OPPOSITION No B 2 763 210
Ente Autonomo Fiera Internazionale di Milano, Largo Domodossola, 1, 20145 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C. Srl, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)
a g a i n s t
Industrial Química del Nalón S.A., Avenida de Galicia 31 33005 Oviedo, Spain (applicant), represented by José Francisco Ibáñez González, Plaza Conde del Valle de Suchil, 3 – 1º I 28015 Madrid, Spain (professional representative).
On 13/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 763 210 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 479 181 . The opposition is based on, inter alia, European Union trade mark registration No 1 966 407 . The opponent invoked Article 8(1)(a) and (b) and 8(5) 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 1 966 407.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 35: Study, design and creation of advertising material and campaigns, publication of publicity texts; preparation, organisation, promotion and setting up of fairs and exhibitions for others.
The contested goods and services are the following:
Class 1: Chemical substances, chemical materials and chemical preparations, and natural elements; Salts for industrial purposes; Unprocessed and synthetic resins; Chemical preparations and materials for film, photography and printing; Filtering media of chemical and non-chemical substances included in the class; Putties, and fillers and pastes for use in industry; Fertilisers, and chemicals for use in agriculture, horticulture and forestry; Detergents for use in manufacture and industry; Starches for use in manufacturing and industry; Adhesives for use in industry.
Class 4: Dust controlling compositions; Fuels and illuminants; Electrical energy; Lubricants and industrial greases, waxes and fluids.
Class 35: Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Import and export services.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large and also at professionals. The relevant public’s degree of attention towards the goods and services is likely to vary according to the category of goods and services in question, ranging from average to high depending on the nature and the price of the goods and services.
- The signs
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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 figurative mark consists of a black circle containing on each side three white stripes of an even width. The earlier mark has no element that could be considered more dominant or distinctive than other elements.
The contested sign consists of the word ‘Nalón’, which is meaningless in the European Union, although a part of the public in Spain may recognise it as the name of a river in the north of Spain (https://www.turismoasturias.es/descubre/naturaleza/otros-espacios/rios/rio-nalon). This sign also contains the word ‘tech’ depicted in blue, is widely used as an abbreviation of the word ‘technology’. Bearing in mind that some of the goods and services could be technology-related, this element is non-distinctive.
Above these verbal elements is a figurative element consisting of a blue circle containing three white stripes on each side, the width of which increases slightly towards the centre of the circle.
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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
When perceiving a mark as a whole, consumers tend to focus more on the verbal elements than on the figurative elements; therefore, in the contested sign, ‘Nalón tech’ has a stronger impact in the contested mark.
Visually, in the contested sign, the verbal elements ‘Nalón’ and ‘Tech’, have no counterpart in the earlier mark. The only resemblance between the conflicting marks concerns the presence in each of a circle containing lines in similar positions. However, their colours and lengths are different and the lines are different in that they are uniform in the earlier mark, whereas, in the contested sign, the width of each line increases slightly towards the centre of the circle.
Therefore, the signs are visually similar to a low degree at most.
Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare it aurally with the contested sign.
Conceptually, although a part of the public in Spain will perceive the meaning of the word ‘Nalón’, and the public in the EU will understand ‘Tech’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, because ‘Nalón’ is meaningless, the marks are not conceptually similar either.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
In the present case, it has been established that the signs are similar only on a visual level, and only to a low degree.
The inherent distinctiveness of the earlier mark is average. No evidence has been submitted to demonstrate its enhanced distinctiveness as claimed.
In view of the low degree of visual similarity between the signs, the Office finds that the differences between the marks would not escape the relevant public’s attention, even taking into account 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) and the fact that, for some of the goods and services, the degree of attention would be higher than average.
The visual differences between the marks, including the presence of the wording ‘Nalón’ and ‘Tech’ in the contested mark, are sufficient to outweigh the signs’ visual similarity so that there is no likelihood of confusion in the European Union.
The mere fact that the marks both include figurative elements that depict three parallel straight lines on each side of a circle does not invalidate that finding, since there is no element in the earlier mark that resembles the verbal elements in the contested mark.
Considering all the above, even assuming that the goods and services 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 the following earlier trade marks: