OPPOSITION DIVISION
OPPOSITION No B 2 697 798
Manufacturas Clima, S.A., Calle Dos de Mayo, 195, 08013 Barcelona, Spain
(opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304,
08008 Barcelona, Spain (professional representative)
a g a i n s t
Grip International Co. Ltd., 4-2-2, Kumoi-dori, Chuo-ku, Kobe-shi, Hyogo 651-0096,
Japan (applicant), represented by Cabinet Germain & Maureau, 12, rue Boileau,
69006 Lyon, France (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 697 798 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against some of the goods of international
registration designating the European Union No 1 261 945 (figurative mark
), namely against all the goods in Class 18. The opposition is
based on European Union trade mark registration No 5 256 102 and Spanish trade
mark registration No 2 721 124 (both for the figurative mark ) and based
on goods in Class 18. 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
Decision on Opposition No B 2 697 798 page: 2 of 4
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.
a) The signs
Earlier trade marks Contested sign
The relevant territory is the European Union for the EUTM and Spain for the Spanish
trade mark.
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).
Since the earlier marks (M&P) are figurative marks with all the letters written in a
black up-to-date font and without any other graphic element, the principles developed
in relation to word marks should therefore be applied (09/09/2010, C-265/09 P, ‘α’,
EU:C:2010:508, § 25).
Visual comparison
The figurative mark applied for is highly stylised. It consists of two
outer thick stems, terminating at both ends with black oval-shaped elements. Both
stems are connected by strokes that are inclined in a 45 degree angle towards the
centre of the sign, where they loop. The two outer thick stems and the looped
connection in the centre between the two stems, although they do not correspond to
the typical elements of a capital letter ‘M’ where the inward strokes may meet in the
centre on the x-height like in ‘ ’ or they meet on the base line like in ‘ ’,
there is a slight chance that the device may be recognised as being a very highly
stylised letter ‘M’. Another option, albeit even less probable, is that the sign may be
recognised as a combination of an inverted letter ‘P’, a variation of an ampersand (&)
and another letter ‘P’. However, there are three reasons against this. First of all, the
first ‘P’ is inverted; second of all, the empty space within the letter ‘P’ is filled and
thirdly the connection between the two letters is only imaginable as an ampersand
with a lot of fantasy, which the average consumer has, but not in relation to trade
marks. Thus, the Opposition Division will see the contested mark primarily as a highly
stylised figurative mark and to a lesser extent as a highly stylised letter ‘M’.
The case brought forward by the opponent to strengthen its argumentation that the
signs are visually similar (Opposition Division Decision B 1 366 972) is not
Decision on Opposition No B 2 697 798 page: 3 of 4
comparable to the case at hand as in that case the letter ‘M’ and ‘R’ were clearly
readable ( ) as they were only sharing one stem of each letter. In the present
case, the Opposition Division, due to the high stylisation of the contested mark,
cannot follow the argumentation that the contested sign will be seen as ‘P/M/P’.
The overall impression created by the mark applied for is dominated by the oval side
stems of the letter ‘M’ and the loop between the central strokes.
The very specific graphic form of the contested mark has the effect of counteracting
to a large extent the point of visual similarity relating to the fact that the contested
mark may be understood as a reference to the letter ‘M’, which is one of the two
letters of which the earlier mark consists (25/06/2015, T-662/13, ‘Diseños Mireia’,
EU:T:2015:434, § 46).
Thus, the signs are considered to be visually dissimilar.
Aurally, the pronunciation of the earlier marks consists of two consonants (‘M’/’P’)
with the corresponding pronunciation of the ampersand in the middle (for example in
English ‘and’ and in Spanish ‘y’) irrespective of the different pronunciation rules in the
different parts of the relevant territory. With reference to the contested figurative
mark, the contested sign is a geometric shape that can only be pronounced if it is
recognised as representing letters, which is not certain. The majority of the relevant
public may perceive the contested sign solely as a figurative element. In this case a
comparison will not be possible. However, as pointed out above, it is not unthinkable
that the relevant public might perceive the sign as a highly stylised letter ‘M’. Even if
the public were to perceive the mark as a highly stylised representation depicting the
consonant ‘M’, the fact remains that the graphic stylisation of the mark is important
and may prevent a consumer from referring to it orally as a single letter at all
(22/09/2011, T-174/10, ‘A’, EU:T:2011:519, § 32). It is therefore unlikely that the
relevant public would attempt to pronounce that mark (25/06/2015, T-662/13,
‘Diseños Mireia’, EU:T:2015:434, § 47).
Conceptually, the comparison remains neutral as the conflicting marks are
meaningless.
Considering that the signs are short, the trade mark applied for will most likely only
be seen as a figurative sign without any letters, and the earlier trade marks consisting
of the letter combination ‘M&P’ without any stylisation, the differences in the aural,
visual and conceptual comparisons are important as they create a dissimilar
impression overall.
b)Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a
finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary
conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be
rejected.
As the marks are dissimilar all the other opponent’s claims become irrelevant,
because the identity or similarity between the signs is an absolute requirement for the
refusal of the registration under Article 8(1)(a) or (b) EUTMR.
Decision on Opposition No B 2 697 798 page: 4 of 4
Given that the opposition is not well founded under Article 8(1) EUTMR it is
unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the holder in
the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Claudia MARTINI Lars HELBERT Peter QUAY
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
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.