CARPASOL | Decision 2735283
Date Published: Sep 25, 2017
OPPOSITION No B 2 735 283
Events San Cristobal, S.L., Avda. Amargacena 6-7, 14013 Córdoba, Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)
a g a i n s t
Toolport GmbH, Gutenbergring 1-5, 22848 Norderstedt, Germany (applicant), represented by Thomas Heun, Rathausmarkt 5, 20095 Hamburg, Germany (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 735 283 is upheld for all the contested goods.
2. European Union trade mark application No 15 298 292 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 298 292. The opposition is based on Spanish trade mark registration No 3 576 233. 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 22: Tarpaulins, sunshades (tents), tents and awnings (tents).
Class 35: Retailing and selling via global computer networks of tarpaulins, sunshades (tents), tents and awnings (tents).
The contested goods are the following:
Class 22: Tents.
Tents are identically contained in both lists of goods (including synonyms).
- 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 are directed at the public at large. The degree of attention may vary from average to high, depending on the specialised nature of the goods and their price.
- The signs
| |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 figurative mark composed of lines depicting a tent above which is a yellow circle that might be interpreted as the sun, with some stylised black, white and green lines. The word element ‘SOLYCARPA’ is written in black lower case letters below the figurative element.
The contested mark is also a figurative mark and contains the word element ‘CARPASOL’ in white upper case letters on a rectangular blue background, which lacks distinctive character. There is a small yellow circle inside the letter ‘O’.
The Court has held that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, although each mark contains one verbal element, which does not have any meaning in the relevant territory, the relevant public will perceive them as a combination of the elements, ‘SOL’, ‘Y’ and ‘CARPA’ for the earlier sign and the elements ‘CARPA’ and ‘SOL’ for the contested sign, since all those elements are clearly known by the relevant public.
The elements ‘CARPA’ and ‘SOL’, present in both the earlier mark and the contested sign, are Spanish words that will be associated with a ‘TENT’ (information extracted from Wordreference on 24/07/2017 at http://www.wordreference.com/es/en/translation.asp?spen=carpa) and with the ‘SUN’ (information extracted from Wordreference on 24/07/2017 at http://www.wordreference.com/es/en/translation.asp?spen=sol), respectively. Moreover, the additional word ‘Y’ of the earlier mark is also a Spanish word meaning ‘AND’. Therefore, bearing in mind that the relevant goods are tents, it is considered that the combination of words is weak in relation to the relevant goods.
The same applies to the figurative element in the earlier sign, although it is more eye-catching. It must, however, be borne in mind – contrary to the applicant’s arguments – that 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).
Consequently, both marks are composed of elements that are of limited distinctiveness for the relevant goods.
Visually, the signs coincide in the words ‘CARPA’ and ‘SOL’, which form the contested mark, although they are in the opposite order in the earlier mark. The signs differ, however, in the additional letter ‘Y’ of the earlier mark, which has no counterpart in the contested mark, and in the figurative elements of both marks, although as explained above, less attention will be paid to these than the verbal elements.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SOL’ and ‘CARPA’, present in both signs, although in reverse order. The pronunciation differs in the sound of the letter ‘Y’ of the earlier mark, which has no counterpart in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs convey the same concepts, as explained above; the figurative element in the earlier sign merely reinforces the concepts of a tent and the sun. Therefore, 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.
- 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. Therefore, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods.
- Global assessment, other arguments and conclusion
The goods are identical. The visual, aural and conceptual similarity between the signs results from the fact that they both include the words ‘CARPA’ and ‘SOL’, which are the sole verbal constituents of the contested mark.
The perceptible differences between the signs lie mainly in their visual representation, whereas the aural differences are confined to the additional letter ‘Y’ in the middle of the word element of the earlier sign, as well as the fact that the verbal elements in which the commonalities are found appear in the signs in different (reverse) order. The visual differences resulting from the stylisation and the additional figurative elements of the signs will not have any particular influence, since it is the natural tendency of consumers to identify marks by their verbal constituents rather than by describing their figurative elements; moreover, the depiction of a tent and the sun in the earlier sign serve only to reinforce the concept conveyed by the word ‘SOLYCARPA’. Therefore, the similarity found between the verbal elements ‘SOLYCARPA’ of the earlier mark and ‘CARPASOL’ of the contested sign is decisive.
According to the Office practice, a commonality in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or have an insignificant visual impact and the overall impressions of the marks are similar. There may also be likelihood of confusion if the overall impressions of the marks are highly similar or identical.
In the present case, the marks as a whole are weak in relation to the relevant goods. There are no additional elements that could be considered distinctive and therefore that could lead to another conclusion. Moreover, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the light of all the above, the Opposition Division concludes that the identity between the goods, together with the visual, aural and conceptual similarity of the signs, discussed above, leads to a likelihood of confusion on the part of the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 576 233. It follows that the contested trade mark must be rejected for all the contested goods.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Francesca DRAGOSTIN | Cristina CRESPO MOLTO | Loreto URRACA LUQUE |
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.