OPPOSITION No B 2 374 430

St. Nikolaus Kräuterspezialitäten GmbH, Underbergstr. 1-3, 47495 Rheinberg, Germany (opponent)

a g a i n s t

Etikè International s.r.l., Loc. Pastenella, 84084 Fisciano, Italy (applicant), represented by Vincenzo Fiorillo, Via Ss. Martiri Salernitani n. 31, 84123 Salerno, Italy (professional representative).

On 30/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 374 430 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 European Union trade mark application No 12 390 531, namely against all the goods in Classes 32 and 33. The opposition is based on European Union trade mark registration No 3 228 145. 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.

1. The goods

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 32: Beers.

Class 33: Wines produced and bottled in Italy.

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 methods of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 32

The contested beers are similar to the alcoholic beverages (except beers), as these goods have the same nature. They are also distributed via the same channels, target the same public and can have the same commercial origin.

Contested goods in Class 33

The contested wines produced and bottled in Italy are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

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 found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Ti Amo
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 mark is a word mark, ‘Ti Amo’.

The contested sign is a complex figurative sign composed of a depiction of a large heart, which has a thick black and white border. Inside this are numerous verbal elements such as ‘Te Quiero’, ‘Ti Amo’, ‘Je t’aime’, ‘I love you’ and ‘Ich liebe Dich’. The verbal elements fill up the figurative element, with some missing their beginning or ending. They are written in lettering of different sizes.

‘… assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (C-334/05 P, Limoncello, EU:C:2007:333, § 41 and the case-law cited).

The Italian expression ‘Ti Amo’, which means ‘I love you’, can be seen as a laudatory slogan, as it is an expression of affection. The same reasoning applies to the other verbal elements of the contested sign, which can be perceived as translations of this expression, and the depiction of a heart reinforces this concept. For the part of the public that will not perceive it as meaningful, it will have a normal degree of distinctiveness.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, for at least part of the public, the signs coincide in the laudatory, expression ‘Ti Amo’, present in both signs.  Although this element constitutes the whole of the earlier mark, it occupies only a small part of the complex contested sign. The signs differ in all the other verbal and figurative elements of the contested sign, which have an equally laudatory meaning.

Due to the fairly small size and position of the element ‘Ti Amo’ within the contested sign, it is noticeable only upon close examination. Therefore, when seeing the contested sign as a whole, consumers will first notice the heart, and the remaining elements will be perceived rather as secondary elements included in the figurative element.

Therefore, the signs are visually similar to a low degree, regardless of whether or not the verbal elements are meaningful.

As the contested sign is a complex figurative sign, it cannot be foreseen which of its numerous verbal elements will be pronounced; therefore, it is not possible to compare the signs aurally.

Conceptually, the verbal elements of the contested sign are translations of the English expression ‘I love you’ in Italian, French, Spanish and German. The depiction of a heart just reinforces the concept of the verbal elements.

Therefore, for those who perceive the element ‘Ti Amo’, as ‘I love you’, the signs are conceptually similar to a low degree due to their laudatory connotation. For those consumers for whom only one of the signs conveys a meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier trade mark has a reputation in Germany in connection with all the goods for which it is registered, namely alcoholic beverages (except beers) in Class 33. This claim must be properly considered, given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• two pictures of the products bearing the trade mark ‘Ti Amo’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 can be seen as a laudatory slogan. Nevertheless, it will be perceived as a trade mark (17/11/2015, R 203/2015-4, Ti Amo, § 18 and 19). In view of the above, the earlier registered trade mark has to be considered as having at least a minimum degree of inherent distinctiveness (24/05/2012, C-196/11, F1-Live, EU:C:2012:314).

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar and they target the public at large with an average degree of attention.

The signs are visually similar to only a low degree, conceptually similar to a low degree or not similar at all and aurally not comparable, as it is doubtful that the contested sign would be pronounced.

As stated by the General Court, ‘a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it’ (23/10/2002, T-6/01, MATRATZEN, EU:T:2002:261, §33). In the present case, although the verbal element ‘Ti Amo’ is perceptible in the contested sign, it is overshadowed by the figurative element, namely the depiction of the heart, and moreover it does not stand out from the numerous other verbal elements present in the sign. Furthermore, the element ‘Ti Amo’, together with other verbal elements included in the contested sign, is integrated into the figurative element.

Moreover, the overall impression of the contested sign is not dominated by its numerous verbal elements. Although figurative elements are not normally equally important as verbal elements, in the present case the graphic is not only an addition or a background for the verbal elements but the basis of the sign in which the verbal elements are inscribed.

In the light of the low degree of visual similarity between the signs at issue, and notwithstanding the identity and similarity between the goods concerned, there cannot be any likelihood of confusion on the part of the target public, since the existence of a conceptual similarity between the signs at issue, given that the concept is of somewhat limited distinctiveness, is not sufficient to give rise to a likelihood of confusion, including a likelihood of association.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘Ti Amo’ will be meaningless and therefore distinctive. This is because, in that case, the signs will still be visually similar to a low degree, as the element in common occupies only a small part of the contested sign, is not aurally comparable and is conceptually not similar, as only one of them would have a meaning, and therefore that part of the public will perceive the signs as being even less similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

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

The Opposition Division

Justyna GBYL

Katarzyna ZANIECKA

Frédérique SULPICE

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.