UNI Memento Audere Semper | Decision 2258989 - HIPERCOR, S.A. v. FFWD Studio
Date Published: Oct 1, 2017
OPPOSITION No B 2 258 989
Hipercor, S.A., Calle Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)
a g a i n s t
FFWD Studio, Rue Van Eyck, 22, 1050 Bruxelles, Belgium (applicant), represented by Florence Margenat, Place Stéphanie, 6A, 1050 Bruxelles, Belgium (professional representative).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 258 989 is partially upheld, namely for the following contested goods:
Class 24: Textiles; dimity; buckram; brocades; calico; canvas for tapestry or embroidery; cheviots [cloth]; hat linings, of textile, in the piece; cotton fabrics; tick [linen]; crepe [fabric]; crepon; damask; linings [textile]; drugget; bolting cloth; lining fabric for shoes; fabric, impervious to gases, for aeronautical balloons; felt; flannel [fabric]; frieze [cloth]; gauze [cloth]; haircloth [sackcloth]; printed calico cloth; jersey [fabric]; diapered linen; marabouts [cloth]; plastic material [substitute for fabrics]; textile material; moleskin [fabric]; non-woven textile fabrics; taffeta [cloth]; billiard cloth; chenille fabric; upholstery fabrics; fabric; fabrics for textile use; adhesive fabric for application by heat; hemp fabric; jute fabric; woollen cloth; linen cloth; ramie fabric; rayon fabric; silk [cloth]; silk fabrics for printing patterns; esparto fabric; elastic woven material; fibreglass fabrics for textile use; fabric of imitation animal skins; fabric for footwear; lingerie fabric; cloth; hemp cloth; gummed cloth, other than for stationery; trellis [cloth]; knitted fabric; tulle; velvet; zephyr [cloth].
2. European Union trade mark application No 11 812 039 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 11 812 039. The opposition is based on European Union trade mark registrations No 4 806 535 and No 9 182 718. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 182 718.
- 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 with the exclusion of sheets of leather and imitation of leather for footwear's soles.
Class 25: Clothing, footwear, headgear with the exclusion of rubber soles and heels for footwear.
The contested goods, after a limitation made by the applicant on 12/04/2016, are the following:
Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers; banners; dimity; printers' blankets of textile; buckram; brocades; calico; canvas for tapestry or embroidery; table runners; cheviots [cloth]; hat linings, of textile, in the piece; cotton fabrics; tick [linen]; bed blankets; bed covers of paper; quilts; crepe [fabric]; crepon; damask; coasters [table linen]; linings [textile]; sheets [textile]; drugget; eiderdowns [down coverlets]; curtain holders of textile material; mattress covers; glass cloths [towels]; bunting; bolting cloth; labels of cloth; lining fabric for shoes; fabric, impervious to gases, for aeronautical balloons; flags, not of paper; felt; sanitary flannel; flannel [fabric]; frieze [cloth]; washing mitts; gauze [cloth]; haircloth [sackcloth]; pillow shams; loose covers for furniture; fitted toilet lid covers of fabric; covers for cushions; printed calico cloth; jersey [fabric]; shrouds; bath linen, except clothing; bed linen; household linen; table linen, not of paper; diapered linen; bed clothes; marabouts [cloth]; filtering materials of textile; plastic material [substitute for fabrics]; textile material; moleskin [fabric]; handkerchiefs of textile; mosquito nets; tablecloths, not of paper; non-woven textile fabrics; travelling rugs [lap robes]; door curtains; furniture coverings of plastic; furniture coverings of textile; shower curtains of textile or plastic; curtains of textile or plastic; tablemats, not of paper; sleeping bags [sheeting]; napkins, of cloth, for removing make-up; serviettes of textile; towels of textile; face towels of textile; place mats, not of paper; taffeta [cloth]; pillowcases; billiard cloth; wall hangings of textile; chenille fabric; upholstery fabrics; fabric; fabrics for textile use; adhesive fabric for application by heat; hemp fabric; jute fabric; woollen cloth; linen cloth; ramie fabric; rayon fabric; silk [cloth]; silk fabrics for printing patterns; esparto fabric; elastic woven material; fibreglass fabrics for textile use; fabric of imitation animal skins; fabric for footwear; lingerie fabric; traced cloth for embroidery; cloth; ticks [mattress covers]; hemp cloth; cheese cloth; oilcloth for use as tablecloths; gummed cloth, other than for stationery; trellis [cloth]; knitted fabric; tulle; velvet; net curtains; zephyr [cloth].
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
The contested textiles; dimity; buckram; brocades; calico; canvas for tapestry or embroidery; cheviots [cloth]; hat linings, of textile, in the piece; cotton fabrics; tick [linen]; crepe [fabric]; crepon; damask; linings [textile]; drugget; bolting cloth; lining fabric for shoes; fabric, impervious to gases, for aeronautical balloons; felt; flannel [fabric]; frieze [cloth]; gauze [cloth]; haircloth [sackcloth]; printed calico cloth; jersey [fabric]; diapered linen; marabouts [cloth]; plastic material [substitute for fabrics]; textile material; moleskin [fabric]; non-woven textile fabrics; taffeta [cloth]; billiard cloth; chenille fabric; upholstery fabrics; fabric; fabrics for textile use; adhesive fabric for application by heat; hemp fabric; jute fabric; woollen cloth; linen cloth; ramie fabric; rayon fabric; silk [cloth]; silk fabrics for printing patterns; esparto fabric; elastic woven material; fibreglass fabrics for textile use; fabric of imitation animal skins; fabric for footwear; lingerie fabric; cloth; hemp cloth; gummed cloth, other than for stationery; trellis [cloth]; knitted fabric; tulle; velvet; zephyr [cloth] and the opponent’s leather and imitations of leather are raw or semi-finished materials used in the manufacture of other goods, e.g. fashion items. Therefore, they have the same purposes and relevant publics and, furthermore, some can be in competition. For this reason, they are considered similar.
The contested textile goods, not included in other classes; bed covers; table covers; banners; printers' blankets of textile; table runners; bed blankets; bed covers of paper; quilts; coasters [table linen]; sheets [textile]; eiderdowns [down coverlets]; curtain holders of textile material; mattress covers; glass cloths [towels]; bunting; labels of cloth; flags, not of paper; sanitary flannel; washing mitts; pillow shams; loose covers for furniture; fitted toilet lid covers of fabric; covers for cushions; shrouds; bath linen, except clothing; bed linen; household linen; table linen, not of paper; bed clothes; filtering materials of textile; handkerchiefs of textile; mosquito nets; tablecloths, not of paper; travelling rugs [lap robes]; door curtains; furniture coverings of plastic; furniture coverings of textile; shower curtains of textile or plastic; curtains of textile or plastic; tablemats, not of paper; sleeping bags [sheeting]; napkins, of cloth, for removing make-up; serviettes of textile; towels of textile; face towels of textile; place mats, not of paper; pillowcases; wall hangings of textile; traced cloth for embroidery; ticks [mattress covers]; cheese cloth; oilcloth for use as tablecloths; net curtains are finished textile goods which are mainly used for covering objects (e.g. beds, tables, furniture), interior decoration and household purposes. They have nothing relevant in common with the opponent’s goods in Class 18 which cover either leather and imitation of leather (raw or semi-raw materials) and goods made thereof, or travel goods and saddlery. This is because they differ in their purposes, natures and methods of use. Furthermore, they do not have the same relevant public, producers or distribution channels and are neither complementary to nor in competition with each other. Considering this, the goods are dissimilar.
In relation to the opponent’s clothing, footwear, headgear with the exclusion of rubber soles and heels for footwear in Class 25, the main thing that the abovementioned contested textile goods in Class 24 and these opponent’s goods have in common is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing, footwear, headgear is meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Considering this, the goods are dissimilar.
- 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 are directed at professionals in different types of industry.
The degree of attention varies from average to high depending on the exact nature of the goods in question (e.g. for the opponent’s leather and imitations of leather or for the contested fibreglass fabrics for textile use, it is considered high).
- The signs
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Czech- and Slovak-speaking public for which neither of the verbal elements of the signs has a meaning (which means that the best case scenario for the opponent is examined).
The earlier mark is a figurative mark consisting of the verbal element ‘unit’ written in white standard lower case letters on a blue rectangular background with rounded corners.
The contested sign is a figurative sign consisting of a black square in which verbal elements in white standard upper case typeface are placed, ‘UNI’ and ‘MEMENTO AUDERE SEMPER’; above the word ‘UNI’ there is a figurative element that resembles two rings of a chain connected with each other.
All verbal elements in the signs are meaningless for the part of the relevant public on which the Opposition Division focuses its examination and are, therefore, distinctive to an average degree for the relevant goods.
The figurative element of the chain rings in the contested sign has no meaning for the relevant goods and is, therefore, distinctive to an average degree. However, the blue rectangle of the earlier mark and the black square of the contested sign only perform a decorative function within the signs and are, therefore, less distinctive than the other elements of the signs.
In this regard, it must be recalled that when signs consist of both verbal and figurative components (as both signs under comparison do), 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). Therefore, the figurative elements of the signs along with their graphic stylisations and colourings have only a limited impact on the consumer’s perception.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
The verbal element ‘MEMENTO AUDERE SEMPER’ in the contested sign is written in significantly smaller letters than the word ‘uni’ and, in addition, it is placed in a secondary position at the bottom of the sign. Consequently, the word ‘uni’ and the figurative element of the chain rings are co-dominant elements of the contested sign.
Visually and aurally, the signs coincide in the sequence of their initial three letters/sounds, ‘uni*/UNI’, and they differ in their remaining letters/sounds, namely ‘***t’ of the earlier mark and ‘MEMENTO AUDERE SEMPER’ of the contested sign, where, however, the latter in unlikely to be pronounced due to its small lettering and secondary position.
Though the signs are visually also differentiated by their figurative elements, graphic stylisations and colourings this difference loses much of its weight, for the reasons explained above. Nevertheless, a high similarity in the typeface used in the letters which the signs have in common cannot be considered as immaterial in terms of the visual perception of the signs.
Furthermore, it is important to note that the element ‘UNI’ of the contested sign, which is the only visually outstanding verbal element of the sign, corresponds to the initial three letters of the earlier mark, ‘uni*’. 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.
Considering all the above, the signs are visually and aurally similar at least to an average degree.
Conceptually, although the public in the relevant territory will perceive the concept of the chain rings in the contested sign, as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any 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.
- 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 relevant goods from the perspective of the Czech- and Slovak-speaking part 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).
Account must be also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The present assessment of likelihood of confusion considers the perception of the Czech- and Slovak-speaking part of the public in the relevant territory. The relevant public consists of professionals, the degree of attention varies from average to high and the earlier mark has a normal degree of inherent distinctiveness.
As concluded above, the contested goods are partially similar and partially dissimilar to the opponent’s goods.
The signs in conflict are visually and aurally similar at least to an average degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since they lie in the last letter of the earlier mark or in a verbal element of the contested sign which is greatly overshadowed by its remaining components. In addition, the differing graphic elements have a limited impact on the perception of the signs, as outlined above.
Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the Czech- and Slovak-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 182 718. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested sign must be rejected for the goods found to be similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on European Union trade mark registrations No 4 806 535 for the word mark ‘UNIT’, registered for goods in Classes 3, 14 and 18.
The other earlier right invoked by the opponent is highly similar to the one that has been compared, as they have the same verbal element, ‘unit/UNIT’, and differ only in the blue rectangle background with rounded corners and slight stylisation of the verbal element in the mark compared above, which have no counterparts in the earlier word mark. Moreover, it covers, except for the goods in Class 18 compared above, goods such as cleaning, laundry and abrasive preparations and dentifrices in Class 3 or precious metals and their alloys, jewellery, precious stones and horological instruments in Class 14 which are clearly different to those applied for in the contested sign. These goods have no or insufficient points of contact and differ in all the relevant criteria relating to the comparison of goods and services. For this reason, the relevant consumers would not expect them to be manufactured under the control of the same entity. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Richard BIANCHI | Martin MITURA | Vita VORONECKAITĖ |
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.