ELLEVEN | Decision 2591033 - SEVEN S.P.A. v. Leedsworld, Inc.
Date Published: Sep 25, 2017
OPPOSITION No B 2 591 033
Seven S.p.A., Via Fornacino, 96, 10040 Leinì (Torino), Italy (opponent), represented by Buzzi, Notaro & Antonielli d'Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)
a g a i n s t
Leedsworld, Inc., 400 Hunt Valley Road, New Kensington Pennsylvania 15068, United States of America (applicant), represented by V.O., Carnegieplein 5, 2517 KJ, The Hague, The Netherlands (professional representative).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 591 033 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 of European Union trade mark application No 14 404 461 for the word mark ‘ELLEVEN’. The opposition is based on European Union trade mark registrations No 5 818 521 for the word mark ‘eleven’, for goods in Classes 18 and 21, No 8 728 651 for the word mark ‘SEVEN’, for goods in Class 16, and No 4 783 866 for the figurative mark , for goods in Class 16. 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.
EARLIER EUROPEAN UNION TRADE MARK REGISTRATION No 5 818 521
- The goods
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
The contested goods are, after a limitation requested by the applicant, the following:
Class 16: Stationery; pens; ballpoints; stylus; document portfolios; stationery-type portfolios; padfolios.
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 method of use and whether they are in competition with each other or complementary to each other.
The contested goods in Class 16 are stationery and writing materials, whereas the opponent’s goods in Class 18 are, mainly, leather, imitations of leather, goods made of these materials, travel goods and saddlery, and the opponent’s goods in Class 21 are, mainly, small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain. Therefore, the contested goods are clearly dissimilar to the opponent’s goods since they have no relevant points in common. They have a different nature, purpose and methods of use. They satisfy different needs, they are produced and distributed by different companies and they are neither complementary nor in competition. For the sake of completeness, the Opposition Division also notes that the opponent did not adduce any specific arguments or evidence as to why there would be any similarity between these goods. As such, the finding of dissimilarity is maintained.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opposition will proceed as regards earlier European Union trade mark registrations No 8 728 651 and No 4 783 866.
EARLIER EUROPEAN UNION TRADE MARK REGISTRATIONS No 8 728 651 AND No 4 783 866
- On the proof of use and the comparison of goods
For reasons of procedural economy, the Opposition Division will not undertake a full examination on the evidence submitted by the opponent in response to the applicant’s request of proof of use. As such, the Opposition Division will assume that genuine use of the earlier marks in relation to the claimed goods in Class 16 has been proven, which is the best light for the opponent in which the opposition can be examined.
Therefore, the goods on which the opposition is based are the following:
Earlier European Union trade mark registration No 8 728 651
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; magazines; books; appointment books; notebooks; photographs; stationery; writing or drawing books, block pads, pen holders, pencil holders, pens, pencils, document binders, passport holders, holders for cheque books, document holders with elastic; covers for books and writing or drawing books, bags of paper or plastics, desk note pads, paperweights, clasps, paper knives, calendars, calendar holders, photograph holders, photograph frames; adhesives for stationery purposes.
Earlier European Union trade mark registration No 4 783 866
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; newspapers, magazines, books, organisers, diaries; photographs, stationery, notebooks, note pads, penholders, pencil cases, pens, pencils, folders for papers, passport holders, chequebook holders, elasticated folders, ring binders for notebooks, book covers and notebooks, briefcases of plastic, paper bags or plastic materials, desk folders; paperweights; clips; paper knives; calendars; calender holders; bookbinding material, adhesives (adhesives for stationery or household purposes); artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.
The contested goods are the following:
Class 16: Stationery; pens; ballpoints; stylus; document portfolios; stationery-type portfolios; padfolios.
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 marks.
- 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 assumed to be identical are directed at the public at large and at professionals. The degree of attention is considered to be average.
- The signs
SEVEN
| ELLEVEN |
Earlier trade marks | 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 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.
Earlier mark (1) will be understood as referring to the numeral ‘7’ at least by the English-speaking part of the public and clearly also by those with a basic knowledge of English. As it has no meaning in relation to the relevant goods in Class 16, it is distinctive, as is the case for those who see it as meaningless.
Earlier mark (2) will be perceived as the combination of the numeral ‘7’ and the verbal element ‘seven’, thus the same conclusions reached for earlier mark (1) apply and, therefore, these elements are distinctive in relation to the relevant goods in Class 16. Finally, the small black star situated in the head of the numeral ‘7’ plays a minor role in the overall impression due to its small size in comparison with the other elements as well as its laudatory connotations (alluding to excellence).
The contested sign will be perceived as the fanciful term ‘elleven’. It cannot be excluded that a part of the public will associate this element with the numeral ‘11’ because it is very close to the English word ‘eleven’, as has been pointed out by the parties. Consequently, regardless of the possible perceptions of the word element that form the contested sign, since there is no relation to the goods in question, it is distinctive.
Visually, the signs coincide in their final parts, namely in the string of letters ‘*even’. However, they differ in their beginnings, namely in the letter ‘S’ of earlier mark (1), the numeral ‘7’ followed by the letter ‘S’ of earlier mark (2) and the letters ‘ell’ of the contested sign. Furthermore, the signs differ in the black star within the numeral ‘7’ and the stylisation of earlier mark (2).
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. As such, the coinciding letters lose weight.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide in the sound of their final letters, ‘*even’, present identically in all the signs. However, the pronunciation differs in the sound of the initial letter ‘S’ of earlier mark (1), the pronunciation of the numeral ‘7’, in accordance with the different languages, followed by the sound of the letter ‘S’ of earlier mark (2), and the sound of the letters ‘ell’ in the contested sign.
Therefore, since the pronunciation of the signs clearly differs in their beginnings, the signs are aurally similar to a low degree.
Conceptually, for the English-speaking part of the public, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.
For the non-English speaking part of the public, either only part of earlier mark (2) will have a meaning (the numeral ‘7’ and the star) and the other sign has no meaning or, in the case of earlier mark (1), neither of the signs has a meaning for the public in the relevant territory. Therefore, for this part of the public, the signs are either not conceptually similar or a conceptual comparison is not possible.
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 marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks, as a whole, have 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 marks must be seen as normal.
- Overall assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
In section c) of the present decision it has been assumed that the earlier marks have been genuinely used and that the contested goods are identical to the opponent’s goods.
The signs are visually and aurally similar to a low degree since they coincide in their final string of letters, ‘*even’, whereas they clearly differ in their beginnings, which will not go unnoticed by the relevant public, as explained above. Furthermore, from a conceptual perspective, for the English-speaking part of the public, the signs are not conceptually similar and, for the remaining part, either not conceptually similar or a conceptual comparison is not possible.
As stated by the opponent, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of 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). However, in the present case, the identity of the goods in question cannot offset the low visual and aural similarity that exists between the signs.
The opponent also refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can only lead to even less similarity between the signs, mainly because of the different beginnings of the signs.
Finally, the opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, 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).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In particular, in the decision of 08/08/2013, opposition proceedings B 2 108 275, in the conflict between the signs ‘APPLICA’ and and in the decision of 26/02/2015, opposition proceedings B 2 313 602, in the conflict between the signs and the signs coincided in their beginnings, their endings and their pronunciation was highly similar or even identical, unlike in the present case.
Finally, in the decision of the Boards of Appeal dated 22/06/2012, in case R 1551/2011-2 relating to cancellation proceedings No 3 964 C, the earlier mark ‘EDENIL’ and the contested mark ‘DENILLE’, it was concluded that one single initial letter could not prevent the signs from being similar overall. However, in the present case both conflicting signs present different beginnings, as explained above.
Considering all the above, even assuming that proof of use has been proven and that the goods are identical, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers believe that the respective goods come from the same or from economically linked undertakings. Therefore, the opposition must be rejected.
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
Vanessa PAGE | Marta GARCÍA COLLADO | Richard BIANCHI |
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.