays; gift cases for writing instruments; pens and ball pens; drawing pencils; pencils; automatic pencils; color pencils; pencil cups; correcting fluids [office requisites]; correction pens; correcting tapes (office requisites); rubber erasers; ink sticks; pen ink cartridges; refills for ballpoint pens; marking pen refills; refills for ballpoint pens; folders (stationery); files (stationery); folders for blueprints; paper expanding files; pencilsharpeners; pads (stationery); easel pads; self-adhesive tapes for stationery use; gummed tape (stationery); adhesive tape dispensers (office requisites); bubble packs (plastic -) for wrapping or packaging; wrapping foils for books; plastic transparencies; adhesive foils stationery; notebooks; notepads; scratch paper; file covers; exercise-book covers; covers (stationery); covers (stationery); sleeves for holding and protecting stamps; binders; document covers; spiral-bound notebooks; paper bags.

Class 35:        Retailing and wholesaling of stationery, office requisites, writing, drawing, painting and drafting sets, school supplies for writing, painting, drawing, gluing and moulding, arts, crafts and modelling equipment, decoration and art materials and media, painters' colours, paints for artists, paints for office use, paints for arts and crafts, paint media for artists, printed matter, stationery of paper, office requisites (except furniture), paintbrushes; framed or unframed pictures, photographs, photograph frames, picture frames, printed educational materials, paper and cardboard.

2.        European Union trade mark application No 15 122 179 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 122 179, namely against all the goods and services in Classes 16 and 35. The opposition is based on European Union trade mark registration No 12 889 028. 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.

1. The goods and services

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

Class 16:        Stationery supplies; Goods and materials of paper and cardboard for artworks and models; Decoration and art materials and media; Stationery.

The contested goods and services are the following:

Class 16:        School supplies (stationery); writing sets; stationery; stencils (stationery); paper stationery; stationery; albums; calendars; desk pads; transparencies (stationery); stationery and educational supplies; books for developing mental and motor activity in children, colouring books; pictures for colouring, collage and scratching; diaries; arts, crafts and modelling equipment; decoration and art materials and media; graphic representations in the form of drawings and pictures; occasion cards; photographic or art mounts; framed and unframed paintings; photographs; printed matter; printed visuals; printed educational materials; stamps (seals); stamp ink; stamp pads; origami folding paper; paper; coloured paper; decorated paper; drawing paper; paper and cardboard; disposable paper products; noteboards; glue for stationery or household purposes; works of art and figurines of paper and cardboard; architects´ models; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; printed matter; paper stationery; office requisites, except furniture; paintbrushes; wrapping materials made of paper; packaging materials made of cardboard; plastic materials for packaging; canvas stretcher bars for artists; canvas for painting; canvasses for painters; paint applicator rollers; paint boxes (articles for use in school); photograph frames and stands; drawing sets; pen and ball pen sets; sketching, drawing and painting sets for artists; sets of drafting instruments for use in schools or for professional use; painting sets for children; glitter glue for stationery purposes; polymer modelling clay; paste for modelling; modelling clay; modelling compounds of plastic, toy putty; stickers [stationery]; albums for stickers; pencil cases; pouches for writing instruments; pencil trays; gift cases for writing instruments; pens and ball pens; drawing pencils; pencils; automatic pencils; color pencils; pencil cups; correcting fluids [office requisites]; correction pens; correcting tapes (office requisites); rubber erasers; ink sticks; pen ink cartridges; refills for ballpoint pens; marking pen refills; refills for ballpoint pens; folders (stationery); files (stationery); folders for blueprints; paper expanding files; pencilsharpeners; pads (stationery); easel pads; self-adhesive tapes for stationery use; gummed tape (stationery); adhesive tape dispensers (office requisites); bubble packs (plastic -) for wrapping or packaging; wrapping foils for books; plastic transparencies; adhesive foils stationery; notebooks; notepads; scratch paper; book covers; passport covers; checkbook covers; file covers; exercise-book covers; covers (stationery); covers (stationery); sleeves for holding and protecting stamps; binders; document covers; spiral-bound notebooks; paper bags.

Class 35:        Sales promotion, organisation of exhibitions and events for commercial or advertising purposes, loyalty, incentive or promotional schemes, sponsorship search, import and export, procuring of contracts for the purchase and sale of goods, promotional sponsorship; retailing and wholesaling of stationery, office requisites, writing, drawing, painting and drafting sets, school supplies for writing, painting, drawing, gluing and moulding, arts, crafts and modelling equipment, decoration and art materials and media, painters' colours, paints for artists, paints for office use, paints for arts and crafts, paint media for artists, printed matter, stationery of paper, office requisites (except furniture), paintbrushes, packaging materials of paper, packaging materials of cardboard, plastic materials for packaging, framed or unframed pictures, photographs, photograph frames, picture frames, printed matter, printed visuals, printed educational materials, paper and cardboard, playthings, games and play accessories, rucksacks, school knapsacks, hiking rucksacks, rucksacks on castors, bags, pocket wallets and other articles used for carrying, luggage, and cases; arranging, conducting and supervising of sales (management) and promotional incentive schemes; promoting the sale of goods and services of others through the distribution of printed material and promotional contests.

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 16

Stationery (twice on the list); Stationery supplies and Decoration and art materials and media are identically contained in both lists of goods.

The contested School supplies (stationery); writing sets; stencils (stationery); paper stationery; albums; desk pads; transparencies (stationery); educational supplies; books for developing mental and motor activity in children; diaries; photographic or art mounts; stamps (seals); stamp ink; stamp pads; paper; coloured paper; decorated paper; paper and cardboard; disposable paper products; noteboards; glue for stationery; paper stationery; office requisites, except furniture; paint boxes (articles for use in school); photograph frames and stands; pen and ball pen sets; sets of drafting instruments for use in schools or for professional use; glitter glue for stationery purposes; stickers [stationery]; albums for stickers; pencil cases; pouches for writing instruments; pencil trays; gift cases for writing instruments; pens and ball pens; drawing pencils; pencils; automatic pencils; color pencils; pencil cups; correcting fluids [office requisites]; correction pens; correcting tapes (office requisites); rubber erasers; ink sticks; pen ink cartridges; refills for ballpoint pens; marking pen refills; refills for ballpoint pens; folders (stationery); files (stationery); folders for blueprints; paper expanding files; pencilsharpeners; pads (stationery); self-adhesive tapes for stationery use; gummed tape (stationery); adhesive tape dispensers (office requisites); plastic transparencies; adhesive foils stationery; notebooks; notepads; scratch paper; file covers; exercise-book covers; covers (stationery); covers (stationery); sleeves for holding and protecting stamps; binders; document covers; spiral-bound notebooks are included in the broad category of, or overlap with, the opponent’s stationery. Therefore, they are identical.

The contested arts, crafts and modelling equipment; paste for modelling; modelling clay; modelling compounds of plastic, toy putty; drawing paper; canvas stretcher bars for artists; canvas for painting; canvasses for painters; paint applicator roller; drawing sets; sketching, drawing and painting sets for artists; painting sets for children; polymer modelling clay; easel pads in the broad category of, or overlap with, the opponent’s decoration and art materials and media. Therefore, they are identical.

The works of art and figurines of paper and cardboard; architects´ models; graphic representations in the form of drawings and pictures; pictures for colouring, collage and scratching; framed and unframed paintings; photographs overlap with, the opponent’s goods and materials of paper and cardboard for artworks and models. Therefore, they are identical.

The contested glue for household purposes is similar to a high degree to the opponent’s stationery as they have the same purpose and nature and usually coincide in producer and end user.

The contested bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; wrapping materials made of paper; packaging materials made of cardboard; plastic materials for packaging; bubble packs (plastic -) for wrapping or packaging; wrapping foils for books; paper bags and the opponent’s stationery normally do not coincide in producer and do not have the same nature and intended purpose. Furthermore, they are not in competition or complimentary. They usually have the same end user and distribution channels. Therefore, they are considered similar to a low degree.

The contested printed matter (mentioned twice); printed educational materials and the contested calendars; colouring books; occasion cards; printed visuals; book covers; passport covers; checkbook covers, which are also printed matter, are dissimilar to the opponent’s stationery as they usually do not coincide in nature, producer and they are either complementary or in competition. This applies also in relation to the remaining goods of the opponent.  

Contested services in Class 35:

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same reasoning applies to wholesaling services.

Therefore, the contested retailing and wholesaling of stationery, office requisites, writing, drawing, painting and drafting sets, school supplies for writing, painting, drawing, gluing and moulding, arts, crafts and modelling equipment, decoration and art materials and media, painters' colours, paints for artists, paints for office use, paints for arts and crafts, paint media for artists, stationery of paper, office requisites (except furniture), paintbrushes, framed or unframed pictures, photographs, photograph frames, picture frames, printed educational materials, paper and cardboard, as these goods were found to be identical those of the opponent, are similar to a low degree to the opponent’s goods in Classes 16.

Similarity between retail (and wholesaling) 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 regards to the contested retailing and wholesaling of packaging materials of paper, packaging materials of cardboard, plastic materials for packaging, printed matter, printed visuals, playthings, games and play accessories, rucksacks, school knapsacks, hiking rucksacks, rucksacks on castors, bags, pocket wallets and other articles used for carrying, luggage, and cases are retail and wholesaling services concerning other goods which are not identical to those of the opponent. Therefore, the above mentioned rule that the sale of particular goods are similar to a low degree to those particular goods are similar to a low to degree does not apply in regards to these retail and wholesale services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

The remaining contested sales promotion, organisation of exhibitions and events for commercial or advertising purposes, loyalty, incentive or promotional schemes, sponsorship search, import and export, procuring of contracts for the purchase and sale of goods, promotional sponsorship; arranging, conducting and supervising of sales (management) and promotional incentive schemes; promoting the sale of goods and services of others through the distribution of printed material and promotional contests consisting of providing, mainly, assistance to others in the sale and/or the launch of their goods and services.

Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the contested services and all the opponent’s goods are provided by very different types of companies (e.g. stationery producers versus organiser of exhibitions for incentive schemes) and they target different consumers (on the one hand, the general public looking for stationery and art supply and, on the other, business owners and operators). Moreover, they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

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 highly similar are directed at the public at large. The services found to be similar to a low degree are directed at business owners.

The degree of attention is an average regarding the goods. Regarding the services, the degree of attention is varying from average to high depending on the price, complexity and the expected impact on the user’s business.

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 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). 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 appropriateto focus the comparison of the signs on the Greek-speaking part of the relevant public.

The earlier sign is a figurative mark consisting of the verbal element ‘Astro’, depicted in blue bold letters, against an oval white background with a blue outer line. The word astro is the transliteration in the Latin alphabet of the Greek word «AΣΤΡO», meaning star. It will be perceived and understood accordingly by the relevant part of the public since the Greek consumer is accustomed to reading also Latin letters. The earlier sign has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of the verbal element ‘ASTRA’, depicted in white bold upper case letters against a round blue background with a silver outline. The verbal element is adjusted in its size to the circular form of the background, resulting into that the letters in the centre of the circular form are bigger than those on the left and right. Below the circular device is an additional verbal element ‘since 1927’, which will be pronounced accordingly, in a blue, much smaller font size than the other verbal element. The word astra is the transliteration in the Latin alphabet of the Greek word «AΣΤΡΑ», meaning stars, and will be perceived and understood accordingly by the relevant part of the public. The meaning of verbal element ‘since 1927’ will be understood only by a part of the relevant public. The contested sign has no elements that could be considered clearly more distinctive than other elements. The verbal element ‘since 1927’ is less dominant (visually eye-catching) due to its font size and position in the mark. ’ASTRA’ is the dominant element of the contested sign.

Visually, the signs coincide in the letters ‘ASTR*’ and in the colours blue and white. However, the signs differ in their respective last letter, ‘A’ (contested sign) vs ‘O’ (earlier sign). Furthermore, they differ in their type fonts and the depiction of the letters, the backgrounds’ shapes and in the silver outer line and the less dominant verbal element ‘since 1927’ of the contested sign that have no counterpart in the other mark.

Considering all the above the signs are similar to an average degree.

Aurally, the signs coincide in the letters ‘ASTR*’. However, the signs differ in their respective last letter, ‘A’ (contested sign) vs ‘O’ (earlier sign) and in the additional verbal element ‘since 1927’ of the contested sign that has no counterpart in the other mark. The latter is less dominant than the verbal element ‘ASTRA’ and hence the effect on the aural comparison is limited.

Taking into account all the above, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning star respectively its plural form stars, the signs are conceptually almost identical.

XXX The standard sentence that since the signs have been found at least similar in one aspect the comparison will proceed is missing.

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 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

The contested goods are partly identical, partly similar (to various degrees) and partly dissimilar. The services are partly similar to a low degree and partly dissimilar. The degree of attention is average for the relevant goods and may vary from average to higher than average when choosing the relevant services. The signs have been found visually and aurally similar to an average degree and conceptually almost identical. The coincidences between the signs are found in the sequence of letters ‘ASTR*’, being the sole verbal element of the earlier sign and the dominant element of the contested sign, which is distinctive for the relevant goods and services. The differences, as explained above in section c) of this decision, are not sufficient to offset the similarity between the signs.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Furthermore, 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).

Considering all the above, there is a likelihood of confusion on the Greek-speaking part of the public. This applies also for the contested goods and services which were found similar to a low degree because of the similarity of signs, especially as they are conceptually almost identical. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar (to various degrees) to the goods of the earlier trade mark.

The rest of the contested goods and services 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.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Judith NÉMETH

André Gerd Günther BOSSE

Plamen 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.