OPPOSITION No B 2 562 604
Habitat International S.A., 16 boulevard Emmanuel Servais, 2535 Luxembourg, Luxembourg (opponent), represented by Lynde & Associes, 5, rue Murillo, 75008 Paris, France (professional representative)
a g a i n s t
Gries Deco Company GmbH, Boschstr. 7a, 63843 Niedernberg, Germany (applicant), represented by Linklaters LLP, Taunusanlage 8, 60329 Frankfurt am Main, Germany (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 562 604 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 266 011, namely against all the goods in Classes 4, 14, 16, 21 and 24 and some of the goods in Classes 8, 18 and 26. The opposition is based on European Union trade mark registrations No 2 637 247 and No 11 678 935, and on international trade mark registration No 1 008 781 designating the European Union. 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 signs
Earlier trade marks
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 earlier rights are all figurative marks. EUTM No 2 637 247 and IR designating the EU No 1 008 781 consist of the same figurative element, . This element consists of a stylised heart inside a schematic shape resembling a house depicted with a continuous black line. EUTM No 11 678 935, , consists of a graphic depiction of the word ‘HABITAT’, in a standard lower case black typeface, with a smaller version of the figurative element of which the other earlier rights consist at its upper right corner. The word element comes from Latin and will be understood by most consumers throughout the EU as referring to the environment in which an animal, plant or human normally lives. The verbal element, ‘HABITAT’, as it is not descriptive, allusive or otherwise weak for the relevant goods, is distinctive. Moreover, due to its size and position in relation to the figurative element, it is the dominant element in earlier mark 3, as it is the most eye-catching.
The purely figurative earlier rights have no elements that are more distinctive or dominant than other elements.
The contested sign is a figurative sign that consists of the word ‘ROOMS’ in a standard upper case typeface. The letters that form the word are significantly separated from each other with smaller cross-like signs between them. Both letters ‘O’ are enclosed in a square and separated by two lines forming a larger cross. There is a heart in the top quadrant formed by the cross, and above the square there are two diagonal lines that form a triangle with the upper side of the square, although these lines do not actually touch each other. All these elements are depicted in black. The word ‘ROOMS’ means ‘lodgings’ or ‘quarters’, as in a house or building, in English. This word could be perceived by the English-speaking part of the public as alluding to the purpose of some of the goods; however, taking into account the way in which it is presented, it has an average degree of distinctive character. For the rest of the public and the rest of the goods the word ‘ROOMS’ has an average degree of distinctive character.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in that they are both black. The only other points that they have in common are the triangular tops of the figurative elements and the presence of hearts of different sizes and designs. Notwithstanding these coincidences, as described above the shapes and words contained in the earlier mark and the contested sign are different. Moreover, contrary to the opponent’s arguments, the contested sign does not have a similar appearance to the earlier mark overall; even though in all the signs the shape of a heart and a triangular top can be perceived, these elements do not coincide in shape or size or in the way in which they are combined with each other or the rest of the elements of the signs.
Moreover, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In the case of earlier mark 3, this is reinforced by the size of the verbal element.
The words, ‘HABITAT’ versus ‘ROOMS’ are composed of completely different letters (none of those in the contested sign is included in the earlier right). Their lengths, seven and five letters, respectively, constitute a further point of difference.
As the signs coincide only in irrelevant aspects, the Opposition Division concludes that they are not visually similar.
Aurally, in relation to the purely figurative earlier rights, it is not possible to compare them; therefore, the aural comparison will be performed only in relation to EUTM No 11 678 935, . Irrespective of the different pronunciation rules in different parts of the relevant territory, the signs in conflict do not coincide aurally in any of their sounds, as they are composed of completely different letters and have different numbers of syllables, rhythms and intonations. As the signs do not coincide aurally in any element, it is concluded that they are not aurally similar.
Conceptually, in relation to the purely figurative earlier rights 1 and 2, the public will associate them with the concept of a heart inside a stylised house. The contested sign will be associated with a part of a building or a flat and also with the concept of a heart inside a stylised house. Therefore, the signs are conceptually similar to a low degree with regard to these earlier rights.
In relation to EUTM No 11 678 935, , it will be associated with the concept of a natural environment that the dominant element, ‘HABITAT’, conveys. However, the contested sign will be associated with the concepts mentioned above. Therefore, as these signs will be associated with dissimilar meanings, they are conceptually dissimilar.
The visual, aural and, where applicable, conceptual differences are so overwhelming that the signs to merely coincide in irrelevant aspects; therefore, they are dissimilar overall.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in relation to all of the earlier rights invoked.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Octavio MONGE GONZALVO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.