OPPOSITION No B 2 646 522

 

Diesel S.P.A., Via dell’Industria 4-6, 36042 Breganze (VI), Italy (opponent), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

 

a g a i n s t

 

Octavio Artola Jaques, Carrer de la Cala Crancs Nº 28, 43840 Tarragona/Salou, Spain (applicant), represented by Peleato Patentes y Marcas S.L., Plaza del Pilar 12 1º 1ª, 50003 Zaragoza, Spain (professional representative).

 

On 10/01/2017, the Opposition Division takes the following

 

 

DECISION

 

1.        Opposition No B 2 646 522 is partially upheld, namely for the following contested goods and services:

 

Class 18:        Animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery.

 

Class 25:        Belts (clothing).

 

Class 35:        Wholesaling, retailing in shops and retailing via global computer networks of animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, belts (clothing).

 

2.        European Union trade mark application No 14 544 258 is rejected for all the above goods and services. It may proceed for the remaining services.

 

3.        Each party bears its own costs.

 

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 544 258. The opposition is based on, inter alia, Italian trade mark registration No 1 538 950. 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 Italian trade mark registration No 1 538 950.

 

 

1. The goods and services

 

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

 

Class 18:        Leather and imitations of leather, goods made thereof not included in other classes; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery.

 

Class 25:        Clothing; footwear; headgear.

 

The contested goods and services are the following:

 

Class 18:        Animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery.

 

Class 25:        Belts (clothing).

 

Class 35:        Wholesaling, retailing in shops and retailing via global computer networks of animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, belts (clothing); advertising; import and export services; business administration, concerning the issuing of franchises relating to assistance in the operation or management of a commercial company.

 

The earlier Italian trade mark registration No 1 538 950 is registered for the entire class headings of Classes 18 and 25 of the Nice Classification. It was filed on 04/10/1993. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 6th edition.

 

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 18

 

Animal skins, hides, trunks, umbrellas, parasols and walking sticks, whips and saddlery are identically contained in both lists of goods (including synonyms).

 

The contested travelling bags and harness can be made of different kinds of materials including leather or imitation leather. Since the Opposition Division cannot dissect ex officio the broad category of these goods, they overlap with the opponent’s goods made of leather and imitations of leather not included in other classes. Therefore, they are identical.

 

Contested goods in Class 25

 

The contested belts (clothing) are included in the broad category of the opponent’s clothing. Therefore, they are identical.

 

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.

 

Therefore, the contested wholesaling, retailing in shops and retailing via global computer networks of animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, belts (clothing) are similar to a low degree to the opponent’s goods made of leather and imitations of leather not included in other classes; animal skins; trunks; umbrellas, parasols and walking sticks; whips and saddlery; clothing.

 

The contested advertising in Class 35 consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

 

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

 

The contested import and export services in Class 35 relate to the movement of goods and normally require involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They are considered to relate to business administration, but unless specified, they do not relate to specific goods. They are, consequently, not similar to any goods that are capable of being imported or exported. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

 

The contested business administration, concerning the issuing of franchises relating to assistance in the operation or management of a commercial company in Class 35 is intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. This service consists of organising people and resources efficiently in order to direct activities towards common goals and objectives of the companies and franchises.

 

It follows that the contested advertising; import and export services; business administration, concerning the issuing of franchises relating to assistance in the operation or management of a commercial company, apart from having a different nature from the opponent’s goods in Classes 18 and 25, since goods are tangible whereas services are intangible, have completely different purposes from those of the opponent’s goods. They have different usual origins and distribution channels, and are neither complementary to nor in competition with each other. Consequently, these contested services are dissimilar to the opponent’s goods in Classes 18 and 25.

 

 

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 found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

 

 

3. The signs

 

 

 

DIESEL
Earlier trade mark	Contested sign

 

The relevant territory is Italy.

 

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, ‘DIESEL’.

 

The contested sign is a figurative mark consisting of the word elements ‘CALAPIEL DICSEL & CO BELTS’, all written in a rather standard uppercase typeface, and an arrow which passes through the sign from the left to the right and crosses the words ‘DICSEL & CO’. The words ‘CALAPIEL’ and ‘BELTS’ appear in a much smaller size than the remaining verbal components of the sign, ‘DICSEL & CO’, where the former is placed at the beginning of the sign and above the arrow line while the latter is placed at the end of the sign and under the arrowhead. By the effect of the arrow a certain part of the relevant public will perceive the third letter of the word ‘DICSEL’ as ‘E’ instead of ‘C’ and, consequently, the word ‘DICSEL’ will be perceived as ‘DIESEL’. This perception is reinforced by the fact that the word ‘DIESEL’ will be perceived as meaningful, as opposed to the word ‘DICSEL’.

 

The word ‘DIESEL’ of the earlier mark will be perceived by the public in the relevant territory as referring to a type of engine or fuel (information extracted from www.ectaco.co.uk/English-Italian-Dictionary/; www.collinsdictionary.com/dictionary/english/diesel). There is no direct link between the relevant goods and the mentioned meanings of the mark. Considering this, it has an average degree of distinctiveness.

 

As the earlier mark is composed of a single verbal element, it has no elements that are more distinctive or more dominant than others.

 

The word ‘DICSEL’ of the contested sign, meaningless as such for the Italian public and thus normally distinctive, will be perceived by a part of the public, as described in detail above, as ‘DIESEL’. In such a scenario, the abovementioned findings regarding the meanings and the degree of distinctiveness of the word ‘DIESEL’ constituting the earlier mark are fully applicable.

 

The abbreviation ‘& CO’ of the contested sign, meaning ‘and company’, is used world-wide in the course of trade as a part of the name of commercial businesses to designate that they are owned by more than one person. Since this combination is commonly used, it is considered to be a non-distinctive element of the sign in the perception of the public in the relevant territory which will therefore not pay as much attention to this combination.

 

As regards the remaining verbal elements of the contested sign, ‘CALAPIEL’ and ‘BELTS’, both meaningless for the relevant public and distinctive to an average degree, they are negligible in the overall design of the sign because of their very small size. Therefore, they are very likely to be disregarded by the relevant public.

 

As far as dominant elements of the contested sign are concerned, words ‘DICSEL & CO’ of the sign, including the arrow going through them, are, due to their size and central position, more visually dominant (eye catching) than the other elements of the sign.

 

Visually, the signs coincide in ‘DIESEL’ for a part of the public, as outlined above. However, they differ in the arrow going through the contested sign, as well as in the remaining elements of the contested sign, which, as explained in detail above, present either non-distinctive elements or elements which are negligible.

 

With regard to the differences in the first words of the signs, the applicant emphasises the importance of the beginnings of conflicting signs for the consumer’s perception of the signs. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, the very first verbal element of the contested sign, ‘CALAPIEL’, is considered negligible because of its size. Therefore, as stated above, it will go unnoticed by the relevant public who will focus on the following verbal element of the sign.

 

Considering all the above, the signs are visually highly similar for a part of the public.

 

Aurally, the pronunciation of the marks coincides in the phonemes /DIESEL/, for a part of the public, present identically in both signs. The pronunciation differs in the sound of the remaining letters of the contested sign, which constitute, as explained in detail above, either non-distinctive elements or elements which are negligible. Therefore, the signs are aurally similar to a high degree.

 

Conceptually, the word ‘DIESEL’, which constitutes the entire earlier mark and will be perceived by a part of the public also in the contested sign (as stated above), will be understood as a type of engine or fuel in the relevant territory. The combination ‘& CO’ in the contested sign will be perceived by the relevant public as referring to a company form. However, the impact of the combination is only limited since it represents a non-distinctive element of the sign. The figurative element of the contested sign depicting an arrow will be perceived as such. The remaining verbal elements of the contested sign, ‘CALAPIEL’ and ‘BELTS’, being meaningless and, moreover, negligible elements, have no impact on the conceptual comparison of the signs.

 

Therefore, the signs are conceptually similar to a high degree from the perspective of the part of the relevant public which will see the word ‘DIESEL’ within both 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 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 relevant goods 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).

 

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).

 

As concluded above, all the contested goods in Classes 18 and 25 and the opponent’s goods in Classes 18 and 25 are identical. Some of the contested services in Class 35 are similar to a low degree to the opponent’s goods.

 

The earlier mark enjoys a normal degree of distinctiveness in relation to the relevant goods.

 

The signs are visually, aurally and conceptually similar to a high degree for a part of the relevant public. This is because of their coincidence in the distinctive word ‘DIESEL’, present identically in both signs for that part of the public, which constitutes the entire earlier mark and the most distinctive of the contested sign’s dominant elements.

 

As regards the differentiating elements present in the contested sign, it has to be recalled that 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. Furthermore, it has to be pointed out that it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. In the present case, it is conceivable that the relevant public will regard the contested sign as a variation of the earlier mark.

 

Considering all the above, the Opposition Division finds that the differences identified between the signs do not outweigh the similarities between them. They are not of such a nature as to enable the relevant public to safely distinguish between the signs.

 

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).Consequently, the low similarity found between some of the goods and services at issue is clearly offset by the high similarity between the signs.

 

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 Italian trade mark registration No 1 538 950.

 

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 a low degree to those of the earlier trade mark.

 

The remaining contested 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 and services cannot be successful.

 

The opponent has also based its opposition on the International trade mark registration No 608 499 for the word mark ‘DIESEL’ designating Spain, Germany, and France.

 

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

 

 

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 shall 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

 

 

Martin MITURA

Bekir GÜVEN

Natascha GALPERIN

 

 

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.