OPPOSITION No B 2 621 822

Philippe Starck, 22 rua Tenente Valadim, 2750-502 Cascais, Portugal (opponent), represented by Distinctive IP Benelux Sarl, 2, Domaine Brameschhof, 8290 Kehlen, Luxembourg (professional representative)

a g a i n s t

Spark Beheer B.V., Benjamin Franklinstraat 515, 3029 AC Rotterdam, The Netherlands (holder), represented by Considine B.V., Corkstraat 46, 3047 AC Rotterdam, The Netherlands (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 621 822 is upheld for all the contested services.

2.        International registration No 1 247 673 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the services of international registration designating the European Union No 1 247 673. The opposition is based on European Union trade mark registration No 9 891 631. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

In its observations of 14/09/2016, the holder states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was used.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the holder’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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 services

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

Class 42:

Product design and development; design and creation of furniture, furnishing objects and items; graphic arts designing; design of interior decor; engineering drawing; styling (industrial design); architecture; architectural consultation; construction drafting.

The contested services are the following:

Class 42:

Graphic design services, including graphic design services in the areas of corporate identity, packaging, logos and lettering for communicative and/or promotional purposes; industrial design; product design, technical design, innovation and product development services; design and development of computer software, including computer software interfaces.

An interpretation of the wording of the list of services is required to determine their scope of protection.

The term ‘including’, used in the holder’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested graphic design services, including graphic design services in the areas of corporate identity, packaging, logos and lettering for communicative and/or promotional purposes include, as a broader category, or overlap with, the opponent’s graphic arts designing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested industrial design includes, as a broader category, the opponent’s styling (industrial design). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Computer software is the main object/item designed by companies in the software development and design industry. It is therefore the target product to be designed and developed before being marketed, launched and reaching its target customers. Therefore, the contested product design, technical design, innovation and product development services; design and development of computer software, including computer software interfaces are included in the broad category of the opponent’s product design and development. 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 services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered high due to the price, sophistication and specialised nature of the purchased services, as well as their importance for business income. Target companies choosing, for instance, product design and development services from third parties are very aware that a wrong decision in this area could jeopardise their future and growth.

3. The signs

Starck
Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is the word mark ‘Starck’.

The contested sign is the figurative mark ‘Spark’, written in black title case letters in a standard font.

The elements ‘Spark’ and ‘Starck’ are not meaningful in those countries where English and German are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English- and non-German-speaking parts of the public such as the French-, Italian- and Spanish-speaking parts of the public.

Neither the element ‘Starck’ of the earlier mark nor ‘Spark’ of the contested sign has any meaning for the relevant public, thus making them distinctive.

Visually, the signs coincide in the letters ‘S*AR*K’ and, aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, they coincide in their sounds. They differ only in their second letters, the sounds ‘T’ in the earlier mark and ‘P’ in the contested sign and in the fact that the earlier mark ends with the letters ‘CK’ and the contested one ‘K’. However, this difference is not aurally appreciable for most parts of the relevant public. All in all, visually, the signs’ length differs only in one letter; furthermore, they both begin and end with the same letters and have the same single vowel, ‘A’, and their structures are very similar. Aurally, their rhythm and intonation is identical when pronounced, and the only perceptible difference remains in the sounds of the letters ‘P’ versus ‘T’.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The services are identical. The earlier mark has at least a normal degree of distinctiveness and the degree of attention of the relevant public will be high, considering the nature of the relevant services.

Account is 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) and 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).

Considering all of the above, due to the high degree of visual and aural similarity, and in spite of the minor differences in the letters, there is a likelihood of confusion because the visual and aural coincidences are overwhelming and, furthermore, there are no other additional differing elements between the signs that could safely outweigh their similarities.

In its observations, the holder argues that it owns one registration with the word ‘Spark’ in the Benelux register, which has coexisted with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the holder must be rejected as unfounded.

The holder also claims that it has been successfully using its ‘Spark’ brand on the market for the relevant services in Class 42 since 2002. However, the right to a EUTM or international registration designating the EU begins on the date when the application is filed (or on the date of its designation for the EU, in the case of an international registration) and not before, and the EUTM or international registration designating the EU has to be examined from that date onwards with regard to opposition proceedings.

Therefore, when considering whether or not the international registration designating the EU falls under any of the relative grounds for refusal, any events or facts which occurred before the date of the designation of the EU are irrelevant because the rights of the opponent, insofar as they predate the designation of the EU, are earlier than the holder’s international registration designating the EU. Accordingly, the holder’s contentions in this regard are dismissed.

The holder also argues that the nature of the business of the two parties is substantially different. However, what is relevant with regard to opposition proceedings is the goods and services for which the earlier right is registered and for which registration is sought. In the present case, these are identical, as can be seen in section a). Under these circumstances, it is necessary to reject this claim of the holder as irrelevant.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English and non-German-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union 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 European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 holder 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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.