OPPOSITION No B 2 751 561

Legio International NV, Legeweg 157D, 8020 Oostkamp, Belgium (opponent), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Bruxelles, Belgium (professional representative)

a g a i n s t

Stark Polstermöbel Spółka Z Ograniczoną Odpowiedzialnością, ul. Wiejska 11, 78-300 Świdwin, Poland (applicant).

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

DECISION:

1.        Opposition No B 2 751 561 is partially upheld, namely for the following contested goods:

Class 20:         Stools; furniture; benches [furniture]; tables [furniture]; seating furniture.

2.        European Union trade mark application No 15 402 167 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 402 167, , namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 8 902 439, ‘STORKE’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the notice of opposition sent on 11/08/2016, the opponent indicated that the opposition is directed against parts of the goods and services of the contested mark, namely against all the goods in Class 20. In its observations of 28/12/2016, pages 2 – 3, the opponent challenged also the services covered by the contested mark, namely all the services in Class 35.

According to Article 41(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EU trade mark application, namely until 18/08/2016. The scope of the opposition as it is indicated in the notice of opposition cannot be extended after opposition period.

Therefore, the Opposition Division will consider the opposition as directed to some of the goods and services of European Union trade mark application No 15 402 167,  namely against all the goods in Class 20.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark registration No 8 902 439.

In the present case, the date of filing of the contested trade mark is 05/05/2016.

Earlier European Union trade mark registration No 8 902 439 was registered on 14/06/2012. Therefore, the request for proof of use is inadmissible.

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

The goods on which the opposition is based are the following:

Class 11: Lighting apparatus for bathrooms and washrooms, lighting apparatus for mirrors; sanitary installations; baths and bathing equipment; bath installations; baths; bath tubs for sitz baths; bath linings; heaters for baths; bidets; jacuzzi equipment; spa baths; shower enclosures; showers; water taps; manual or automatic hot/cold water mixer taps; spray nozzles and holders for spray nozzles; toilets; toilet seats; toilet bowls; urinals, non-slip devices for baths, showers and bathroom floors; bathroom fittings and accessories, including for baths, showers, washbasins and WCs.

Class 20: Sanitary furniture; washstands (dressing tables); bathroom furniture accessories, not of metal; cabinet work for bathrooms; mirrors for bathrooms; mirror cabinets for bathrooms; picture frames; sanitary and hygiene accessories for the bathroom.

The contested goods are the following:

Class 20: Upholstered furniture; upholstered convertible furniture; sofas; extendible sofas; divans; stools; furniture; beds; benches [furniture]; tables [furniture]; recliners [furniture]; furniture incorporating beds; soft furnishings [cushions]; furniture being convertible into beds; adjustable beds; beds, bedding, mattresses, pillows and cushions; armchairs; bed frames; wood bedsteads; cushions; seating furniture; mattresses.

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 includes, as a broader category the opponent’s sanitary furniture. 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 stools; benches [furniture]; seating furniture and the opponent’s sanitary furniture can coincide in end user and distribution channels. Furthermore they can be produced under the same undertakings and are complementary. Therefore, they are similar.

The same applies for the tables [furniture] that can coincide in end user and distribution channels to the opponent’s washstands (dressing tables). Furthermore they could be produced under the same undertakings. Therefore, they are similar.

The remaining upholstered furniture; upholstered convertible furniture; sofas; extendible sofas; divans; beds; recliners [furniture]; furniture incorporating beds; soft furnishings [cushions]; furniture being convertible into beds; adjustable beds; beds, bedding, mattresses, pillows and cushions; armchairs; bed frames; wood bedsteads; cushions; mattresses have different natures, purposes and methods of use compared to all the goods of the opponent. The earlier goods are specific sanitary installations, including lighting apparatus, sanitary furniture items and accessories that have no connection nor are complementary to these contested goods. They do not coincide in manufacturers. The goods are dissimilar.

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 and similar are directed at the public at large. The degree of attention is average.

3. The signs

STORKE
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 verbal elements of both signs are not meaningful in certain territories, for example, in Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a word mark, ‘STORKE’. The contested mark is a figurative mark, consisting of the verbal element ‘STARK’, written in upper case, the letter ‘A’ being slightly stylised. At the end of the verbal element, a red and black figurative element is depicted. It is not excluded that a part of the relevant public will perceive the figurative element of the contested mark as the highly stylised letter ‘E’.

 

The verbal element ‘STORKE’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The same applies for the verbal element ‘STARK’ and the figurative element of the contested sign, also distinctive.

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

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, the signs coincide in the letters ‘ST*RK*’, placed on the same positions in both signs. However, they differ in their third letter ‘O’ of the earlier mark and ‘A’ of the contested mark, as well as in the final letter ‘E’ of the earlier mark. The signs also differ in the stylisation, the colours and the figurative element of the contested mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ST*RK*’, present identically on the same positions in both signs. The pronunciation differs in the sound of their third letters ‘O’ of the earlier mark and ‘A’ of the contested mark, as well as in the final letter ‘E’ of the earlier mark. For the part of the public which perceives the figurative element of the contested mark as the highly stylised letter ‘E’, the signs coincides in the sound of the letters ‘ST*RKE’, present identically on the same positions in both signs and differ only in their third letters, ‘O’ of the earlier mark and ‘A’ of the contested mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 contested goods have been found to be partially identical and similar and partially dissimilar to the goods of the opponent and target the general public with an average degree of attention.

The comparison between the earlier and the contested sign has shown that the signs coincide in their initial letters, namely ‘ST’, and in their fourth and fifth letters ‘RK’ or, for a part of the public, in their endings, namely ‘RKE’. The differences between the marks are in the third letters of both signs, namely ‘O’ of the earlier mark against ‘A’ in the contested sign. For a part of the public, the signs differ in the final letter ‘E’, the stylisation, the colour and the figurative element of the contested mark. The applicant sustains that the signs are aurally different, as the words ‘STARK’ and ‘STORKE’ are pronounced differently. The differences in the third letters of both signs, and for a part of the public, in the final letter of the contested sign, will not be so readily perceived at an aural or visual level and they are somewhat hidden in the signs in comparison.  

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, 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, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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. 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 trade mark must be rejected for the goods found to be identical and 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.

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

Erkki MÜNTER

Francesca DRAGOSTIN

Loreto URRACA LUQUE

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.