OPPOSITION No B 2 390 105

KIKA Möbel – Handelsgesellschaft m.b.H., Anton-Scheiblin-Gasse 1, 3100 St. Pölten, Austria (opponent), represented by Sonn & Partner Patentanwälte, Riemergasse 14, 1010 Vienna, Austria (professional representative)

a g a i n s t

Vivere Ltd., 6876 Paisley Road, Guelph N1H 6J4, Canada (applicant), represented by Beck Greener, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative)

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 390 105 is partially upheld, namely for the following contested goods and services:

Class 20: Beach chairs, hammock chairs, chairs, porch swings, tree swings, hammock stands, non-metal hammock stand hardware, namely, springs and hooks, and pillows.

Class 22: Hammocks, tree straps for securing hammocks.

Class 35: Retail of outdoor living products, namely, hammocks, hammock chairs, hammock stands, lounge chairs, swings, swing covers and cushions; providing the aforementioned services on the Internet or World Wide Web or by mail order.

2.        European Union trade mark application No 12 699 351 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 699 351 . The opposition is based on international trade mark registration No 1 143 165  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.

1. The goods and services

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

Class 20: Furniture, mirrors (mirrors), picture frames; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, as far as not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

The contested goods and services are the following:

Class 20: Beach chairs, hammock chairs, chairs, porch swings, tree swings, hammock stands, non-metal hammock stand hardware, namely, springs and hooks, and pillows.

Class 22: Hammocks, tree straps for securing hammocks.

Class 35: Retail of outdoor living products, namely, hammocks, hammock chairs, hammock stands, tree straps for hammocks and hammock hardware, lounge chairs, umbrellas, swings, swing covers and cushions; providing the aforementioned services on the Internet or World Wide Web or by mail order.

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

The term ‘namely’, used in the applicant’s list of goods and services 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 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 beach chairs, hammock chairs, chairs, porch swings, tree swings, hammock stands, fall under the general term of the opponent’s furniture. These goods are identical.

The contested non-metal hammock stand hardware, namely, springs and hooks, and pillows are similar to the opponent’s furniture, in particular, to furniture in form of hammock stands. The relevant public may expect these parts and fittings to be produced by, or under the control of, the same manufacturer. Furthermore, the goods target the same end users and can share distribution channels. In addition, they may be complementary.

Contested goods in Class 22

The contested hammocks are similar to the opponent’s furniture in Class 20. They can coincide in purpose, consumers, manufacturers, distribution channels.

The contested tree straps for securing hammocks are similar to a low degree to the opponent’s furniture in Class 20. They are accessories to hammocks and can coincide in purpose, consumers, manufacturers, distribution channels with the opponent’s furniture.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail of outdoor living products, namely, hammocks, hammock chairs, hammock stands, lounge chairs, swings, providing the aforementioned services on the Internet or World Wide Web or by mail order are similar to a low degree to the opponent’s furniture in Class 20.

Therefore, the contested retail of outdoor living products, namely, swing covers and cushions; providing the aforementioned services on the Internet or World Wide Web or by mail order are similar to a low degree to the opponent’s textiles and textile goods in Class 24.

Retail of outdoor living products, namely, tree straps for hammocks and hammock hardware, umbrellas; providing the aforementioned services on the Internet or World Wide Web or by mail order and the opponent’s goods in Classes 20, 24 and 27 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not 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 and services found to be identical or similar are directed at the public at large. The degree of attention varies from average to high.

3. The signs

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 verbal elements are not meaningful in certain territories, for example, in those countries where French or Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German- and English-speaking part of the public.

The earlier sign is a figurative mark composed of the word ‘vivre’ in white, lower case letters in a grey background. The latter is a commonly used graphic element which is devoid of distinctiveness. The verbal element is distinctive. The earlier sign has no element which could be considered more dominant than other ones.

The contested sign is a figurative mark composed of the word ‘VIVERE’ in black upper case letters below a curved figurative element in green and blue colours. The figurative element can be seen either as a graphical representation of a hammock, so that it would have a weak distinctive character for part of the goods and services, or as a decorative element of normal distinctiveness. The contested sign has no element which could be considered more dominant than other ones.

Visually, the signs coincide in the letters ‘VIV*RE’, which are placed in the same order and are distinctive. The contested mark contains just an additional letter ‘E’ in the fourth position. Furthermore, the signs differ in typeface, colours (white and grey vs. black, green and blue) and figurative elements (square background vs. curved lines). In any case, the square background, typefaces and colours are commonplace or weak; as well as the figurative element of the contested sign for some goods and services, when perceived as a hammock. Overall, the signs are graphically highly similar.

On the phonetic level, the figurative elements are irrelevant. Irrespective of the different pronunciation rules in different parts of the relevant territory/in German and in English, the pronunciation of the signs coincides in the first syllable and the ending of the last one. Five of the six letters of the contested sign are also contained in the earlier mark in the same order. The contested mark simply has one more vowel in-between, which means it has three syllables instead the two of the earlier mark. Overall, the signs are aurally similar at least to an average degree.

Conceptually, neither of the signs has a meaning for the English- and German-speaking public. 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.

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, despite the presence of the non-distinctive figurative element of the grey background in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services of the opposing signs are partly identical, partly similar (to various degrees) and partly dissimilar. The distinctiveness of the earlier mark is normal. The level of attention of the relevant public varies from average to high.

The signs are visually highly similar and phonetically similar to at least to an average degree. Five of the six letters of the contested sign are contained in the earlier mark in the same order. The verbal elements, which are highly similar, are distinctive in German and English. Most of the differentiating elements (square background in earlier sign, typeface and colours) are commonly used figurative elements, to which the public will not pay any attention. The figurative element of the contested sign might be perceived as a hammock and would then be weak for part of the goods. Even if it is seen just as a decorative figurative element and hence distinctive, it is not sufficient to safely tell the signs apart due to the closeness of the verbal elements. As regards the additional letter ‘E’ of the contested sign, it is placed in the centre and is on its own also not sufficient to overcome the similarities of the signs, even though it slightly changes the pronunciation.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German- and English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 143 165 designating the European Union. 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 goods and services found to be identical or similar to those of the earlier trade mark. Following the interdependence principle, where a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, the opposition is also successful against the goods and services which are similar to a low degree as the signs are sufficiently close.

The rest of the contested services are dissimilar. As 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 services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

Julia SCHRADER

Swetlana BRAUN

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.