OPPOSITION No B 2 605 981

Hagen Grote GmbH, Grüner Dyk 36, 47803 Krefeld, Germany (opponent), represented by Wienke & Becker – Köln, Sachsenring 6, 50677 Cologne, Germany (professional representative)

a g a i n s t

JB Custom Linens LLC, 52 Heather Drive, Stamford 06903, United States of America, (holder), represented by Witte, Weller & Partner Patentanwälte mbB, Phoenixbau Königstr. 5, 70173 Stuttgart, Germany (professional representative).

On 06/03/2017, the Opposition Division takes the following

 

DECISION:

1.        Opposition No B 2 605 981 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 international registration designating the European Union No 1 241 916. The opposition is based on European Union trade mark registration No 12 162 723. 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.

1. The goods and services

The goods and services on which the opposition is based are inter alia the following:

Class 24:        Household linen, bed linen, bedding; furniture coverings of textile, table linen, table covers, table cloths, table runners; kitchen linen, textile napkins, dish cloths, kitchen cloths; textile bath towels and hand towels.

The contested goods are the following:

Class 24:        Bed blankets; bed linen; bed sheets; blanket throws; cashmere fabric; comforters; household linen; linen; pillowcases; shams; table linen; woolen fabric; woven fabrics.

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.

Household linen; bed linen and table linen are identically contained in both lists of goods.

The opponent’s earlier bedding is ‘a collective term for the articles which compose a bed, esp. the mattress, feather-bed, or other article lain upon, and the bed-clothes’ (definition extracted from Oxford English Dictionary online at http://www.oed.com/view/Entry/16829?redirectedFrom=bedding#eid on 03/03/2017). Consequently, the contested bed blankets; bed sheets; comforters; shams (i.e. ‘a decorative pillow case that transforms normal sized pillow fills into useful accessories for one's bedding set’) are included in the broad category of the opponent’s bedding. Therefore, they are identical.

The contested linen include, as a broader category, the opponent’s household linen; bed linen and table linen. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pillowcases and blanket throws overlap with the broad category of the opponent’s bedding. Therefore, they are identical.

The contested cashmere fabric; woolen fabric; woven fabrics are similar to a low degree to the opponent’s bedding: they have the same nature since bedding can be made from cashmere, wool or woven fabric and the degree of transformation required from the fabrics to the end product is minor, since the fabrics, essentially, are cut into shape and sewn to obtain the finished product. Furthermore, they can coincide in distribution channels and end users.

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 level 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 to different degrees target the public at large and, for some of the contested goods (fabrics), also business customers such as manufacturers of textile goods. The level of attention is considered to be average.

3. The signs

Julia Grote
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 common element ‘Julia’ is a rather common feminine first name of Latin origin, in use across the European Union. It is used as such inter alia in Poland, Spain, the Netherlands and the United Kingdom or in a slightly different spelling such as in Bulgaria, Hungary and Portugal (‘Júlia’), Lithuania and Slovenia (‘Julija’), Italy (‘Giulia’) and France (‘Julie’). It will be perceived throughout the European Union as a first name and it will be normally distinctive.

The earlier mark is a word mark, consisting of the words ‘Julia Grote’. Due to the fact that the term ‘Julia’ will be perceived as a first name, the subsequent word ‘Grote’ (albeit meaningless for a significant part of the relevant public) will be perceived as a surname (from foreign origin, for a significant part of the relevant public). Therefore, ‘Julia Grote’ will perceived, as a whole, as a name and surname by the relevant public. Both word elements are distinctive.  

The contested sign is a figurative mark and consists of the verbal elements ‘Julia B.’, in a standard type face. As the first verbal element ‘Julia’, as seen above, will be perceived as a first name, the additional element ‘B’ followed by a full stop in the contested mark will most likely be perceived by as the initial letter of a family name. Furthermore, these verbal elements in the contested sign are preceded by a figurative square-shaped device which, inside, contains the letters ’J’ and ‘B’: however, in the view of the Opposition Division, these letters will not be perceived by consumers at first sight but only after more carefully scrutinising the sign.

The contested sign has no elements that could be considered clearly more dominant than other elements. The figurative device, although placed in the beginning and certainly distinctive, could nevertheless have somewhat less impact on the consumer due to the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on consumers 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).

Visually, the signs coincide in the commonplace first name ‘Julia’. However, they differ in the verbal element ‘Grote’ in the earlier sign, on the one hand, and in the distinctive verbal element ‘B.’ and the figurative device in the contested sign – which, due to its initial position and size, cannot go unnoticed -, on the other hand.

In principle surnames have a higher intrinsic value as indicators of origin than first names. Although (and as argued by the opponent), a general principle the beginning of a word mark is more likely to attract the consumer’s attention than the elements which follow it, that is not true in all situations and cannot, in the present case, undermine the principle that consumers will keep in mind the surname ‘Grote’ rather than the forename ‘Julia’.

Therefore, there is only a low degree of visual similarity between the marks at issue.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the common place forename ‘Julia’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Grote’ of the earlier mark, on the one hand, and in the sound of the letter ‘B’ in the contested mark. The fact that the element ‘Julia’ appears before the differing verbal elements in the marks at issue is not very significant in the present case, since it is normal, when giving the names of persons, to indicate the first name followed by the surname. If greater significance were to be ascribed to the fact that the first name appears first, that would mean that too much importance would be ascribed to that first name. Therefore, in the present case, the aural similarity cannot be higher than average since the verbal element ‘Grote’ of the earlier mark significantly contributes to the difference of the overall aural impression given by the earlier mark from the overall aural impression given by the contested mark.

Conceptually, the word ‘Julia’, present in both signs, will be perceived as a female given name by the public in the relevant territories. The verbal element ‘Grote’ in the earlier sign will be perceived as a surname linked to the forename ‘Julia’ and the verbal element ‘B.’ in the contested sign will be perceived as the initial of a different surname that starts with the letter ‘b’. Consequently, to the extent that the marks refer to the same female name, ‘Julia’, they are conceptually similar. However, to the extent that the signs refer to two specific, different individuals (on account of the surname ‘Grote’ as opposed to another surname that starts with the letter ‘b’), they present conceptual differences.

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.

Although the opponent did not explicitly claim in the notice of opposition that its mark is particularly distinctive, in its subsequent submissions of 01/06/2016 the opponent asserted that the earlier mark enjoys a high distinctiveness since it has no meaning in relation to the goods. However, such circumstance does not imply that the mark has a higher distinctive character per se.

Furthermore, according to the opponent the earlier trade mark also enjoys a high degree of distinctiveness as result of its intensive use. 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).

However, the opponent submitted evidence to support this claim on 29/07/2016, thus after the deadline to substantiate the opposition that expired on 01/06/2016. Therefore, this evidence cannot be taken into account.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, although the element ‘Grote’, has no meaning for the relevant public, in context it will be perceived as a surname in the earlier mark by the public that perceives ‘Julia’ as a given name. Thus, ‘Julia Grote’ as a whole will be perceived as a name and surname by the relevant public and its distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, ‘Sabèl’, paragraph 22).

The Court has also held that 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’, paragraph 23).

In the present case, the signs both contain the name ‘Julia’. However, this similarity is not sufficient to counteract the signs’ relevant differences: the additional verbal elements of the signs are different and the figurative element of the contested mark is another differentiating feature of this sign. Furthermore the element that the marks have in common, ‘Julia’, will be perceived as a female name by the relevant public, since this is a common name widely used in countries across Europe. The elements ‘Grote’ and ‘B.’ respectively, following the name ‘Julia’, will be perceived as surnames.

Surnames have, in principle, a higher intrinsic value as indicators of the origin of goods than first names. This is because the same first name may belong to a great number of people who do not have anything in common. Therefore, consumers tend to pay more attention to family names than to first names. Consequently, whenever two signs share the same first name and at least one of the two also contains a surname – and in particular when the first name is likely to be perceived as a common name in the relevant territory -, the rule of thumb is that there will be no likelihood of confusion, since consumers will be aware that there are many people with that name.

A different evaluation may be appropriate in cases where, in the relevant area, the surname is quite common or the first name is very distinctive due to its rare appearance in the relevant area or its reputation acquired through use. However, this is not the case here. In addition, as seen above, the opponent has not proven the enhanced distinctiveness or reputation of its earlier mark.

In these circumstances, the relevant public will note that the earlier mark designates a person identified by the rather common name ‘Julia’ and the surname ‘Grote’, while it will perceive the contested mark as composed of ‘Julia’ with a different surname (on account of the initial letter ‘B’) as well as a figurative element. Consequently, consumers will perceive the marks at issue as referring to different people with different family names and will realise that they distinguish goods of different, unconnected undertakings, despite the fact that goods are identical or similar. Therefore, the differences between the marks at issue are of such a nature that the signs can be distinguished between effectively.

Although – as the opponent argues –, in principle, the beginning of a word mark is more likely to attract the consumer’s attention than the elements which follow it, this is not true in all situations and cannot, in any event, undermine the principle that an analysis of the similarity of two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole an does not proceed to analyse its various details. (10/12/2008, T-228/06, Giorgio Beverly Hills, EU:T:2008:558, § 28 and 20/07/2016, R 115/2016-2, ANNA FENNINGER / ANNA DE CODORNÍU et al. 23 case-law cited). In this case, the fact that the contested mark essentially includes the same commonplace first name ‘Julia’ cannot call in question the finding that consumers will realise that the two conflicting signs indicate different commercial origins.

Finally, in its observations, the opponent also argues that there is only one other European Trade Mark in Class 24 that includes the name ‘Julia’ and that consequently the earlier mark would enjoy a stronger protection. Nevertheless, the Opposition Division notes that the lack of existence of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, such a conclusion can certainly not be made and the opponent’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion, including likelihood of association, on the part of the public between the contested sign and the earlier mark, even though the goods are identical and similar and the degree of attention is not higher than average. 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.