OPPOSITION No B 2 787 805

Couro Azul – Indústria e Comércio de Couros, S.A., Ponte do Peral, Gouxaria, 2380-182 Alcanena, Portugal (opponent), represented by Furtado – Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisbon, Portugal (professional representative)

a g a i n s t

Aquafil S.P.A., Via Linfano 9, 38062 Arco (TN), Italy (holder), represented by Dr. Modiano & Associati S.P.A., Via Meravigli 16, 20123 Milano, Italy (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 787 805 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 international registration designating the European Union No 1 283 422 for the figurative trade mark , namely against all goods in Class 24. The opposition is based on Portuguese trade mark registration No 334 164 for the figurative trade mark . 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

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

Class 24:        Upholstery fabrics.

The contested goods are the following:

Class 24:        Fabric; non-woven textile fabrics; hand towels of textile; foulard [fabric]; jersey [fabric]; cloth; furnishing fabrics; elastic woven material; nylon fabric; table linen of textile; labels of cloth; plastic material [substitute for fabrics]; banners and flags of textile; tapestries of textile; adhesive fabric for application by heat; chemical fiber fabrics; mixed fiber fabrics; synthetic fiber fabrics; semi-synthetic fiber fabrics; fabric for footwear; lingerie fabric; fabrics for interior decoration; curtain fabrics; shower curtains of textile or plastic; textile material; towels of textile; curtain holders of textile material; face towels of textile; table linen, not of paper; fabrics for textile use; nylon flags; bed covers; tulle; mosquito nets; bath towels; sleeping bag liners; curtains; shower curtains; hat linings, of textile, in the piece; handkerchiefs [not of paper]; bath mitts; textiles and textile goods, not included in other classes; bed covers; table covers.

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 considered to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise (e.g. manufacturers requiring textile fabrics, textile and fabric goods for their manufacturing purposes).

The degree of attention of the latter group of the relevant public is considered to be high. The degree of attention of the public at large may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 mark comprising of a verbal element ‘ECOLYS’ written in a rather standard upper-case letters in black on a white background.

The contested sign is also a figurative mark, consisting of slightly stylized bold upper-case six letters in black on a white background whereas the letter C’s lower part is extending towards the upper part of the letter O. Despite this connection, these two letters are still perceptible and the verbal element will be read as ‘ECONYL’.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Although the average consumers normally perceives a mark as a whole and do not proceed to analyse its various details, 'the fact remains that, when perceiving a verbal sign, they will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58, 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004,ECR II-3445, § 51). In the case at hand, the relevant consumers will clearly perceive the element ‘ECO’ placed at the beginning of the both signs.

This element will be understood as the short form for 'ecology' or 'ecological' (ecologia, ecológico in Portuguese) and means something is made, operates or is rendered in an environmentally friendly manner. Hence, it is non-distinctive for all the goods at issue since it describes their characteristics. Moreover, the fact that something is made, operates or is rendered in an environmentally friendly way is nowadays more important than ever, thus the consumers are used to see this element frequently and also are very likely to spot it immediately.

Visually, the signs coincide in the sequence of the letters ‘E-C-O’ as well as in the letter ‘Y’ and the letter ‘L’ while the latter is placed in the different position in the both signs. Moreover, the signs differ in their remaining letters ‘N’ and ‘S’ respectively, in their endings and in their overall stylisation, since the letters ‘C’ and ‘O’ in the contested sign are depicted visually quite different, whereas the earlier mark consists of letters in a rather normal typeface.

In principle, the consumers tend to focus on the first part of a sign when being confronted with a trade mark. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark. However, as already mentioned above, the common part ‘ECO’ is non-distinctive in relation to the goods concerned; hence the relevant public will pay a minimal attention to this part.

Furthermore, it is worth to point out that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in their first syllable [eco] and differs in the sound of their second syllables [lys] and [nyl] respectively. Despite that both syllables include the letter ‘Y’, the sound the two syllables create when pronounced is clearly different.

Since, the signs in question coincide in the pronunciation of their non-distinctive parts, they are aurally similar to a very low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘ECO’, included in both signs, will be associated with the meaning explained above. However, since this part is non-distinctive, this overlap has a minimal impact on the relevant public. To that extent, the signs are conceptually similar to a very low 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 the non-distinctive part ‘ECO’ in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

In the present case, the goods under comparison are assumed to be identical. The signs have been found visually, aurally and conceptually similar to a very low degree.

As mentioned above, the signs coincide in their non-distinctive part ‘ECO’ as well as in the letters ‘Y’ and ‘L’. However, the part ‘ECO’ has a minimal impact in the two signs, the letter ‘L’ appears in a different position in the signs and the letters ‘N’ and ‘S’ respectively do not have counterparts in the other sign. All this creates a strong visual and aural differences and the mentioned coincidence in the two letters is hardly noticeable, especially considering the clearly dissimilar endings ‘***LYS’ and ‘***NYL’ of the two signs. Therefore, the mere coincidence in a string of letters is not sufficient for the marks to convey a similar overall impression. Moreover, the signs in comparison differ in their graphical representations.

Consequently, the Opposition Division finds that the differences between the signs prevail over their similarities and will enable the relevant consumers to safely distinguish between them, even assuming identity between the goods.

Considering all the above, even assuming that the goods at issue are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Konstantinos MITROU

Renata COTTRELL

Claudia MARTINI

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.