OPPOSITION No B 2 706 987

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Matthew Williamson, Sydney Cottage, Vale of Health, London NW3 1AX, United Kingdom and Joseph Velosa, Top Floor Flat, 58 Parliament Hill, London NW2 2TL, United Kingdom (applicant), represented by Mishcon De Reya LLP, Africa House  70 Kingsway, London, London WC2B 6AH, United Kingdom (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 987 is partially upheld, namely for the following contested goods:

Class 20:        Parts and fittings of all the aforesaid goods, included in the class (furniture; mirrors; picture frames; sofas; armchairs; chairs; stools; tables; cabinets; beds; benches; chests, not of metal; cupboards; desks; fittings for furniture, not of metal; footstools; hat stands; magazine racks; furniture screens; umbrella stands; furniture and furnishings; bedsteads of wood; chest of drawers; dressing tables); furniture; mirrors; picture frames; pillows; chair pads; window blinds; shades; decorative curtain hardware; sofas; armchairs; chairs; stools; tables; cabinets; works of art of wood, wax, plaster or plastic; beds; benches; chests, not of metal; cupboards; curtain hooks; curtain rails; curtain rings; curtain rods; curtain tie-backs; cushions; desks; fittings for furniture, not of metal; footstools; hat stands; magazine racks; mirror tiles; furniture screens; umbrella stands; furniture and furnishings; bedsteads of wood; chest of drawers; dressing tables.

Class 25:        Clothing, footwear, headgear; boots; shoes; slippers; sandals; trainers; socks and hosiery; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; swimwear; underwear; lingerie; tracksuits; articles of outerwear; coats; jackets; ski jackets; waterproof and weatherproof jackets and coats; ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; sleepwear; robes; sweatshirts; bibs; stockings; earmuffs; ties; tuxedos; vests; kilts; shawls; blazers; headbands and wristbands; overalls.

2.        European Union trade mark application No 14 888 663 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 14 888 663. The opposition is based on Benelux trade mark registration No 983 980. 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

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

Class 20:        Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames.

Class 25:        Clothing; footwear; headgear; swimwear; sportswear; leisurewear.

The contested goods are the following:

Class 20:        Furniture; mirrors; picture frames; pillows; chair pads; window blinds; shades; decorative curtain hardware; sofas; armchairs; chairs; stools; tables; cabinets; works of art of wood, wax, plaster or plastic; beds; benches; chests, not of metal; cupboards; curtain hooks; curtain rails; curtain rings; curtain rods; curtain tie-backs; cushions; desks; fittings for furniture, not of metal; footstools; hat stands; magazine racks; mirror tiles; furniture screens; umbrella stands; furniture and furnishings; bedsteads of wood; chest of drawers; dressing tables; and parts and fittings of all the aforesaid goods, included in the class.

Class 25:        Clothing, footwear, headgear; boots; shoes; slippers; sandals; trainers; socks and hosiery; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; swimwear; underwear; lingerie; tracksuits; articles of outerwear; coats; jackets; ski jackets; waterproof and weatherproof jackets and coats; ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; sleepwear; robes; sweatshirts; bibs; stockings; earmuffs; ties; tuxedos; vests; kilts; shawls; blazers; headbands and wristbands; overalls.

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 method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 20

Furniture (listed twice in the list of the contested goods); mirrors; picture frames; sofas; armchairs; chairs; tables; beds are identically contained in both lists of goods.

The contested stools; cabinets; benches; chests, not of metal; cupboards; desks; footstools; hat stands; magazine racks; furniture screens; umbrella stands; bedsteads of wood; chest of drawers; dressing tables are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested furnishings could be furniture, as well as home accessories or ‘soft furnishing’ (such as cushions). These, therefore, overlap with the opponent’s furniture. The goods are considered identical.

The contested mirror tiles are by their nature frameless mirrors that could be arranged in a pattern. These are, therefore, included in the broader category of the opponent’s mirrors. It follows that the goods are identical.  

The contested pillows; chair pads; cushions are often sold with the pieces of furniture they are usually used for, such as chairs and sofas. These, therefore, coincide with the opponent’s furniture in their purpose, namely to decorate a living space. The goods, furthermore, are complementary and coincide in the relevant public and distribution channels. It follows that these are similar.

The contested works of art of wood, wax, plaster or plastic (e.g. little decorative statuettes); decorative curtain hardware; curtain hooks; curtain rails; curtain rings; curtain rods; curtain tie-backs are objects, which as well as the opponent’s furniture are used for the purposes of interior or exterior design. They also coincide in end user and distribution channels. It follows that these are similar. 

The contested window blinds; shades, such as the opponent’s furniture are meant for furnishing a living or an office space. They also share the distribution channels and target the same public. It follows that these are similar. 

As far as the contested parts and fittings of all the aforesaid goods, included in the class (furniture; sofas; armchairs; chairs; stools; tables; cabinets; beds; benches; chests, not of metal; cupboards; desks; fittings for furniture, not of metal; footstools; hat stands; magazine racks; furniture screens; umbrella stands; furniture and furnishings; bedsteads of wood; chest of drawers; dressing tables); fittings for furniture, not of metal are concerned, these are different parts and fittings for the opponent’s furniture and there is a complementarity between the goods in comparison. They share producer, end user and distribution channels. These are, therefore, similar.

The same reasoning applies for the comparison between the contested parts and fittings of all the aforesaid goods, included in the class (mirrors) and the opponent’s mirrors, as well as between the contested parts and fittings of all the aforesaid goods, included in the class (picture frames) and the opponent’s picture frames. The goods in comparison are complementary and share producer, end user and distribution channels. These are, therefore, similar.

As far as the remaining contested goods are concerned, namely parts and fittings of all the aforesaid goods, included in the class (pillows; chair pads; window blinds; shades; decorative curtain hardware; works of art of wood, wax, plaster or plastic; curtain hooks; curtain rails; curtain rings; curtain rods; curtain tie-backs; cushions; mirror tiles), these are not similar to any of the opponent’s goods, as they are parts and fittings for goods different than the opponent’s ones. Even though the goods in comparison could be found in the same distribution channels, such as large department stores, they do not usually coincide in their origin, nature, purpose or method of use and are neither complementary, nor in competition. These are, therefore, found to be dissimilar.

 

Contested goods in Class 25

Clothing, footwear, headgear; swimwear are identically contained in both lists of goods.

The contested boots; shoes; slippers; sandals; trainers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested socks and hosiery; scarves; gloves; mittens; belts (being articles of clothing); shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; underwear; lingerie; tracksuits; articles of outerwear; coats; jackets; ski jackets; waterproof and weatherproof jackets and coats; ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; wristbands (listed twice); menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; sleepwear; robes; sweatshirts; bibs; stockings; ties; tuxedos; vests; kilts; shawls; blazers; overalls are included in the broad category of or overlap with the opponent’s clothing. Therefore, they are identical.

The contested hats; caps; berets; headbands (listed twice); earmuffs are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 are directed at the public at large. The degree of attention will be average when choosing the relevant goods.

3. The signs

Matthew                                      MATTHEW WILLIAMSON

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on Dutch-speaking part of the relevant public.

Both signs are word marks. The earlier mark consists of the sole element ‘Matthew’. The contested sign consists of the elements ‘MATTHEW’ and ‘WILLIAMSON’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The element ‘MATTHEW’ present in both signs will be perceived by the relevant part of the public as a foreign (English) and uncommon given male name. The element ‘WILLIAMSON’ of the contested sign will be perceived as a foreign (English) and uncommon for the relevant part of the public surname and thus the contested sign as a whole will be perceived as a foreign (English) male given name and a surname.  

In its observations the applicant refers to a previous decision of the Office to support its arguments that there will be no likelihood of confusion between the signs at issue. 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.

The previous case referred to by the applicant is not relevant to the present proceedings, as the signs in the said case reflect a common for the relevant public female given name (‘Jane’) versus the same common given name and considerably longer surname (‘Jane Granville’). These are, therefore not comparable with the signs under comparison, where both the given name (‘Matthew’) and the surname ‘Williamson’ are foreign and uncommon, and furthermore both of them are comparatively long strings of letters. It follows that the applicant´s argument has to be set aside.

Therefore, conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same given name ‘Matthew’, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the element (and the sound of it) ‘MATTHEW’, being the sole element of the earlier mark and the first element of the contested sign.  The signs differ in the element (and the sound of it) ‘WILLIAMSON’ of the contested sign, which has no counterpart in the earlier mark.

Consequently, the signs are found to be visually and aurally similar to an average degree.

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 Dutch-speaking 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 are partially identical, partly similar and partially dissimilar to the opponent’s goods. The degree of attention will be average.

The comparison between the earlier mark and the contested sign has shown that the signs are visually, aurally and conceptually similar to an average degree due to the shared element ‘MATTHEW’. The difference between the marks lies in the element ‘WILLIAMSON’ of the contested sign, which has no counterpart in the earlier mark.

The entire earlier mark is included in the contested sign and will be perceived as a separately identifiable element in the contested sign due to its meaning, namely as uncommon given name, which is followed by uncommon surname. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established. The finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark (06/10/2005, C-120/04, Medion, EU:C:2005:594 §§ 31 and 32).

Bearing in mind that the earlier mark is included in its entirety as the first element of the contested sign, that it will be perceived as a separately identifiable element due to its meaning, and that it is furthermore of a normal degree of distinctiveness for the goods found to be identical and similar, it is concluded that the relevant part of the public could believe that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux 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 Benelux 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 or 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

Judit NÉMETH

Irina SOTIROVA

Natascha GALPERIN

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.