MINERAL FEELINGS | Decision 2694605 - Polyflor Limited v. Thomas POLLET
Date Published: Oct 11, 2017
OPPOSITION No B 2 694 605
Polyflor Limited, Beechfield, Hollinhurst Road, Radcliffe, Manchester M26 1JN, United Kingdom (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)
a g a i n s t
Thomas Pollet, Route de Marchovelette 14, 5310 Eghezee, Belgium (applicant).
On 23/03/2017, the Opposition Division takes the following
1. Opposition No B 2 694 605 is upheld for all the contested goods, namely
Class 27: Floor coverings.
2. European Union trade mark application No 15 036 346 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 036 346, namely against some of the goods in Class 27. The opposition is based on European Union trade mark registration No 9 718 909. 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 goods
The goods on which the opposition is based are the following:
Class 27: Floor coverings for existing floors.
The contested goods are the following:
Class 27: Floor coverings.
The contested goods are any material used to cover the floor of a room, such as a carpet or tiles. As such, the contested floor coverings include, as a broader category, the opponent’s floor coverings for existing floors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 assumed to be identical are directed at the public at large and business customers with specific knowledge and expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. As regards interior decoration articles in particular, the average consumers do not buy these goods on a regular basis and purchasing them entails functional and aesthetic considerations that may require a certain level of reflection.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
Earlier trade mark
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘MINERAL’ is not meaningful for the relevant part of the public in Hungary, where non-basic terms in English language are generally not understood while the Hungarian equivalent term - ‘ásvány(i)’ - is very different from its English translation ‘mineral’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the public.
Both signs are word marks, so that none of the signs contain elements that are clearly more dominant (visually eye-catching) than other elements. Furthermore, the signs have no elements which could be considered clearly more distinctive than other elements.
Conceptually, neither of the two signs has a meaning for the Hungarian-speaking part of the relevant public. Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks at issue.
Visually and aurally, the signs coincide in the distinctive verbal component ‘MINERAL’ and in the identical first letter ‘F’ in their second verbal element. They differ in the appearance and pronunciation of their additional verbal element ‘_X’ in the earlier mark and ‘_EELING’ in the contested sign. Although these elements are distinctive, and therefore will have an impact on the consumers’ visual and aural perception of the marks, they do not alter the fact that the first verbal element ‘MINERAL’ has an independent distinctive character in both signs.
Furthermore, it must be taken into account that the common element ‘MINERAL’, as the first element of both signs, will catch the primary attention of the consumer when encountering the mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the fact that the first verbal element of the contested sign coincide with the first verbal element of the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.
Hence, the marks are visually and aurally similar to 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.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
As has been concluded above, the contested goods in Class 27 were found identical and are directed at the public at large whose level of attention is expected to vary from average to high, depending on the specific nature and price of the goods.
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).
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).
Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually and aurally to an average degree, without this impression being altered by any conceptual perception. In addition, taking into account that the goods at issue are interior decoration articles, the choice of the item will generally be made visually. Accordingly the visual similarity plays a greater role in the global assessment of the likelihood of confusion.
Although the marks differ in their second element, these second elements however coincide in their first letter ‘F’. In addition, it is common for the same manufacturer or provider to use sub-brands, that is to say, signs that derive from a principal mark and which share with it a common element, in order to distinguish its various lines from one another.
In light of all the foregoing considerations, also taking into account the principle of interdependence and the notion of imperfect recollection, the Opposition Division concludes that, even where the attention of the consumers will be high, the differences between the signs in question are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public, namely the Hungarian-speaking consumers, could believe, for instance, that the goods designated by the conflicting signs distinguish different product lines coming from the same or related undertakings.
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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 718 909. It follows that the contested trade mark must be rejected for all the contested goods.
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
VAN DEN EEDE
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.