OPPOSITION No B 2 477 431

Industrias Relax, S.L., Calle La Habana, 1 Carretera Nacional II, Km 303 Polig. Ind. Centrovia, 50196 La Muela (Zaragoza), Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain (professional representative)

a g a i n s t

Home Relax S.r.l., Via Croce Rossa 5/R, 51037 Montale (Pistoia), Italy (applicant).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 477 431 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 395 843 is rejected for all of the contested goods and services. It may proceed for the remaining uncontested goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 395 843 , namely against all of the goods and services in Classes 20, 24 and 35. However, as a result of a decision in parallel opposition proceedings No B 2 475 153, the contested application was rejected for all of the goods in Class 20 and some of the goods in Class 24. The opponent maintained its opposition and, therefore, it is considered that the opposition is now directed against all the remaining goods and services in Classes 24 and 35. The opposition is based on European Union trade mark registration No 4 958 955 . 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, amongst others, the following:

Class 24: Bed linen, textiles and fabric for mattresses and pillows, casings for these, bedspreads, bolsters, textile goods for upholstery and loose covers for furniture.

Class 35: Advertising, management, aid, assistance and consultancy in relation to business management, whether franchises or not; import and export; sales promotion (for others); retail sales; all relating to beds, settees, spring mattresses, cots, mattresses, pillows, convertible furniture and furniture in general of all kinds, bedding, textiles and fabrics for mattresses and pillows, covers therefor, bedspreads, bolsters, textile articles for upholstery and loose covers for furniture.

The contested goods and services are the following:

Class 24: Piece goods made of textile materials bonded with plastics; Breathable piece goods made of textile materials bonded with plastics; Piece goods made of non-woven plastic material; Textile piece goods (Polyurethane coated -) for making waterproof clothing; Textiles made of cotton; Textile piece goods made of cotton; Textiles made of satin; Textiles made of synthetic materials; Piece goods made of woven plastic material; Textiles for making up into articles of clothing; Textiles treated with a flame resistant finish; Kashmir fabric; Canvas for tapestry or embroidery; Interfacings.

Class 35: Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Consumers (Commercial information and advice for -) [consumer advice shop]; Foreign trade information and consultation; Business intermediary and advisory services in the field of selling products and rendering services; Mediation of agreements regarding the sale and purchase of goods; Mediation of trade business for third parties; Mediation of contracts for purchase and sale of products; Arranging of commercial and business contacts; Consultancy relating to costing of sales orders; Telephone order-taking services for others.

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 24

The contested piece goods made of textile materials bonded with plastics; breathable piece goods made of textile materials bonded with plastics; piece goods made of non-woven plastic material; textiles made of cotton; textile piece goods made of cotton; textiles made of satin; textiles made of synthetic materials; piece goods made of woven plastic material; textiles treated with a flame resistant finish; kashmir fabric are all types of textiles or fabrics, and none of them are restricted to any specific use. Therefore, these goods overlap with the opponent’s textiles and fabric for mattresses and pillows, textile goods for upholstery and loose covers for furniture in Class 24. Consequently, these goods are identical.

The contested interfacings is a textile used on the unseen or "wrong" side of fabrics to stiffen, strengthen or add body to them. Therefore, these goods also overlap with the opponent’s textiles and fabric for mattresses and pillows, textile goods for upholstery and loose covers for furniture in Class 24, which could also be used as interfacings. Consequently, these goods are identical.

The contested textile piece goods (polyurethane coated -) for making waterproof clothing; textiles for making up into articles of clothing; canvas for tapestry or embroidery are types of textiles or canvas intended for use in the manufacture of either waterproof clothing, clothing in general or tapestry or embroidery. Therefore, these goods do not overlap with the opponent’s textiles and fabric for mattresses and pillows, textile goods for upholstery and loose covers for furniture in Class 24, as the final purpose is different. However, they are similar as textiles in general have a similar nature and may come from the same manufacturers.

Contested services in Class 35

The contested advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; consumers (commercial information and advice for -) [consumer advice shop]; business intermediary and advisory services in the field of selling products and rendering services; mediation of agreements regarding the sale and purchase of goods; mediation of trade business for third parties; mediation of contracts for purchase and sale of products; arranging of commercial and business contacts; consultancy relating to costing of sales orders; telephone order-taking services for others are services involving a variety of business management and/or business administration. They have a similar purpose, relevant public, and providers to the opponent’s management, aid, assistance and consultancy in relation to business management, whether franchises or not, relating to beds, settees, spring mattresses, cots, mattresses, pillows, convertible furniture and furniture in general of all kinds, bedding, textiles and fabrics for mattresses and pillows, covers therefor, bedspreads, bolsters, textile articles for upholstery and loose covers for furniture in Class 35. Consequently they are considered to be similar.

The contested foreign trade information and consultation are similar to the opponent’s services of import and export, all relating to beds, settees, spring mattresses, cots, mattresses, pillows, convertible furniture and furniture in general of all kinds, bedding, textiles and fabrics for mattresses and pillows, covers therefor, bedspreads, bolsters, textile articles for upholstery and loose covers for furniture in Class 35. This is because these services have a similar purpose and nature and may target a similar public.

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 and services found to be identical or similar are directed at primarily professionals, either those manufacturers requiring textile and fabric goods for their manufacturing purposes or business owners requiring business services. Given this, the degree of attention is considered to be higher than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is composed of the term ‘RELAX’ written in stylised red characters.

The contested sign is composed of the term ‘HOME’ written in grey letters in a slightly stylised typeface. Beneath this there is a thin horizontal grey line, and beneath this the term ‘RELAX’ written in stylised red characters.

The terms ‘RELAX’ and ‘HOME’ are English words meaning ‘to become loose or slack; to grow less tense or firm’ and ‘a dwelling place; a person's house or abode; the fixed residence of a family or household’ respectively (definitions taken from the Oxford English Dictionary online, oed.com). These words will be understood by English speakers, both native and non-native speakers, across the relevant territory, but will not be understood by all non-English speakers in the relevant territory.

For those who understand the English words, ‘RELAX’ and ‘HOME’, these might be seen as alluding to characteristics of the textiles and fabrics in Class 24, in that they permit relaxing or the intended location of use (one’s home). If so they are weaker than normal. For the rest of the services or for the part of the relevant public which does not understand these English words, they are of normal distinctiveness.

The signs have no element which is clearly more eye catching than any other element and must therefore be seen as devoid of any dominant element.

Visually, the signs coincide in the word ‘RELAX’ which appears in both signs in red stylised characters which whilst not identical are highly similar with both having a capital ‘R’ and lower case ‘elax’. However, they differ in the term ‘HOME’ and the thin horizontal grey line which appears in the contested sign. The degree of distinctiveness of the elements of the signs does not substantially affect the degree of similarity between the signs, as all elements are perceived either equally weak or equally of a normal distinctiveness.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /RE/LAX/, present identically in both signs. The pronunciation differs in either the syllable /HOME/ or the syllables /HO/ME/, depending on the language in which it is pronounced. As in the case of the visual comparison, the distinctiveness of the elements of the signs has no significant impact on the degree of similarity between the signs overall.

Therefore, the signs are similar to an average degree.

Conceptually, for the part of the relevant public which does not understand the verbal English words, then neither of the signs has a meaning, and since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the part of the relevant public which does understand the verbal elements as English words, then the degree of similarity is average because regardless of whether the word ‘RELAX’ is weak or not as the word ‘HOME’ is also weak.

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, for the part of the public which does not understand the English word ‘RELAX’, 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.

However, for the part of the public which does understand the English word ‘RELAX’, and considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than normal for a part of the goods and services in question, namely those in Class 24. The mark has a normal degree of distinctiveness for the remaining services in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (Sabèl, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, Lloyd Schuhfabrik, § 20; 11/11/1997, Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark has a normal degree of inherent distinctiveness for a part of the relevant public, although it is weaker than normal for a part of the goods for the other part of the relevant public. Furthermore, the contested goods and services were found to be identical or similar to those of the earlier mark and are directed at primarily professionals whose level of attention will be higher than average. The marks in dispute have been found to be visually and aurally similar to an average degree and depending on the public either neither sign has a concept or they are conceptually similar.

Account must also be 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 (Lloyd Schuhfabrik, § 26). Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The earlier mark consists of a single element, a red stylised word ‘RELAX’. The contested sign also has a very similar red stylised ‘RELAX’. The contested sign does have other elements, the word ‘HOME’ and the figurative horizontal line. However, even assuming that ‘HOME’ is distinctive, which it is for a part of the relevant public, and which is the applicant’s strongest case, it does not overwhelm or distract from the presence of the similar ‘RELAX’ word. It does not alter the signs’ conceptual impact and does not mask the word ‘RELAX’. Furthermore, the line is merely decorative and will have no impact on the relevant consumer. Hence, the differences do not counteract the similarities caused by the shared red ‘RELAX’.

In the light of the foregoing, it must be concluded that even a more attentive consumer is likely to confuse the marks or believe that the goods in question come from the same undertaking or, as the case may be, economically linked undertakings. Considering all the above, there is a likelihood of confusion on the part of the public.

For the sake of completeness, it is worth noting that the applicant did not adduce any specific arguments or evidence that would lead to a different conclusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 958 955. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

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.