OPPOSITION No B 2 697 426
Domus Yhtiöt Oy, Puusepänkatu 1, 32200 Loimaa, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)
a g a i n s t
Domus Group, 3 Molesey Business Centre, Central Avenue, West Molesey, Surrey KT8 2QZ, United Kingdom and Domus Tiles Ltd, 3 Molesey Business Centre, Molesey, Surrey KT8 2QZ, United Kingdom (applicants).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 697 426 is upheld for all the contested goods, namely:
Class 19: Wood; wooden floors; wooden flooring; wooden floor boards; boards (wooden floor –); parquet wood flooring; wood tile flooring; floor tiles of wood; floor coverings of wood; floor boards [of wood]; parquet flooring of wood; flooring made of wood; parquet flooring made of wood.
2. European Union trade mark application No 15 088 305 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicants bear the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 088 305, namely against all the goods in Class 19. The opposition is based on Finnish trade mark registration No 133 101 and Estonian trade mark registration No 14 122. 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 Finnish trade mark registration No 133 101.
- The goods
The goods on which the opposition is based are the following:
Class 19: All the goods in this class.
The contested goods are the following:
Class 19: Wood; wooden floors; wooden flooring; wooden floor boards; boards (wooden floor –); parquet wood flooring; wood tile flooring; floor tiles of wood; floor coverings of wood; floor boards [of wood]; parquet flooring of wood; flooring made of wood; parquet flooring made of wood.
As regards the goods on which the opposition is based, the extract from the official database of the Finnish Office filed by the opponent to prove the existence, validity and ownership of Finnish mark No 133 101 does not list the goods for which the mark is registered but contains only an indication of the class number (i.e. Class 19). According to the explanations provided by the opponent, at the time of the registration of the mark, the practice of the Finnish Office was to indicate only the class number when the goods and/or services were not limited to only certain goods/services and the class number in the registration details proves that the mark is registered for all the goods/services in that particular class.
According to the Nice Classification in force at the time of filing of the earlier mark (i.e. the 5th edition), Class 19 includes, inter alia, building materials (non-metallic).
The contested wood; wooden floors; wooden flooring; wooden floor boards; boards (wooden floor –); parquet wood flooring; wood tile flooring; floor tiles of wood; floor coverings of wood; floor boards [of wood]; parquet flooring of wood; flooring made of wood; parquet flooring made of wood are included in the broad category of the opponent’s building materials (non-metallic). Therefore, they are identical.
- 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 are directed mostly at business customers with specific professional knowledge or expertise in the building and construction industry, but some may also target the public at large (i.e. consumers who make home improvements and undertake refurbishing and maintenance without direct help from professionals). The degree of attention of the relevant public will vary from average to higher than average depending on the specific nature of the goods, the frequency of the purchase or their price.
- The signs
| DOMUS
|
DOMUS WOOD
|
|
Earlier trade mark |
Contested sign |
The relevant territory is Finland.
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 marks are word marks, as shown above. The element that the signs have in common, ‘DOMUS’, has no meaning for the relevant public. Therefore, it is distinctive in relation to the goods in question. However, it is reasonable to assume that the relevant public will understand the English word ‘WOOD’ of the contested sign as referring to the material that forms the trunks and branches of trees, since they are familiar with the foreign language concerned. Bearing in mind that the relevant goods are wood and floors made of wood, the element ‘WOOD’ is non-distinctive for these goods.
Visually and aurally, the signs coincide in the distinctive word ‘DOMUS’, which constitutes the entire earlier mark and is the first element of the contested sign. However, they differ in the additional descriptive word contained in the contested sign, ‘WOOD’. Furthermore, the word that the signs have in common, ‘DOMUS’, is placed at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader. Therefore, and bearing in mind the impact of the differentiating element as detailed above, the marks are visually and aurally highly similar.
Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Although the contested sign contains the word ‘WOOD’, this element cannot establish a point of conceptual difference between the signs given that it is non-distinctive, as explained above, and cannot indicate the commercial origin of the goods covered by the contested mark. The relevant public will focus their attention on the fanciful element ‘DOMUS’, which has no meaning. For this reason, a conceptual comparison is not possible and therefore 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.
- 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.
- Global assessment, other arguments and conclusion
The goods are identical and the relevant public’s degree of attention may vary from average to higher than average. The earlier mark has a normal degree of distinctiveness.
The signs are visually and aurally highly similar because the distinctive earlier mark is entirely reproduced in the contested sign and the only difference is confined to a non-distinctive element, as explained above in section c) of this decision.
From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant public, even when displaying a higher than average degree of attention, will perceive the mark applied for 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, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Finnish trade mark registration No 133 101. It follows that the contested trade mark must be rejected for all the contested goods.
As earlier Finnish trade mark registration No 133 101 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 right 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 applicants are the losing party, they 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
| Anna MAKOWSKA | Carlos MATEO PÉREZ | Oana-Alina STURZA |
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.