OPPOSITION No B 2 682 683

Begros Bedarfsgüter Großhandelsgesellschaft für Wohnung und Heim Gesellschaft mit beschränkter Haftung, Graf-Zeppelin-Str. 5, 46149 Oberhausen, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Mondo Sofa S.r.l., Via del Tratturo, 80, 47032 Bertinoro (FC), Italy (applicant), represented by Aldo Antonino Micali, Via Giorgio Regnoli 10, 47100 Forlì, Italy (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 682 683 is upheld for all the contested goods.

2.        European Union trade mark application No 15 116 254 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 116 254 for figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 7 544 471 for the word mark ‘MONDO’. 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 7 544 471.

1. The goods

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

Class 20:        Furniture, mirrors, 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.

The contested goods are the following:

Class 20:        Furniture; mirrors (silvered glass); frames; divans; armchairs; cushions; table tops; flower tables; worktables; coffee tables; dining room tables; seats; reclining chairs; rocking chairs; easy chairs; sofas; works of art of wood, wax, plaster or plastic.

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 furniture are also covered by the trade mark on which the opposition is based. Thus, these goods are identical.

The contested mirrors (silvered glass) are included in the broad category of the opponent’s mirrors. Therefore, they are identical.

The contested divans; armchairs; table tops; flower tables; worktables; coffee tables; dining room tables; seats; reclining chairs; rocking chairs; easy chairs; sofas are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested frames are related to the opponent’s furniture also in Class 20 since some items of furniture may have the same decorative purpose as picture frames. Moreover, these goods are commonly distributed through the same distribution channels and are directed at the same consumers. Therefore, the goods are similar.

The contested cushions are routinely sold with, for example, sofas, armchairs and beds, often as a part of these types of furniture. They have the same nature and purpose and, moreover, they are produced by the same manufacturers and are made available to the public by the same suppliers. Consequently, these goods are considered similar to the opponent’s furniture in Class 20.

The contested works of art of wood, wax, plaster or plastic are classified according to the material of which they are made. They are, however, in general, objects that are designed for aesthetic appeal, such as interior and exterior design. Therefore, these goods may have the same purpose as the opponent’s furniture in Class 20 insofar as they are items for interior or exterior decoration. They can be sold in the same type of furniture or decoration shops and may target the same public. Therefore, these goods are considered similar to a low degree.

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 found to be identical or similar to various degrees are directed at the public at large.  The degree of attention is expected to be average.

3. The signs

MONDO
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.

The common element ‘MONDO’ is not meaningful in certain territories, for example, in those countries where Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark consisting of the word ‘MONDO’. The contested sign is a figurative sign made of the word ‘Mondo’ followed by the word ‘Sofa’, the first letter of which is a capital letter. The black characters used to depict the word ‘Sofa’ are slightly thicker with respect of the preceding term ‘Mondo’. Below these word elements a figurative element is placed, namely a black irregular curved stripe the endings of which are thinner than its middle part.

The contested sign has no elements that could be considered clearly more dominant than other elements.

The element ‘MONDO’, common to both marks in dispute, has no meaning for the relevant public and is, therefore, distinctive.

The element ‘SOFA’ of the contested sign will be associated with the concept of a long, comfortable seat with a back and usually with arms, which two or three people can sit on. Bearing in mind that the relevant goods are furniture or related to furniture, since they are items aimed at interior or exterior decoration, this element is non-distinctive for part of these goods (for instance, sofas, furniture, divans, cushions) or weak (for goods such as frames, works of art of wood, wax, plaster or plastic).

As regards the contested sign, account must be taken on 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 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).

Also, it must be noted that the coinciding verbal element ‘MONDO’ is the first element of the contested sign. In fact, 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.

Visually and aurally the signs coincide in the distinctive word ‘Mondo’, which in the case of the contested sign is depicted in a rather common typeface. However, they differ in the additional elements of the contested sign, which are, for the reasons seen above, non-distinctive or weak (the word ‘Sofa) or play a secondary role (the figurative element, which, in any case, is not subject to aural assessment). Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element  ‘Sofa’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar, although in a limited manner in the light of what has been stated above about the nature of the word ‘Sofa’ of the contested sign.

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.

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 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

The goods covered by the trade marks in dispute in Class 20 have been found partly identical, partly similar and partly similar to a low degree. They are directed at the public at large, whose degree of attention in this case is expected to be average.

The signs are similar to a high degree both from a visual and aural perspective. In fact, the earlier mark is fully incorporated in the contested sign, where it corresponds to the first verbal element of the signs. The additional word element ‘Sofa’ of the contested sign is likely to play a secondary role, since, for the reasons explained above in section c) of the present decision, not only it is placed as second verbal element but depending on the goods, it is a non-distinctive or weak element.

As regards the additional figurative element of the contested sign, neither this element seems to be capable to counterbalance the coincidence of the word ‘Mondo’, common to both signs, since the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Account is 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark ‘MONDO’, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public.

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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 544 471. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 7 544 471 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.