OPPOSITION No B 2 659 244

Hayat Kimya Sanayi A.S., Çobançesme, Sanayi Caddesi No. 16, Yenibosna, Istanbul, Turkey (opponent), represented by Curell Sunol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

ByTecno Srl, Principe di Piemonte Nr. 199, 80026 Casoria (Naples), Italy (applicant), represented by Teodoro Reppucci, Sottotenente Corrado, Nr. 29, Avellino 83100, Italy (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 659 244 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 400 981, namely against all the goods in Class 16. The opposition is based on, inter alia, European Union trade mark registration No 4 174 331. 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 4 174 331.

1. The goods

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

Class 16:        Paper products; paper handkerchiefs, napkins and towels; toilet paper; make-up removing pads/tissues; disposable diapers.

The contested goods are the following:

Class 16:        Paper, card and 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.

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.

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 listed above. The examination of the opposition will proceed as if all the contested goods 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 assumed to be identical are directed at the public at large. The degree of attention is average.

3. The signs

TENO
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, ‘TENO’, which does not have any meaning in any language in the EU.

The contested mark is a figurative sign, consisting of the word ‘by’ in grey lower case letters and the letters ‘TECNO’ in black slightly italicised upper case letters. These words are surrounded by two elliptical lines, one on the upper right and one on the lower left side.

The element ‘TECNO’ of the contested sign will be understood in, for example, Spanish, Portuguese and Italian as an abbreviation of the adjective ‘tecnólogico’ or ‘tecnologico’ (technological). This element has, over time, become a customary and widely recognised abbreviation and has very similar counterparts in all EU languages, for example ‘techno’ (English) and ‘tekno’ (Estonian). The word refers to technology or something technological in all EU languages. The word is therefore allusive for goods having technological properties or incorporating technological advances. Bearing in mind that the relevant goods are paper goods and related products, which can have technical characteristics (inter alia, the pulp and papermaking industry is highly technological) or be developed technically, this element is considered weak for these goods.

The first verbal element, ‘by’, of the contested mark will, for the English-speaking public, be understood as a preposition and therefore as qualifying the word ‘TECNO’ in the mark, indicating the provenance of the mark and its products, and meaning, as a whole, ‘by technology’. For the rest of the European public, however, the word ‘by’ in itself has no specific meaning.

The two elliptical lines, or arcs, in the contested sign, are non-distinctive figurative elements of a purely decorative nature.

The element ‘TECNO’ in the contested sign is the dominant element as it is the most eye-catching.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘TE*NO’. However, they differ in the first verbal element ‘by’, the letter ‘C’ placed in the middle of the word ‘TECNO’ and the typeface and stylisation in the contested mark. The earlier mark is distinctive, while the element ‘TECNO’ in the contested mark is weak, as explained above.

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 sound of the letters ‛TE-NO’, present identically in both signs. The pronunciation differs in the sounds of the letters ‛BY’ and the centrally placed letter ‘C’ of the contested mark, which have no counterparts in the earlier sign. The earlier mark is distinctive, while the element ‘TECNO’ in the contested mark is weak, as explained above.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the meaning of the contested sign has been discussed above. Although the public in the relevant territory will perceive the meanings of the elements ‘TECNO’ and ‘by’ of the contested sign, as explained above, the other sign has no meaning in these territories. Since one of the signs will not be associated with any meaning, the signs 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.

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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The goods assumed to be identical target the public at large. The degree of attention is deemed to be average.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs were found to be aurally and visually similar to the extent that they have in common the sequence of letters ‘TE*NO’. However, they differ in the first verbal element ‘BY’, the letter ‘C’ and the stylisation of the contested mark, and in the conceptual meanings of the elements in the contested sign, ‘TECNO’ and ‘by’, which have no counterparts in the earlier sign.

These differences set the signs at issue apart. The Opposition Division considers that, despite the assumed identity between the goods at issue, even consumers with only an average degree of attention would not confuse the marks.

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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. The marks are not comparable. For example, in the cases referred to, the marks consisted of more elements than those in the present case and had no conceptual meaning, unlike in the present case.

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.

The opponent has also based its opposition on Bulgarian trade mark registration No 2005 080 588 for the word mark ‘TENO’ and Romanian trade mark registration No 2005 08 373 for the word mark ‘TENO’.

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

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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Erkki MÜNTER

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.