OPPOSITION No B 2 599 903
Torres Espic, S.L., Pgno. Industrial Picasent, Calle n° 5, 46220 Picasent (Valencia), Spain (opponent), represented by Vicente Codoñer Molina, C/ Moratín, nº 11, Pta. 19, 46002 Valencia, Spain (professional representative)
a g a i n s t
Wwtorres Design Limited, Unit W 1/F Mau Lam Comm BLDG 16-?18 Mau Lam Street Jordan KL, Hong Kong, the Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Hortis Legal, Veraartlaan 8, 2288 GM Rijswijk ZH, the Netherlands (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 599 903 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 439 848, namely against all the goods in Classes 20 and 24. The opposition is based on, inter alia, European Union trade mark registration No 3 421 501 and Spanish trade mark registration No 2 814 581. 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 following earlier rights:
(1) European Union trade mark registration No 3 421 501 and
(2) Spanish trade mark registration No 2 814 581.
- The goods
The goods on which the opposition is based are the following:
(1) EUTM 3 421 501:
Class 20: Mattresses of all kinds including of metal; spring matresses, pillows and furniture.
Class 24: Bedclothes, cloths, covers and linings.
(2) ES 2 814 581:
Class 20: Mattresses of all kinds, spring mattresses, pillows and furniture.
The contested goods are the following:
Class 20: Furniture; stools; chairs; pouffes; bean bag chairs; cushions; furniture cushions; pillows; accent pillows; decorative pillows.
Class 24: Throws; blankets; blanket throws; furniture coverings; quilts; quilts of textile; bed covers; quilted blankets; covers for pillows; bed clothes; table covers; wall hangings.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods of earlier EUTM 3 421 501, 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 by analogy on the use of ‘in particular’ a reference in 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
Furniture is identically contained in all lists of goods.
The contested stools; chairs; pouffes; bean bag chairs are included in the broad category of the opponent’s furniture of both earlier marks. Therefore, they are identical.
The contested cushions; furniture cushions; pillows; accent pillows; decorative pillows are identical to the opponent’s pillows of both earlier marks, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.
Contested goods in Class 24
The contested throws; furniture coverings; covers for pillows; table covers are included in the broad category of the opponent’s covers of earlier EUTM 3 421 501. Therefore, they are identical.
The contested blankets; blanket throws; quilts; quilts of textile; bed covers; quilted blankets are included in the broad category of the opponent’s bedclothes of earlier EUTM 3 421 501. Therefore, they are identical.
The contested bed clothes are identically contained in the lists of goods of earlier EUTM 3 421 501.
The contested wall hangings are similar to the covers of earlier EUTM 3 421 501 since they serve a related purpose, namely that of home decoration. Furthermore, for example, wall hangings and table and bed covers are often chosen in a way to match each other. They may also be found in the same stores and it is even likely that they would be manufactured by the same undertaking.
As far as earlier Spanish trade mark 2 814 581 is concerned, the contested throws; blankets; blanket throws; furniture coverings; quilts; quilts of textile; bed covers; quilted blankets; covers for pillows; bed clothes; table covers in Class 24 are similar to furniture of this earlier mark. These goods are complementary as the use of the contested goods implies the use of those covered by the earlier trade mark. Furthermore, the goods covered by the contested sign and those covered by the earlier mark are directed at the same consumers, who use them mostly in conjunction and simultaneously. In addition, the goods under comparison are frequently sold through the same outlets or in the sections of the department store which are located close to each other. In those circumstances, the consumers may think that these goods have a common commercial origin.
However, the contested wall hangings are not closely enough related to the goods of earlier Spanish trade mark 2 814 581. They have a different nature and purpose, are neither in competition nor complementary. Moreover, they will not be manufactured by the same companies and will be found in different sections of a store. Therefore, they are dissimilar.
- 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 are directed at the public at large. The degree of attention may vary from average to higher than average as some of the relevant goods (e.g. furniture) are infrequent and for the most part expensive purchases, and the consumers usually buy them after a relatively long process of comparison and reflection.
- The signs
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Earlier trade marks |
Contested sign |
The relevant territory is the European Union in relation to earlier European Union trade mark No 3 421 501 and Spain in relation to earlier Spanish trade mark No 2 814 581.
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).
All signs are figurative.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The word ‘TORRES’, which appears visually separated from other elements in the earlier mark (1) means ‘towers’ in Spanish and Portuguese. At least part of the Italian public will understand that ‘TORRES’ refers to ‘a tower’ as it is very similar to the Italian ‘TORRE’ meaning ‘tower’ (the plural form being ‘torri’). It may also be perceived as a surname by a part of the public. For the other part of the public this word is meaningless. In either way, since it has no meaning in relation to the relevant goods, it is distinctive.
This word will be easily identified in the earlier Spanish mark (2) due to its blue letters and clear meaning in Spanish (‘towers’ or a surname).
The Spanish-speaking part of the public will understand the element ‘S.L.’ of the earlier mark (1) as referring to ‘sociedad limitada’ which is an indication of a specific type of company and its legal form and the consumers who understand this meaning will not attribute a trade mark value to it.
The word ‘POLIURETANOS’ of the earlier mark (2) is a plural form of the Spanish word ‘POLIURETANO’ (‘polyurethane’ in English) which concerns polymeric resins used in the form of flexible foam in home furnishings. Consequently, it is weak for the relevant goods.
The word ‘ESPIC’ of the earlier marks has no meaning in the relevant territories.
The figurative element of the earlier mark (1) is fanciful and without a clear meaning. The earlier mark (2) contains a representation of two rectangular blocks which form an undefined element.
The contested sign has been applied for as a figurative mark with a claim to the following colours: black, shades of pink and white. The figurative element of this sign is without a clear and unambiguous meaning. However, even assuming that a part of the public could conceive it as a representation of wool with its thread arranged into the stylised letters ‘WWT.’, this would still leave it as remaining no more than allusive.
Since an average consumer perceiving a word element is likely to break it down into elements that suggest a concrete meaning or resemble known words, a part of the relevant public that attributes a meaning to the word ‘TORRES’ may also identify this word in the contested sign.
The element of the contested sign which resembles the stylised letters ‘WWT’ followed by a dot has no clear and unambiguous meaning.
The English word ‘DESIGN’ of the contested sign makes reference, inter alia, to the arrangement or pattern of elements or features of an artistic or decorative work. This word may be understood in some other than English-speaking countries of the European Union where it has become of rather common use or where similar equivalents exist (e.g. diseño in Spanish, ‘disegno’ in Italian). It is considered to have a weak degree of distinctiveness, as it can be seen as an indication that the goods have been subject of professional design. Therefore, at least a part of the relevant public will pay less attention to this word than to the more distinctive elements of the contested sign.
The earlier mark (1) has no elements that could be considered clearly more dominant than other elements.
The word ‘POLIURETANOS’ of the earlier mark (2) and the words ‘WWTORRES Design’ of the contested sign are written in relatively small letters and, therefore, they are less eye-catching than the other elements, which dominate the signs.
The signs at issue coincide in the string of letters ‘TORRES’, which has a meaning for a part of the public. The case where the signs coincide in a distinctive meaningful word element represents the best case scenario for the opponent. Therefore, the Opposition Division will first examine the opposition in relation to the part of the public which identifies the word ‘TORRES’ in all signs as a meaningful term, such as the Spanish-speaking public.
Visually, the signs coincide in the word ‘TORRES’, which is distinctive and written in black in all the signs. However, the signs also contain other elements. The word ‘TORRES’ of the contested sign is secondary due to its size and position. Furthermore, it is integrated into the letters ‘WW’, forming the expression ‘WWTORRES Design’. Therefore, as far as the contested sign is concerned, the element ‘TORRES’, due to its small size and position, is noticeable only upon a closer examination of the sign. The figurative element of the contested sign together with the element ‘WWT.’ dominate the contested sign due to their central position and size. Therefore, when seeing the mark as a whole, the consumers will first notice these elements, and the remaining elements will be rather perceived as secondary. In addition, the earlier marks also contain other different elements, even though some of them are weak or non-distinctive and, in the case of the word ‘POLIURETANOS’ of the earlier mark (2), also secondary, they are perceptible. Furthermore, there are other distinctive, verbal and figurative elements, graphical representation of letters and colours which add to the differences.
In view of the above, the signs are visually similar only to a low degree.
Aurally, according to the Court ‘[a] mark which includes several words will generally be abbreviated orally to something easier to pronounce’ (30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370, § 75). In view of this and taking into account the smaller size and less prominent position of the words ‘WWTORRES Design’, of the contested sign, it is unlikely that they will be pronounced. Therefore, the earlier marks will most likely be pronounced as ‘TORRES ESPIC’ and the contested sign as ‘WWT’. In an unlikely event that the secondary elements of the contested sign and/or of the earlier marks are pronounced, the additional verbal elements that are before and/or after the word ‘TORRES’ reduce the similarity in the sound of this word. Furthermore, in the second scenario, due to the differences of the position of the word ‘TORRES’ and the presence of additional letters which would be pronounced first in the contested sign, the rhythm and intonation would be different.
Therefore, the signs are not aurally similar or are similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public under examination will most likely perceive the word ‘TORRES’, being the distinctive and meaningful element of the earlier marks. Less attention will be paid to the weak or non-distinctive elements, namely the word ‘POLIURETANOS’ of the earlier mark (2) and ‘S.L.’ of the earlier mark (1). Nevertheless, regardless of whether the public will see or not the concepts in other elements of the contested sign, since the figurative element together with the part resembling stylised letters ‘WWT.’ dominate the contested sign, the consumers will rather focus more attention on these elements.
Consequently, although there is a conceptual similarity in the word ‘TORRES’, this conceptual similarity is not very strong in view of the position, size, arrangement and/or meaning of other elements of the signs.
Therefore, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.
In the present case, each of the earlier trade marks 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 marks must be seen as normal despite the presence of some weak or non-distinctive elements as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The similarities between the signs concern the word ‘TORRES’ which is secondary and hardly perceptible within the overall impression given by the contested sign while the signs have other different distinctive elements. Although some of these additional elements are secondary or may be perceived as weak or non-distinctive, they are clearly perceptible and sufficient for the consumers to distinguish between the signs, even in relation to identical or similar goods.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public that does not understand or identify the element ‘TORRES’ in the signs. This is because, for this part of the public the signs are not conceptually linked. As a result, for this part of the public the similarities between the signs are even less pronounced.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on the following earlier trade marks:
Spanish trade mark registration No 2 353 367 for the figurative mark ‘’, and
Spanish trade mark registration No 2 353 368 for the figurative mark ‘,
These marks cover the goods which were found identical or similar to earlier European Union trade mark registration No 3 421 501 which has been compared. These marks are the same with the only difference in the colours of the figurative element and this could not change the outcome.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Katarzyna ZANIECKA | Justyna GBYL | Begoña URIARTE VALIENTE |
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.