OPPOSITION No B 2 807 488

Verseidag-Indutex Gesellschaft mit beschränkter Haftung, Industriestraße 56, 47803 Krefeld, Germany (opponent), represented by Patentanwälte Dr. Stark & Partner MBB, Moerser Str. 140, 47803 Krefeld, Germany (professional representative)

a g a i n s t

Sunconfex BVBA, Dehemlaan 27, 8900 Ieper, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative)

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 807 488 is upheld for all the contested goods.

2.        European Union trade mark application No 15 700 115 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 700 115 . The opposition is based on German trade mark registration No 30 212 002 185 ‘SUNPROTEX’ (word mark).

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 (as far as included in this class) 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; interior venetian blinds; interior blinds for windows and doors (furniture). 

Class 22: Ropes, strings, nets, tents, tarpaulins, sails, sacks and bags; awnings of plastic, awnings of textile material (as far as included in this class), padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. 

Class 24: Textiles and textile goods, as far as included in this class, in particular fabrics for sun protection, curtains, blinds, vertical blinds, pleated blinds in the form of fabrics with folded structure; bed covers and table covers.

The contested goods are the following:

Class 20: Indoor window blinds [shades] [furniture]; interior blinds for windows; holders for use in securing blinds; indoor screens in the form of blinds; slatted indoor blinds.

Class 22: Outdoor blinds of textile.

Class 24: Blinds of textiles; textiles for protection from the sun; roll up blinds of textile.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 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 20

The contested Indoor window blinds [shades] [furniture]; interior blinds for windows are identical to the opponent´s interior blinds for windows, since the same goods are included in both lists by using identical wording or synonyms.

The contested indoor screens in the form of blinds; slatted indoor blinds cover, as broad categories, the opponent´s interior blinds for windows and doors (furniture).Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested holders for use in securing blinds consist of fittings for indoor blinds that are frequently made of plastic, and their purpose is to hold blinds or to keep them in a certain position. These goods are similar to the opponent´s interior blinds for windows and doors (furniture), since they are complementary, are likely to come from the same kinds of undertakings and are directed at the same consumers.

Contested goods in Class 22 Outdoor blinds of textile are covered by the opponent´s broader category of awnings of textile material (as far as included in this class), and these goods are therefore identical.

Contested goods in Class 24 Blinds of textiles are identical to the opponent´s textile goods, as far as included in this class, in particular blinds, since the same goods are referred to by using synonymous expressions.

The contested textiles for protection from the sun are identical to the opponent´s Textiles, as far as included in this class, in particular fabrics for sun protection, since the same goods are referred to by using synonymous expressions.

Lastly, the contested roll up blinds of textile are covered by the opponent´s broader category of textile goods, as far as included in this class, in particular blinds, and these goods are therefore 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 goods found to be identical and similar are directed at both, the public at large and professionals. The degree of attention paid by consumers during their purchase is deemed to be average.

3. The signs

SUNPROTEX
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 formed by one single verbal element ‘SUNPROTEX’. Even though some consumers may perceive the earlier mark as an invented meaningless term, a substantial part of consumers in the relevant territory will perceive it as formed by three linked but independent elements namely ‘SUN’, ‘PRO’ and ‘TEX’, all of them with a concept (see description of concepts below).

In order to focus on the best-case scenario for the opponent (i.e. in which likelihood of confusion is more likely to occur), and for reasons of procedural economy, the Opposition Division will proceed by focusing the analysis and comparison below on the part of the public perceiving the earlier mark as formed by three linked elements, with independent meanings, namely ‘SUN’, ‘PRO’ and ‘TEX’.

This part of the public will attribute them a meaning, either because they constitute basic-English words deemed to be understood by German consumers, or because they are nowadays adopted as part of the German language, despite their possible foreign origin (i.e. English). The element ‘SUN’ is understood as a basic-English word, used to refer to the star that is the central body of the solar system. The element ‘PRO’ is widely known and used by the relevant public as the abbreviation for the English word ‘professional’, used to indicate that something is for professional use or meets certain quality standards. The element ‘TEX’ is widely known and used by the relevant public as the abbreviation for the English word ‘textile’ (i.e. ‘Textil-’ in German), used to indicate that something is made of that material.

These same elements are contained in the contested sign, positioned separately, and the same concepts will be attributed to them.

Regarding the distinctiveness of the elements forming the marks, the earlier mark is formed by elements that are at least allusive of the characteristics of the goods involved, namely that they are used to protect against sun (‘SUN’), for professional use or directed at professionals, or with high quality (‘PRO’), and made of textile (‘TEX’). Therefore, these elements are all of lower than average distinctive character. Since they form the totality of the earlier mark, this sign has no elements more distinctive than others.

The figurative element in the contested mark consists of a stylised representation of an eye. However, its orange colours, together with the eyelashes forming a circle around the eye, and the fact that they are accompanied by the term ‘SUN’, give the impression, as a whole, of evoking a sun. This element is of lower than average distinctive character in relation to the goods involved for the part of the public perceiving it as evoking the sun, for the same reasons explained above in relation to the concept and distinctiveness of the term ‘SUN’. For these consumers, the contested mark has no elements more distinctive than others. For consumers perceiving the figurative element of the contested mark only as an eye, it is distinctive for the goods in question, and the contested mark is formed by the less distinctive verbal elements, and the most distinctive eye depiction.

However, even if the verbal elements of the contested sign are of lower distinctive character than the figurative element accompanying them, it must 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).

In this case, consumers will focus their attention on the verbal elements of the contested sign since they are, despite their lower than average degree of distinctive character, capable of identifying the commercial origin of the goods, and are the only elements readable and pronounceable in the mark.

Visually, the signs coincide in their verbal components.

They differ in the way the common elements are positioned, i.e. as one word in the earlier mark and in three different lines in the contested mark, and in the figurative element of the contested mark.

For all of the above, it is considered that the marks are visually similar to an average degree.

Aurally, even if the verbal part of the contested mark is positioned in three different lines, it is highly unlikely that this would lead to a perceptible aural division between them when pronouncing the mark.

The signs are aurally identical, since they are both referred to aurally by pronouncing the same sequence of letters ‘s-u-n-p-r-o-t-e-x’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs are perceived as referring to the concepts of the ‘sun’, ‘professional’ and ‘textile’, and differ in the concept of the eye (and of the sun, if also perceived) in the figurative element of the contested mark.

According to the above, the signs are perceived as conceptually similar to at least an average degree.

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 is perceived as formed by three elements considered to be of lower than average distinctive character in relation to said goods (See section c) above).

However, considering that the earlier mark is registered, there is a presumption of validity meaning that the mark has at least a minimum degree of inherent distinctiveness. This follows the judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41.

5. Global assessment, other arguments and conclusion

The goods involved have been considered to be partly identical and partly similar.

The signs are visually and conceptually similar to an average degree and aurally identical.

The signs coincide fully in the only verbal elements contained in them. Even if these elements are of a lower distinctive character, the only difference produced by the figurative element is not sufficient to truly distinguish the marks.

The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting goods found to be identical or similar come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity and similarity of the goods involved, are clearly enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.

It must be noted that it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image. In the present case, although the public in the relevant territory might detect certain visual and conceptual differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a variation of the earlier mark, configured in a different way, in order to create a new version of it. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2012 002 185. It follows that the contested trade mark must be rejected for all the contested 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.

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

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.