OPPOSITION No B 2 752 668

Keuco GmbH & Co. KG, Oesestr. 36, 58675 Hemer, Germany (opponent),  represented by Patentanwälte Dörner & Kötter Partg Mbb, Körnerstr. 27, 58095 Hagen, Germany (professional representative)

a g a i n s t

France New Resplendence Inte Home Furnishing Industry Limited, Room 5,7/F Ho King Commercial Centre, 2-16 Fa Yuen Street, Mongkok, Kowloon, The Hong Kong Administrative Region of the People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).

On 08/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 668 is partially upheld, namely for the following contested goods:

Class 20: Furniture; Furniture fittings, not of metal; Bamboo curtains.

2.        European Union trade mark application No 15 438 971 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 15 438 971, namely against all the goods in Class 20. The opposition is based on, inter alia, European Union trade mark registration No 2 207 439. 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 European Union trade mark registration No 2 207 439.

1. The goods

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

Class 6:         Common metals and their alloys, cables and wires of common metal (not for electrical purposes), ironmongery and small items of metal hardware, metal pipes, bathroom hooks of metal, other goods of metal (included in class 6).

Class 11:         Lighting apparatus, namely wall and mirror lights; sanitary fittings, accessories, bath tub handles.

Class 20:         Furniture, mirrors and picture frames, namely bathroom furniture, and seats, foot rests, footstools, mirrors, cabinets and mirrors for bath, shower and toilet; except mattresses and cushions; bathroom hooks of plastic; storage units, shelves for storage; curtain rods.

Class 21:         Household and kitchen containers (not of precious metal or coated therewith), namely containers for cloths of paper and cosmetics, soap and lotion dispensers; toilet brush fittings; holders for hand towels, bath towels, soaps, combs, glass and paper rolls; towel and soap baskets; soap holders; towel rings.

The contested goods are the following:

Class 20:         Furniture; Mattresses; Furniture fittings, not of metal; Bedding, except linen; Cushions; Pillows; Bolsters; Works of art of wood, wax, plaster or plastic; Bamboo curtains; Inflatable pillows.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested furniture includes, as a broader category the opponent’s furniture, mirrors and picture frames, namely bathroom 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.

Furniture fittings, not of metal are similar to the opponent’s furniture, mirrors and picture frames, namely bathroom furniture, and seats, cabinets. The goods coincide in purpose, manufacturers, and distribution channels. The goods are complementary and have the same consumers.

The contested bamboo curtains are similar to the opponent’s  curtain rods as they can coincide in end user and distribution channels. Furthermore they are complementary.

The remaining mattresses; bedding, except linen; Cushions; Pillows; Bolsters; Works of art of wood, wax, plaster or plastic; Inflatable pillows have a different nature, purpose and methods of use compared to all the goods of the opponent. The earlier goods in class 20 are specific bathroom furniture items that have no connection nor are complementary to these contested goods. They do not coincide in manufacturers. The goods are dissimilar.

2. The signs

ROYAL
Earlier trade mark	Contested sign

The earlier mark is a word mark. The contested sign is a figurative mark containing a single word depicted in common upper case typeface. Both marks contain the same word ROYAL. The visual differences of the contested mark, compared to the earlier mark are insignificant and not perceivable with a plain eye. The marks are identical on aural and conceptual levels.

The EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54). This is also applicable in the present case.

The signs are therefore considered to be identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical, and a part of the contested goods, namely furniture are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested goods, namely furniture fittings, not of metal; Bamboo curtains were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

The rest of the contested goods are dissimilar. As the 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.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 11 473 089 ‘ROYAL 60’, for

Class 6: Common metals and their alloys, cables and wires of common metal (not for electrical purposes), ironmongery and small items of metal hardware, metal pipes, bathroom hooks of metal, other goods of metal (included in class 6).

Class 11: Lighting apparatus, namely wall and mirror lights; Sanitary fittings, accessories, bath tub handles.

Class 20: Furniture, mirrors and picture frames, namely bathroom furniture, and seats, foot rests, footstools, mirrored cabinets and mirrors for baths, showers and toilets, washstands; Other than mattresses and cushions; Bathroom hooks of plastic; Storage units, shelves for storage; Curtain rods.

Class 21: Household and kitchen containers (not of precious metal or coated therewith), namely containers for cloths of paper and cosmetics, soap and lotion dispensers; Toilet brush fittings; Holders for hand towels, bath towels, soaps, combs, glass and paper rolls; Towel and soap baskets; Soap holders; Towel rings.

European Union trade mark registration No 11 342 425 ‘Royal-Match’ for :

Class 11: Apparatus for lighting and sanitary purposes, lights, sanitary furnishings, namely bath tubs, bath tubs for sitz baths, shower trays, wash basins, utility sinks, toilet bowls, bidets, urinals, spa baths, sauna bath installations; Water-conducting fittings, fittings, namely connecting, mixing and distributing fittings, couplings, taps and control fittings, wall mounts, siphons; Toilet seats, Toilet lids, Urinal covers; Apparatus for supplying water; Shower rods, Showers, Shower fittings and hoses for bathrooms and public baths, Flushing tanks; Fittings for washbasins, sinks, bath tubs and showers, manually or automatically controlled valves and mixing valves for sanitary water supply, and parts and fittings for all the aforesaid goods (included in class 11); Sanitary fixtures and fittings.

Class 20: Furniture, mirrors and picture frames, namely bathroom furniture, and seats, footrests, folding seats, backrests, footstools, mirrored cabinets and mirrors for the bath, shower and toilet; Bathroom hooks of plastic; Storage units, shelves for storage; Curtain rods; Bath tub handles, wall support handles, hinged support handles, shower and bath tub handrails of plastic; Door plates of plastic.

The other earlier rights invoked by the opponent are less similar to the contested mark.  This is because they contain additional words such as ‘-Match’ or ‘60’,  which are not present in the contested trade mark. Moreover, their scope of the goods is the same in principle, or narrower. There is also no similarity for a few additional goods, such as  Bath tub handles, wall support handles, hinged support handles, shower and bath tub handrails of plastic; Door plates of plastic in class 20 as they differ in nature, purpose and methods of use with all the goods already found dissimilar above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Birgit FILTENBORG

Erkki MÜNTER

Janja FELC

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.