OPPOSITION No B 2 394 651

Topstar GmbH, Augsburger Str. 29, 86863 Langenneufnach, Germany (opponent), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft Mbb, Bavariaring 11, 80336 München, Germany (professional representative)

a g a i n s t

Starwood Hotels & Resorts Worldwide, LLC, 10400 Ferwood Road, Dept. 955.23, Bethesda Maryland 20817,  United States of America (applicant), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 394 651 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 10 825 008, namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 10 058 477. 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 the following:

Class 20: Furniture and furniture parts, in particular office furniture and office seating furniture; Swivel chairs, swivel armchairs; Work chairs, office tables. 

Class 42: Design of furniture; Industrial design.

The contested goods are the following:

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Some of the contested goods are identical or similar to some of the opponent’s goods. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 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. The degree of attention of the public is average.

3. 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 contested sign consists of the letter ‘W’ in uppercase. The earlier mark is a figurative element which may be perceived by some of the public as a letter ‘E’ turned 90º anti-clockwise and by another part of the public as a letter ‘W’ although they would still consider it to be a rather fanciful representation thereof.

Visually, the signs are clearly dissimilar to part of the public who would either see the earlier mark as a mere figurative element or as a letter ‘E’ turned aside. To the remaining public, the signs would still have some striking differences as the earlier mark is depicted in a very different manner than the simple representation of the same letter in the contested sign. The main differences between them lie in the straight, thick lines making up the earlier sign as opposed to the contested sign. In addition, the contested sign is in black while the inside of the earlier mark is white. Overall, even for the part of the public that may perceive a letter ‘W’ in both signs, the depiction of this letter is very different from that of the same letter in the contested sign with regard to their shapes, angles, contours and colour patterns (dark/light). Considering all these particularities, it is concluded that the signs are not visually similar.

Aurally, the signs are dissimilar to part of the public who would either see the earlier mark as a mere figurative element or as a letter ‘E’ turned aside. To the remaining public, the signs are identical, irrespective of the different pronunciation rules in different parts of the relevant territory, because that part of the public will pronounce both signs as ‘W’.

Conceptually, the signs are identical only to the extent that part of the relevant public will associate both of them with the letter ‘W’ while there is no conceptual similarity between them for the remaining part of the public..

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.

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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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’, paragraph 22 et seq.).

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. It should be noted that the General Court held that the global assessment of the likelihood of confusion between signs consisting of a single letter follows the same rules as that in respect of word signs comprising a word, a name or an invented term (06/10/2004, T-117/03, T-118/03 T-119/03, T-171/03, ‘NL SPORT, NL JEANS, NL ACTIVE, NL COLLECTION’, EU:T:2004:293, § 47-48; and 10/05/2011, T-187/10, ‘G/G ea’, EU:T:2011:202, § 49). In this respect, the fact that two signs consisting of a single letter are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark causes a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (see the already cited judgment of 10/05/2011, T-187/10, EU:T:2011:202, ‘G/G ea’, §  60).

 

In the present case, the signs are aurally and conceptually identical only to the extent that part of the public may perceive them as a letter ‘W’. However, even focusing on this part of the public, which is potentially the most favourable approach for the opponent’s case, the most important factor to be taken into account is the way in which the single letter appears in each sign. As explained above, the signs under comparison show striking dissimilarities visually, given their different colours, stylization and, most importantly, positioning. The stylised device element of the earlier mark bears no visual resemblance to the contested sign, and this clearly excludes a likelihood of confusion despite the identical goods. The opponent does not have blanket trade mark protection for the generic letter ‘W’, but rather for a specific stylisation of that letter as a figurative mark. The contested mark does not imitate or resemble that stylisation and therefore does not trespass upon the protection conveyed by the earlier mark.

With regard to the opponent’s argument that figurative elements are not normally used as trade mark for furniture and that these goods are typically lower-priced products, the Opposition Division cannot agree with either of these assertions, and neither has the opponent supported these arguments with any evidence. Prices of furniture can vary widely but the opponent’s claim that consumers would pay lower than average attention at the time of purchasing some of the relevant goods appears counterintuitive, since it is a reasonable presumption that most people care about how they decorate their homes and which pieces of furniture they place in them. Furthermore, and contrary to the opponent’s claim, the Opposition Division considers that the relevant goods are not typically sold over the telephone; instead, consumers tend to first go through catalogues, visit shops and look at the products; each of these steps involves visual perception and consumer’s choice heavily relies on it.

Furthermore, the opponent refers to previous decisions of the Office and the General Court 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. Having looked at the earlier decisions cited by the opponent, the Opposition Division considers them to be significantly different to the present case, in particular, since in all of those cases the single letters in conflict are easily perceptible, recognizable and display some degree of visual similarity, while in the present case, due to its particular stylisation, the earlier sign is subject to various interpretations leading to a visual dissimilarity with the contested sign.

Therefore, taking into consideration, in particular, the lack of any visual similarity between two very short signs and the potentially different interpretation of the earlier sign, the Opposition Division considers that there is no likelihood of confusion on the part of the public, even presuming identity between the contested goods and the opponent’s ones. 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

Rhys MORGAN

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.