Megatrade Express perfetto | Decision 2682840
Date Published: Sep 28, 2017
OPPOSITION No B 2 682 840
La Piacentina S.p.A., Via J.F. Kennedy, 20, 46019 Viadana (MN), Italy (opponent), represented by Bugnion S.p.A., Largo Michele Novaro, 1/A, 43121 Parma, Italy (professional representative)
a g a i n s t
Megatrade Express Ltd., 11 Samuilec Str., Fl.2, 1517 Sofia, Bulgaria (applicant).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 682 840 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 585 822, namely against all the goods in Class 21. The opposition is based on Italian trade mark registration No 1 462 415. 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
As a preliminary remark, the applicant questions the correctness of the translation of the list of goods in Class 21 corresponding to earlier Italian trade mark registration No 1 462 415 as provided by the opponent, namely brooms, articles for cleaning purposes, sponges, brushes, cleaning instruments, domestic non-electric apparatus and cleaning instruments, hand-operated, cloths and skins of chamois for cleaning, dustbins.
Rule 98(1) EUTMIR requires that the translation reproduces the structure and contents of the original document.
The original wording of the goods protected under the earlier Italian trade mark according to the certificate of the trade mark registration submitted by the opponent is the following:
Class 21: Scope, materiale per pulizia, spugne, spazzole, strumenti per la pulizia, apparecchi e macchine non elettriche per pulire, ad uso domestico, strofinacci impregnati con un detergente per pulire, panni e pelli per pulire, pattumiere.
Indeed, the Opposition Division has detected a clearly incorrect translation concerning some of these goods and, for the purpose of the present decision, hereby proceeds to replace those terms with a correct translation, which coincides with the proposal provided by the applicant. Consequently, the list of goods on which the opposition is based, in the language of the proceedings, should read as follows:
Class 21: Brooms, cleaning materials, sponges, brushes, cleaning instruments, household non-electrical equipment and machines for cleaning, cloths impregnated with a detergent for cleaning, cloths and leathers for cleaning, dustbins.
For the sake of completeness, this translation submitted by the applicant has not been contested by the opponent, who has, instead, focused the comparison of signs by referring, in general, to the ‘domestic non-electrical apparatus’ covered under the earlier mark. This is a clear incorrect translation (and interpretation) of the goods protected under the earlier Italian trade mark, which would, moreover, introduce a vague term.
Furthermore, the Opposition Division has found a discrepancy between the translation of the wording of the contested goods in Class 21 and the original wording as filed (in Bulgarian). In particular, the applicant’s goods listed as, according to the original wording, ‘Поставки за тоалетна хартия; Поставки за рола с тоалетна хартия’ have been translated into English as ‘toilet roll dispensers; toilet roll dispensers’. Since the first language of the application is not one of the five languages of the Office, the definite version of the list of goods is the text in the second language indicated by the applicant (Article 120(3) EUTMR), namely English. However, the English translation of the abovementioned terms is redundant and wrong on account of the fact that the abovementioned Bulgarian expressions are clearly not identical. Accordingly, the correct English translation of these goods is stands for toilet paper; stands for toilet paper rolls.
Consequently, the list of goods, in the language of the proceedings, should read as follows:
Class 21: Stands for toilet paper; stands for toilet paper rolls; dispensers for the storage of toilet paper [other than fixed]; dispensers for facial tissues; napkin dispensers for household use; dispensers for cellulose wipes, for household use; kitchen roll dispensers; face towel dispensers.
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.
It is not unusual for the contested stands for toilet paper; stands for toilet paper rolls; dispensers for the storage of toilet paper [other than fixed] to also contain the contested brushes as part of the same set of bathroom utensils. Further to this, they are normally produced by the same manufacturers, target the same end users and distributed through the same channels. Therefore, they are similar.
The contested dispensers for facial tissues; napkin dispensers for household use; dispensers for cellulose wipes, for household use; kitchen roll dispensers; face towel dispensers are all dispensers of various paper goods for cleaning that are typically placed in the toilet or in the kitchen. When comparing with dustbins from the earlier right it is clear that all of these goods pertain to the category of household utensils that are frequently offered together with a particular design. Consequently, they usually have the same producers and distribution channels and they target the same end users. Therefore, these goods are considered similar to a low degree.
- 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 similar to varying degrees are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Italy.
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 earlier mark, the relevant public will associate the verbal element ‘PERFETT’ with the Italian word ‘PERFETTO’ (the equivalent of ‘perfect’ in English). Bearing in mind that the goods at issue are cleaning utensils, the relevant public will perceive this element of the mark as allusive to the Italian word ‘PERFETTO’, meaning that the goods in question all have the required or desirable elements, qualities or characteristics. Therefore, this element is weak in relation to the goods at issue. As regards the speech bubble, this figurative element will be perceived as such by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
In the contested sign, the element ‘perfetto’ will be understood according to the meaning explained above and is, therefore, a non-distinctive element in relation to the relevant goods which are dispensers. The element ‘Megatrade’ will not have a clear meaning for the relevant public and it is, therefore, distinctive. Finally, the English word ‘Express’ will most probably be understood as something that is done rapidly, as it is very close to the equivalent word in Italian, ‘espresso’. Bearing in mind that the relevant goods are dispensers that allow users to have paper handy on a continuous basis, this element is weak in relation to them and, therefore, has a limited impact.
Contrary to the opponent’s opinion, the contested sign has no elements that could be considered clearly more dominant than other elements. Even though the figurative element, consisting of the oval shape, creates a visual impact to a certain extent, the fact remains that in the overall impression of the sign, it is not prominent in the sign so as to leave the other verbal elements in a secondary position.
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 and from top to bottom which makes the part placed at the left or at the top, as the case may be, of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the beginning of the contested sign is undoubtedly the element placed on top, ‘Megatrade’, and this marks an important divergence with the earlier mark.
Visually, although both signs contain the letters ‘PERFETT*’, they differ in their stylisation and in their figurative elements, namely the speech bubble, in the earlier mark, and the oval shape in shades of grey, in the contested sign. In addition, the signs differ in the verbal element ‘Megatrade’, which is distinctive and the initial part of the contested sign, as well as ‘Express’, which is weak and is placed at the bottom of the contested sign.
Therefore, the signs are visually similar to a low degree.
Aurally, the signs coincide in that the earlier mark will be pronounced as ‛PERFETTO’ (despite the missing letter ‘O’) and one of the verbal elements in the contested sign is the word ‘PERFETTO’, so the pronunciation of the signs will be similar to this extent. However, as stated above, the element ‘PERFETT’ of the earlier mark is weak and the element ‘PERFETTO’ of the contested sign is non-distinctive. The pronunciation differs in the sound of the letters that form the verbal elements ‛Megatrade’ and ‘Express’ of the contested sign, which have no counterparts in the earlier mark. The Italian relevant public will read the contested sign as ‘Megatrade perfetto Express’ or, alternatively, ‘Megatrade Express perfetto’ due to the different stylisation and depiction of the only Italian word ‘perfetto’, in contrast with the other two terms present in the sign. Consequently, and contrary to the opponent’s opinion, the signs have clearly different beginnings, structures, rhythms and intonations.
Therefore, as the signs only coincide in the pronunciation of a weak or non-distinctive element, which is the second (or the third) element in the contested sign, they are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with an identical meaning as regards the perception of the relevant public of the concept of ‘perfetto’ in both signs, but there are other differentiating verbal and figurative elements present in both, the signs are conceptually similar only to a low degree.
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 clear 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.
- Global 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.
The goods are similar to varying degrees and the signs are visually, aurally and conceptually similar to a low degree on account of the coinciding concept of ‘perfetto’ perceived in both signs and arising from the elements ‘PERFETT’ in the earlier mark and ‘PERFETTO’ in the contested sign.
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 that 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 similarity of the signs is based exclusively on an element which is weak in the earlier mark and non-distinctive in the contested sign. Therefore, notwithstanding the similarity of the goods, given the low degree of similarity between the signs, the Opposition Division finds that there is no likelihood of confusion or association.
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 lead only to even a less similarity between the signs, mainly because of the different beginnings and the additional verbal and figurative elements of the conflicting signs, as described above.
Considering all the above, even finding that the goods are similar, there is no likelihood of confusion on the part of the public. 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Richard BIANCHI | Marta GARCÍA COLLADO | Vanessa PAGE |
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.