OPPOSITION No B 2 237 744

CRH France Distribution (société par actions simplifiée), 86/90 rue du Dôme, 92100 Boulogne Billancourt, France (opponent), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Bonari Sp. z o.o., ul. Zwycięzców 42/53, 03-938 Warszawa, Poland (applicant), represented by JWP Rzecznicy Patentowi Dorota Rzążewska SP. J., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative).

On 04/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 237 744 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 618 717 of the figurative mark . The opposition is based on European Union trade mark registration No 7 361 025 of the word mark ‘RABONI’ and European Union trade mark registration No 9 805 078 of the figurative 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.

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 opponent’s European Union trade mark registration No 7 361 025.

1. The goods and services

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

Class 35: Advertising; sales promotion (for others), services relating to the retail sale of metal building materials, transportable buildings of metal, ironmongery, non-electric, small items of metal hardware, electric controls for doors, windows, roller shutters and blinds, electric locks, building materials (non-metallic), non-metallic transportable buildings, furniture, mirrors, frameworks (except those used in building).

The contested goods and services are the following:

Class 6: Aluminium, fittings of metal for doors, runners of metal for sliding doors, handles and knobs of metal, framework of metal, folding, hinged and sliding doors of metal, transportable buildings of metal, door fittings of metal, fittings of metal for furniture, outdoor blinds of metal, window pulleys, ceilings of metal, profiles and angle irons of metal.

Class 19: Partitions, not of metal, door panels, not of metal, building glass, folding, hinged and sliding doors, not of metal, door frames, not of metal, profiles and angle irons, not of metal.

Class 20: Furniture, including office furniture, kitchen furniture, school furniture, desks, dinner wagons, chests of drawers, cabinet work, built-in wardrobes, wardrobes, bookcases, interior furnishings, doors for furniture, furniture shelves, furniture fittings, not of metal, trolleys (furniture), furniture mirrors; Door fittings, not of metal.

Class 35: Business management consultancy in the field of interior construction, demonstration of goods for commercial or advertising purposes, market research in the field of interior construction, advertising, assistance, consultancy and intermediation in the conclusion of commercial transactions, retail and wholesale of sliding doors and elements therefor, retail and wholesale via the Internet of sliding doors and components therefor.

Class 42: Industrial design, research and development, furniture design, interior design.

Some of the contested services are identical to services on which the opposition is based. For example the contested retail of sliding doors is identical to the opponent’s services relating to the retail sale of metal building materials insofar as the former doors are made of metal. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are mainly targeting professionals working in the field of construction or interior decorating but to some extent also target the general public, such as do-it-yourselfers or people looking for furniture. In any case, whether the public is a professional one or not, their degree of attention may vary from average to high depending on the price, (specialised) nature, or terms and conditions of the purchased or contracted goods and services. For example, where the consumer is likely to pay an average degree attention when buying fittings of metal for doors of Class 6, he/she may be highly attentive when acquiring the market research in the field of interior construction of Class 35.

3. The signs

RABONI
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).

Visually, both signs are composed of six letters. In this respect it must be noted that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The marks share the same six letters, but solely the letter ‘I’ shares the same position at the end of the words. Although the marks also share the letter sequence ‘BON’, this is placed at the beginning of the contested mark, while placed in the secondary part of the earlier sign. This means that the beginnings of the signs are markedly different, which is an important differentiating factor considering that the beginning of a trade mark will, in general, have a greater impact in the process of recognising and remembering the trade mark.

The opponent argues that the contested sign is an anagram of the earlier mark. However, even consumers with an increased level of attention are not intentionally and carefully seeking out letters in the composition of signs and are keen of solving anagrams and other kind of puzzles, when confronted with a trademark. Assuming the contrary does not reflect the market reality and the cognitive process of perception. The consumer perceives a mark as a whole without expending a huge amount of intellectual energy and imagination. Having in mind the above considerations, it is concluded that from an overall visual perspective the conflicting signs are dissimilar.

Aurally, it is true, as pointed out by the opponent that both signs are composed of three syllables, namely RA‑BO‑NI and BO‑NA‑RI. However, the Opposition Division shares the applicant’s view that the overall sonority of these words is rather different than similar. The fact that one of these syllables is the same has very little impact aurally, being only one out of three syllables and having a different order of appearance within the marks. Especially, this different location of the only shared syllable has a significant effect on their overall impression, since it affects the marks’ more noticeable beginnings, starting with ‘RA’ in the earlier mark and ‘BO’ in the contested sign. Moreover, all other letters, apart from the final ‘I’ have different positions. In view of all that, also taking into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), any audible similarity resulting from the identical last letter and the repetition of the syllable ‘BO’ must be considered low.

Conceptually, as agreed by both parties, neither of the words have any meaning in the languages of the relevant territories. Both would be seen as invented words, therefore, the visual and phonetic impressions of the marks at issue will not be affected by any conceptual associations.

Given the above considerations, it must be concluded that the signs at issue, taken as a whole, are merely lowly similar from a phonetic perspective.

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 services 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 risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors that must be taken into account. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29.09.1998, C-39/97, Canon, EU:C:1998:442, § 17; 22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

For reasons explained above, the marks are visually dissimilar and aurally similar to a low degree which will not be affected by any conceptual associations. Even though the marks may consist of the same letters, some of which appear in the same sequence, their different location within the marks result in considerable differences between the signs as regards their appearance and aural pattern.

Considering that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details and in general pays more attention to the beginning of marks, any audible similarity resulting from the identical last letter and the repetition of the syllable ‘BO’ is unlikely to make the consumers believe that the goods originate from the same undertaking or from economically-linked undertakings.

Therefore, taking all of the above into consideration, and bearing in mind, in particular, that consumer will not engage in a cryptic analysis of the contested sign as if solving an anagram, the overall impression given by the signs is sufficiently different for consumers to safely distinguish between the signs and, consequently, there is no likelihood of confusion on the part of the public. Having regard to the differences between the conflicting marks, this assessment is not invalidated by the fact that the contested services were assumed to be identical. This finding applies a fortiori in as far as the public displays a higher level of attention in relation to some of the goods and services. Therefore, the opposition must be rejected.

The opponent has also based its opposition on European Union trade mark registration No 9 805 078 of the figurative mark which is based on the same services as the earlier mark examined above. This other earlier right invoked by the opponent is less similar to the contested mark because the word ‘RABONI’ is depicted in a white fanciful typeface and contains further figurative and word elements which are not present in the contested trade mark. The mere fact that the contested sign and this earlier mark share the colour red cannot render the marks similar since the public 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) and, moreover, no enhanced distinctiveness was claimed for this mark.

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

Anna.BAKALARZ

Adriana VAN ROODEN

Benoit VLÉMINCQ

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.