OPPOSITION DIVISION
OPPOSITION No B 2 590 043
Adveo Group International, S.A., C/ Miguel Angel, 11 – 4ª, 28010 Madrid, Spain
(opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010
Madrid, Spain (professional representative)
a g a i n s t
Thea Cutting, The Ale House, Frostenden Corner, Beccles NR34 7JA, United
Kingdom (applicant), represented by Wright Hassall Llp, Olympus Avenue,
Leamington Spa, Warwickshire CV34 6BF, United Kingdom (professional
representative).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 590 043 is upheld for all the contested goods, namely
Class 9: Magnets, magnetizers and demagnetizers; Magnets;
Decorative magnets.
Class 16: Paper and cardboard; Printed matter; Bags and articles for
packaging, wrapping and storage of paper, cardboard or
plastics; Decoration and art materials and media; Address
books; Calendars; Diaries; Disposable napkins; Disposable
paper products; Envelopes; Folders; Files [stationery]; Folios;
Gift paper; Gift boxes; Gift bags; Gift wrap; Gift wrapping
paper; Gift tags; Gift stationery; Gift packaging; Greetings
cards; Invitations; Jotters; Journals; Memo pads; Memo pad
holders; Notelets; Notepads; Notepaper; Notebooks; Note
cards; Paper napkins; Place mats of paper; Paper bunting;
Pencils; Pencil sets; Pencil boxes; Pencil holders; Pencil
cases; Decorations for pencils; Pen and pencil boxes; Pen and
pencil cases; Pen and pencil holders; Paper party decorations;
Photograph stands; Photo albums and collectors' albums;
Photograph albums; Photographs; Unmounted and mounted
photographs; Posters; Prints; Removable self-stick notes;
Writing and stamping implements; Writing stationery; Writing
materials; Writing paper; Stationery.
2. European Union trade mark application No 14 560 081 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS
Decision on Opposition No B 2 590 043 page: 2 of 9
The opponent filed an opposition against some of the goods of European Union trade
mark application No 14 560 081 for the figurative mark , namely against
all the goods in Classes 9 and 16. The opposition is based, inter alia, on European
Union trade mark registration No 13 729 447 for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARKS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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 13 729 447.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Couplers (data processing); Electronic diaries; Mouse mats;
Loudspeakers; Magnetic tapes; Juke boxes (for computers); Chips
(integrated circuits); Magnetic tape units; Audio cassette players;
Magnetic tapes; Disks, magnetic; Optical data carriers; Optical discs;
Storage discs; Cd roms; Floppy discs; Scanners (data processing
equipment); Printers for computers; Interfaces (for computers); games
programmes; Compact disc players; Optical character readers; Disk
drives (computers); Computer memory cards; Microprocessors;
Modems; Monitors; Peripherals adapted for use with computers; Data
processing equipment and computers; Computer programs, recorded;
Operating systems; Recorded computer programs; Software
electronically downloaded; Data-processing apparatus; Wrist rests for
computers; Cards for integrated circuits or for microprocessors;
Decision on Opposition No B 2 590 043 page: 3 of 9
Computer keyboards; computer apparatus; Apparatus for conducting,
distributing, transforming, accumulating, regulating or controlling
electricity; Apparatus for recording, transmission or reproduction of
sound or images; Photocopying apparatus; Apparatus for the
transmission of data; Facsimiles.
Class 16: Paper; Cardboard; 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 contested goods are the following:
Class 9: Magnets, magnetizers and demagnetizers; Magnets; Decorative
magnets.
Class 16: Paper and cardboard; Printed matter; Bags and articles for packaging,
wrapping and storage of paper, cardboard or plastics; Decoration and
art materials and media; Address books; Calendars; Diaries;
Disposable napkins; Disposable paper products; Envelopes; Folders;
Files [stationery]; Folios; Gift paper; Gift boxes; Gift bags; Gift wrap;
Gift wrapping paper; Gift tags; Gift stationery; Gift packaging;
Greetings cards; Invitations; Jotters; Journals; Memo pads; Memo pad
holders; Notelets; Notepads; Notepaper; Notebooks; Note cards;
Paper napkins; Place mats of paper; Paper bunting; Pencils; Pencil
sets; Pencil boxes; Pencil holders; Pencil cases; Decorations for
pencils; Pen and pencil boxes; Pen and pencil cases; Pen and pencil
holders; Paper party decorations; Photograph stands; Photo albums
and collectors' albums; Photograph albums; Photographs; Unmounted
and mounted photographs; Posters; Prints; Removable self-stick
notes; Writing and stamping implements; Writing stationery; Writing
materials; Writing paper; Stationery.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 9
The contested magnets, magnetizers and demagnetizers; magnets; decorative
magnets can be used in a number of ways and serve a variety of purposes. Inter alia,
they are routinely used as a decorative or functional piece of stationery at home (e.g.
fridge magnets) or in the office environment (e.g. board magnets) to hold in place
reminders or sheets of paper in presentations.
Decision on Opposition No B 2 590 043 page: 4 of 9
The opponent’s stationery covers a variety of goods, such as paper, envelopes, and
other materials or equipment used for writing, including pens, ink, rulers, etc.
Therefore, the contested magnets, magnetizers and demagnetizers; magnets and
decorative magnets can serve the same purpose as the opponent’s stationery in
Class 16. Furthermore, they may target the same relevant public and be sold through
the same distribution channels. Therefore, these goods are similar.
Contested goods in Class 16
Paper and cardboard; printed matter; photographs and stationery are identically
contained in the lists of goods of the earlier sign and the contested mark (including
synonyms).
The contested bags and articles for packaging, wrapping and storage of paper,
cardboard or plastics overlap with the opponent’s plastic materials for packaging (not
included in other classes). Therefore, they are identical.
The applicant’s decoration and art materials and media overlap with the opponent’s
artists' materials. Therefore, they are identical.
The contested unmounted and mounted photographs are included in the broad
category of the opponent’s photographs. Therefore, they are identical.
The contested posters and prints are included in the broad category of the
opponent’s printed matter. Therefore, they are considered identical.
The applicant’s address books; calendars; envelopes; folders; files [stationery];
folios; gift paper; gift boxes; gift bags; gift wrap; gift wrapping paper; gift tags; gift
stationery; gift packaging; greetings cards; invitations; jotters; journals; memo pads;
memo pad holders; notelets; notepads; notepaper; notebooks; note cards; pencils;
pencil sets; pencil boxes; pencil holders; pencil cases; decorations for pencils; pen
and pencil boxes; pen and pencil cases; pen and pencil holders; removable self-stick
notes; writing and stamping implements; writing stationery; writing materials; writing
paper are included in the broad category of the opponent’s stationery. Therefore,
they are identical.
The contested diaries are books in which one keeps a daily record of events and
experiences. The opponent’s electronic diaries enable keeping a copy of a diary
in electronic form or protecting the contents of the diary by means of electronic
equipment. Even if the goods may be of different origin, they share the same
purpose, distribution channels and the relevant public. Moreover, they are in
competition. Therefore, they are similar to a low degree.
The contested photograph albums; photograph stands and photo albums and
collectors' albums coincide with the opponent’s photographs as regards the relevant
public and distribution channels. Moreover, they are complementary. Therefore, they
are similar to a low degree.
Paper comprises both raw material and finished products such as sheets of paper for
example.
The contested disposable napkins and paper napkins are squares of paper used
while eating to protect the clothes, or to wipe the mouth or hands.
Decision on Opposition No B 2 590 043 page: 5 of 9
The applicant’s paper bunting refers to decorative flags, pennants, and streamers
made of paper.
The contested disposable napkins; disposable paper products; paper napkins; place
mats of paper; paper bunting and paper party decorations may coincide with the
opponent’s paper in their nature and moreover they share the usual origin, the
relevant public and usual distribution channels. Therefore, they are similar to a low
degree.
b) 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 or similar to various degrees are
directed at the public at large. The degree of attention is deemed to be average.
c) The signs
Earlier trade mark
No 13 729 447
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.
Decision on Opposition No B 2 590 043 page: 6 of 9
In the present case, the Opposition Division finds it appropriate to focus the
comparison of the signs on the English-speaking part of the relevant public, because
of the meaning of the word ‘GALLERY’ in that language.
The earlier mark is a figurative mark composed of the word ‘GALLERY’ presented in
a stylised white typeface over a rectangular dark grey background. The corners of the
background are marked in different shades of grey. Although the letters ‘GA**ERY’ of
the earlier sign are stylised to the extent that horizontal and vertical bars of the letters
‘A’, ‘E’ and ‘R’ respectively are missing, and the elements of the letters ‘G’ and ‘Y’ are
not connected, the text will be perceived by the public as the corresponding letters of
the word ‘GALLERY’.
The contested sign is a figurative mark containing the word ‘Gallery’ in a highly
stylised typeface that resembles handwriting or ink brushstrokes. A figurative element
appears underneath this word, consisting of a combination of vertical intertwined and
curved lines that are reminiscent of a sequence of ink brushstrokes. These lines end
with an element that can clearly be discerned as a stylised lower case letter ‘a’.
In its application, the applicant chose to describe the verbal elements of the
contested sign as ‘GALLERY THEA’, however, it is the opinion of the Opposition
Division that the word ‘THEA’ cannot be discerned in the mark by the relevant public,
with the exception of the last letter ‘a’. This is because the consumer, when
confronted with the contested sign, will not be assisted by the information provided in
the application. In consequence, it is the word ‘Gallery’ that will be attributed the most
trade mark significance in the contested sign. It is the first element to be perceived in
the sign and enjoys a normal degree of distinctiveness. Furthermore, in signs
consisting of word and figurative elements, 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 English word ‘Gallery’ contained in both signs is likely to be perceived by the
public in the relevant territory as meaning, inter alia, ‘a room or building for exhibiting
works of art’ or ‘a covered passageway open on one side or on two sides’
(information extracted from Collins English Dictionary on 06/10/2017 at
https://www.collinsdictionary.com/dictionary/english/gallery). The distinctiveness of
this element is considered normal, since on its own it does not allude to the goods or
their characteristics in a manner that would affect the distinctive character in a
material way.
The Opposition Division does not share the view of the applicant as to co-dominant
elements of the contested mark and dominant elements of the opponent’s sign. In
fact, it is concluded that neither of the signs has any elements that could be
considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the word ‘GALLERY’. However, they differ in the
stylisation applied to the letters of said element and in the figurative device appearing
under the word ‘GALLERY’ of the contested sign, reminiscent of a sequence of ink
brushstrokes. As explained above, due to the high degree of stylisation of the
contested sign, the word ‘THEA’ is not discernible as a whole in the contested sign.
The only recognisable letter in the lower part of the contested mark is the letter ‘a’ at
the end of the figurative element, which does not appear in the earlier mark.
Decision on Opposition No B 2 590 043 page: 7 of 9
Account should be taken of the fact that consumers generally tend to focus on the
first element of a sign when being confronted with a trade mark. This is justified by
the fact that 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.
Therefore, the overall impression of the conflicting signs is that they visually similar to
an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘GAL-LE-RY’,
contained identically in both signs. The pronunciation differs in the in the sound of the
letter ‘a’ present only in the contested sign. The figurative element of the opposed
mark will not be referred to aurally.
Therefore, the signs are highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The last letter of the contested sign will be
associated with the letter ‘a’. Due to the shared concept of the word ‘GALLERY’
present in both marks, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
As follows from the analysis in the section a) above, the goods in question have been
found identical and similar to various degrees.
Contrary to the applicant’s arguments, there is an average degree of visual similarity
and a high degree of aural and conceptual similarity between the marks stemming
from the shared component ‘GALLERY’.
Account must be taken of the fact that the verbal component of the signs has in
principle a stronger impact on the consumer than the figurative devices.
In spite of the differences in the stylisation of the signs and the last letter ‘a’ of the
contested mark, which does not appear in the earlier mark, there is a likelihood of
confusion because of the shared and normally distinctive word ‘GALLERY’.
Decision on Opposition No B 2 590 043 page: 8 of 9
This is due to 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). Therefore, considering the visual, aural and conceptual similarities between
the signs, it is concluded that consumers, relying on their imperfect recollection of the
earlier mark, may think that the contested goods, found to be identical and similar to
various degrees (including those which are similar to a low degree) to the ones
covered by the earlier mark, come from the same or economically linked
undertakings.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 13 729 447. It follows that the contested trade mark
must be rejected for all the contested goods.
As the earlier right No 13 729 447 leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods against which the opposition
was directed, there is no need to examine the other earlier rights invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Monika CISZEWSKA Anna MAKOWSKA Gueorgui IVANOV
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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
Decision on Opposition No B 2 590 043 page: 9 of 9
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.