OPPOSITION No B 2 709 692

Colchones Europa, S.L.U., Crta. de Valencia, S/N, 30510 Yecla, Spain  (opponent), represented by Mª Encina Rodriguez López, C/ Garcia Morato, n° 11, Entreplanta Izquierda, 03004 Alicante, Spain (professional representative)

a g a i n s t

Guangdong Huayi Plumbing Fittings Industry Co., Ltd., No.1, Baishitou Industrial Development Zone, Yueshan Town, Kaiping City, Guangdong, People’s Republic of China (applicant), represented by Albright IP Limited, County House Bayshill Road,  Cheltenham Gloucestershire GL50 3BA, United Kingdom (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 692 is upheld for all the contested goods, namely 

Class 20: Furniture; Washstands (furniture); Plastic boxes; Water-pipe valves of plastic; Mirrors (looking glasses); Bamboo furniture; Wooden furniture; Coathooks, not of metal; Pillows; Door fittings, not of metal.

2.        European Union trade mark application No 15 373 004 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 373 004, namely against all the goods in Class 20. The opposition is based on Spanish trade mark registration No 2 881 903. 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

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

Class 20: Furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. Specially mattresses, mattress bases and pillows.

The contested goods are the following:

Class 20: Furniture; washstands (furniture); plastic boxes; water-pipe valves of plastic; mirrors (looking glasses); bamboo furniture; wooden furniture; coathooks, not of metal; pillows; door fittings, not of metal.

The term ‘specially’ used in the opponent’s list of goods is usually interpreted by the Office as indicating that the specific goods listed after such expression are only examples of items included in a broader category and that protection is not restricted to them (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). However, in this specific case, the goods listed after the expression ‘specially’ do not reflect the natural meaning of the categories of goods that precede them and, therefore, they cannot be considered as being included in those categories. However, since the Office cannot restrict the scope of protection of a national registration, the earlier goods mattresses, mattress bases and pillows will be considered to fall into the scope of the earlier mark and will be compared to the contested goods.  

Furniture, mirrors (looking glasses) and pillows are equally contained in both lists of goods. Therefore, these goods are identical.

The contested washstands (furniture); bamboo furniture; wooden furniture are included in the broad category of the opponent’s furniture. Therefore, they are identical.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the wording ‘goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’ in Class 20 lacks the clarity and precision to specify the scope of protection that it gives, as it does not provide a clear indication of what goods are covered. Goods in Class 20 can, indeed, have different characteristics or different purposes and target different consumers, can be sold through different sales channels and therefore may relate to different market sectors.

The contested plastic boxes; water-pipe valves of plastic; coathooks, not of metal; door fittings, not of metal are mainly furniture and parts therefor which can be made of different materials.

When comparing these contested goods with the opponent’s goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, their nature can be considered the same and their purpose is also the same in the very broadest sense, that is, that they are used for furnishing purposes, and to that extent these goods are considered similar to a low degree. Nonetheless, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use are the same or that they have the same distribution channels.

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 found to be identical or similar to a low degree are directed at the public at large. The degree of attention is deemed to be average.

3. The signs

MULTISPRING
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 mark is a word mark ‘MULTISPRING’, which as a whole has no meaning for the relevant public. Nonetheless, it is likely that Spanish consumers will identify the prefix ‘MULTI-’, which is frequently used in Spanish as conveying the meaning of ‘much’ or ‘many’ (see Real Academia Española, Diccionario de la lengua española at http://dle.rae.es/?id=Q3njves). Therefore, it can be reasonably stated that the prefix ‘MULTI-’ will be perceived as a generic component of the mark (see by analogy 01/03/2016, T‑538/14, Multiprop, ECLI:EU:T:2016:117; 02/12/2015, T 529/14, Multi Win, EU:T:2015:919, § 29; 01/03/2016, T 538/14, Multiprop, EU:T:2016:117, § 38, 44; decision of 09/06/2016, R 1155/2015-5, ‘Multi’, § 16) and, consequently, its impact in the present analysis will be limited.

On the other hand, since the element ‘SPRING’, contained in both signs, has no meaning for the relevant public, it is considered to be the most distinctive element of the sign.

The contested sign is a figurative mark that includes the word ‘SPRING’ in title case slightly stylised black letters. Above the letter ‘I’ the device of leaf displayed in a relatively small size appears. It should be noted that, 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). As a consequence, the mentioned figurative device has less impact than the verbal portion of the contested sign. Moreover, the small dimension of said graphic device contributes further diminishes the impact on the present comparison.

Visually, the signs coincide in the string of letters ‘SPRING’, which constitutes the most distinctive element of the earlier mark and the only verbal element of the contested sign. They only differ in elements of secondary importance, namely the depiction of a leaf of the contested sign and the descriptive prefix ‘MULTI-’ of the earlier mark. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SPRING’, present identically in both signs and only differs in the sound of the less relevant element ‘MULTI’. Therefore, the signs are highly similar.

Conceptually, the string of letters contained in both marks ‘SPRING’ does not evoke any concept to the Spanish public. The marks are conceptually not similar, since the relevant public will perceive ‘MULTI-’ as referring to ‘much’ or ‘many’, the latter having, however, a limited impact on the present comparison, due to its inability to function as an indication of origin.

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, 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.

5. Global assessment, other arguments and conclusion

The contested goods are party identical and partly similar to a low degree to the opponent’s goods. The degree of attention of the relevant public (i.e. the public at large) and the distinctiveness of the earlier mark are average.

The signs are aurally and visually highly similar, since they both contain the word ‘SPRING’, which is the most distinctive component of the earlier mark and the only verbal element of the contested sign. The marks differ only in the additional figurative element of the contested sign and in the prefix ‘MULTI-’ of the earlier mark, the latter constituting the sole conceptual dissimilarity observed. Nonetheless, said differences have a secondary importance for the reasons seen above and are not sufficient to overcome the striking similarities between the signs, thus not excluding a likelihood of confusion on the public.

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).

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. Indeed, it cannot be excluded that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above and bearing in mind that the differences between the signs are confined to secondary elements or aspects, there is a likelihood of confusion on the relevant public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 881 903.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. This conclusion also stands for the contested goods found to be similar to a low degree. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, it is considered that the similarity between the signs is sufficient to lead to a likelihood of confusion even in relation to the goods that have only a low degree of similarity.

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

Pierluigi M. VILLANI

Orsola LAMBERTI

Francesca CANGERI SERRANO

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.