OPPOSITION No B 2 615 840
zero Holding GmbH & Co. KG, Konsul-Smidt-Str. 8G, Speicher 1, Haus 2-4, 28217 Bremen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Gadi SRL, Corso Italia 46, 20122 Milano, Italy (holder), represented by Bianchetti Bracco Minoja S.R.L., Via Plinio 63, 20129 Milano, Italy (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 615 840 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 236 512, namely against part of the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 5 345 798. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 3: Cosmetic soaps; perfumery, essential oils, articles for body- and beauty-care.
Class 9: Spectacles including sunglasses.
Class 14: Jewellery, including costume jewellery; clocks and watches, watchstraps.
Class 18: Bags included in class 18.
Class 25: Outerclothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs.
Class 26: Belt buckles (clothing accessories).
Class 35: Retail services, including for mail order, by means of teleshopping channels and via the Internet, in relation to clothing, headgear and footwear, leatherware (including clothing), cosmetics, perfumery, eyewear, wrist watches and pocket watches, jewellery; presentation of goods in shops, trade fairs and on communications media, for retail purposes; professional business consultancy and marketing for others; franchising, namely providing of organisational know-how.
Class 36: Management of financial interests for enterprises and businesses in the outerclothing sector, for others; franchising, namely providing of financial know-how.
The contested goods are the following:
Class 18: Slings for carrying infants; vanity cases, not fitted; bags; sling bags for carrying infants; briefcases; key cases; girths of leather; travel garment covers; garment bags for travel; moleskin [imitation of leather]; card cases [notecases]; briefcases [leather goods]; pocket wallets; coin purses; music cases; net bags for shopping; envelopes, of leather, for packaging; hand bags; bags for campers; gym bags; travelling bags; shopping bags; cases, of leather or leatherboard; baggage; suitcases; travelling trunks; rucksacks.
Class 25: Clothing; dresses; bath robes; anti-sweat underwear; bathing suits; bathing caps; bathing drawers; bath sandals; bath slippers; bandanas [neckerchiefs]; bibs, not of paper; caps [headwear]; berets; underwear; sweat-absorbent underwear; chemisettes; teddies [undergarments]; non-slipping devices for footwear; footwear; stockings; socks; short-sleeve shirts; shirts; shirt yokes; headgear; hats; hat frames [skeletons]; coats; belts [clothing]; money belts [clothing]; collars [clothing]; neck bands [parts of clothing]; detachable collars; ready-made clothing; ear muffs [clothing]; layettes [clothing]; corsets; suits; clothing of imitations of leather; clothing of leather; clothing; jerseys [clothing]; leggings [leg warmers]; liveries; knitwear [clothing]; jumpers; hosiery; sweaters; muffs [clothing]; maniples; cloaks; mantillas; fingerless gloves; skorts; boxer shorts; bathing drawers; vests; trousers; slippers; parkas; clothing of leather; clothing of imitations of leather; pelisses; pajamas (Am.); cuffs; poncho; money belts [clothing]; sweaters; sandals; saris; sarongs; leggings [leg warmers]; footmuffs, not electrically heated; shoes; shawls; sashes for wear; brassieres; underpants; lace boots; wimples; overcoats; outerclothing; chemises; shirt fronts; half-boots; boots; pockets for clothing; tee-shirts; turbans; combinations [clothing]; veils [clothing]; lounging robes; visors [headwear]; wooden shoes.
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.
- 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 are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark
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).
In the present case, both the earlier mark and the contested sign are figurative.
The earlier mark consists of the verbal element ‘zero’, depicted in bold black lower case letters in a typeface with clean straight lines. The word ‘zero’ is a basic English word referring to the numeral ‘0’ and is considered to be a basic word which will be understood in all of the Member States because it is used internationally. In addition, identical or highly similar words, such as ‘cero’, ‘zéro’ and ‘zero’, are used to refer to the numeral ‘0’ in several other widely spoken languages of the European Union (French, Italian, Polish, Portuguese, Romanian, Spanish). In the present case, although meaningful, the word ‘zero’ is not descriptive, allusive or otherwise weak for the relevant goods and, therefore, the relevant public will perceive it as a distinctive verbal element.
The contested sign consists of the verbal element ‘péro’, written in red lower case letters in a classic typewritten-style font. Part of the relevant public will perceive the letters ‘péro’ as a meaningless sequence of letters that creates a distinctive word element. However, for part of the relevant public, the word ‘péro’ will be associated with different meanings. In particular, for the Czech-speaking public, the word ‘péro’ might be associated with the word ‘pero’ meaning ‘feather’, ‘pen’, ‘plume’ or ‘spring’, or with the word ‘péro’, which is a slang word for the male sexual organ. For the Italian-speaking public, the word ‘péro’ might be associated with the word ‘pero’ meaning ‘pear tree’ or the word ‘però’ meaning ‘but’ or ‘however’. For the Spanish-speaking public, the word ‘péro’ might be associated with the word ‘pero’ meaning ‘pear tree’ or ‘but’. For the Croatian-speaking public and the Slovak-speaking publics, the word ‘péro’ might be associated with the word ‘pero’ meaning ‘feather’ or ‘pen’. To that extent, this part of the relevant public might attribute a meaning to the letters ‘péro’; nevertheless, this is not sufficient to create a link between the contested mark and the relevant goods. Therefore, the verbal element of the contested sign will be perceived as distinctive by the relevant public.
The figurative elements of both the earlier mark and the contested sign are different stylised typefaces in different colours, namely black in the earlier mark and red in the contested mark, as described above. Aside from the aforesaid stylisation of the letters of the verbal elements, neither the earlier mark nor the contested sign has any additional figurative elements.
Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘*ero’, which constitute part of the only verbal element in both signs. However, they differ in their first letters, that is, ‘z’ in the earlier mark and ‘p’ in the contested sign, and in the accent on the letter ‘e’ of the contested mark. In addition, the typefaces used are significantly different, with that of the earlier mark being more modern, with clear straight lines, and that of the contested sign being more classic, resembling a typewriter font. The different overall visual impressions of the signs are enhanced by the striking colour difference between them, since the earlier mark is in black and the contested sign is in red.
The abovementioned visual dissimilarities, in particular the different first letters, colours and typefaces and the accent on the letter ‘e’ of the contested sign, are even more noticeable given that each mark consists of only four letters and that the coinciding letters are parts of larger verbal elements and will not be perceived as separate elements. Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in cases such as the present one, in which each sign consists of four letters and is relatively short, small differences are more noticeable and may frequently lead to different overall impressions.
In addition, 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 (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 low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛*e-ro’, present identically in both signs. However, as both marks consist of only two syllables, the pronunciation of the signs differs significantly when the differing elements are taken into account. In particular, the first letter of the earlier mark, ‘z’, is a fricative consonant, whereas the first letter of the contested mark, ‘p’, is a voiceless plosive consonant. The different sounds that the letters ‘z’ and ‘p’ create are even more noticeable when they are linked with the vowel ‘e’, which is stressed only in the contested mark. In particular, for the part of the relevant public that is accustomed to the use of accents to denote the relative prominence of syllables, the accent above the letter ‘e’ in the contested mark could indicate the way in which the verbal element should be pronounced, regardless of the particular pronunciation rules that apply to the verbal element of the earlier mark. Therefore, the syllable ‘ze-’ of the earlier mark and the syllable ‘pé-’ of the contested mark have a significant impact on the aural comparison of the signs, which are aurally similar to a low degree.
Conceptually, as explained above, the word ‘zero’ is considered a common English word that will be understood in all Member States of the European Union as referring to the numeral ‘0’. Despite the opponent’s reference to a previous decision of the Office to support its arguments regarding the meaning of the word ‘zero’ in the relevant territory, it must be noted that, according to recent decisions, the word ‘ZERO’ is considered a basic English word indicating a numerical value (12/01/2016, R 71/2015-4, ZIRO (FIG. MARK) / zero (FIG. MARK); 09/02/2017, T-106/16, zero v EUIPO – Hemming (ZIRO), EU:T:2017:67). In any event, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Furthermore, for the part of the relevant public that will not attribute any meaning to the word ‘péro’, and since only the earlier mark, ‘zero’, will be associated with a meaning, the signs are not conceptually similar.
For the part of the public that might attribute a meaning to the word ‘péro’, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated in the relevant languages with dissimilar meanings, the signs are conceptually not similar.
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 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.
- 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).
The goods are assumed to be identical.
The signs are conceptually not similar and visually and aurally similar to only a low degree on account of the three-letter sequence that they have in common, ‘*ero’. The signs contain different letters at their beginnings and are depicted in noticeably different typefaces and colours. These visual dissimilarities are even more important in relation to goods such as luggage and carrying bags or clothing and footwear, which are usually examined visually prior to or when being purchased. Accordingly, whilst oral communication in respect of the product and the trade mark is not excluded, the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Conceptually, the earlier sign has a clear and distinctive meaning in relation to the goods in question, which is completely different from the meaning that might be attributed by part of the relevant public to the contested sign. For the part of the public for which the contested sign does not have a meaning, the signs are not conceptually similar. Moreover, the aural similarities between the signs are based on letters at the ends of the words and are, therefore, not sufficient to lead to a likelihood of confusion on the part of the relevant public. Furthermore, the contested sign contains an accent on the letter ‘e’, which is visually perceptible and has, for part of the public, a clear impact on the intonation of the word ‘péro’, regardless of the different pronunciations of the word ‘zero’ of the earlier mark in the Member States. As concluded above, the differing elements are clearly perceptible and are sufficient to exclude any likelihood of confusion between the marks.
Therefore, considering that the public’s degree of attention in relation to the relevant goods will be average, the Opposition Division finds that the differences between the signs will enable the relevant consumers to safely distinguish between them and will not lead consumers to associate the goods, even those that are identical, with the same undertaking or economically linked undertakings, let alone confuse the signs.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.