OPPOSITION No B 2 364 449

Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Napco Beds B.V., Transportstraat 11, 6681 LP Bemmel, The Netherlands (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 364 449 is upheld for all the contested goods and services.

2. European Union trade mark application No 12 407 805 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 407 805. The opposition is based on, inter alia, European Union trade mark registrations No 15 594 and No 1 620 434. The opponent invoked Article 8(1)(b) and 8(5) and Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant states in its observations of 09/07/2015 that the opposition should be rejected because ‘in the evidence we did not see any use of the trade marks […]. As no evidence has been filed for the products in the classes 20 and 24 the opposition has to be rejected.’

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected. In general, the request for proof of use must be expressed in positive wording. As use or non-use can be an issue in manifold constellations (for example, to invoke or deny a higher degree of distinctiveness of the earlier mark), mere observations or remarks by the applicant in respect of the (lack of) use of the opponent’s mark are not sufficiently explicit and do not constitute a valid request for proof of genuine use (judgment of 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

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 registrations No 15 594 and No 1 620 434.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

European Union trade mark registration No 15 594

Class 20: Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding; parts and fittings for all the aforesaid goods.

Class 24: Textiles; plastic material as a substitute for fabric; bed and table covers; bed linen; table linen; household linen; wall hangings; blankets; quilts; duvets and duvet covers; sheets; pillow cases; bed valances; bed-covers; table cloths; table mats; napkins; linen fabrics; fabric wall coverings; curtains; curtain tie-backs; cushion covers; pelmets; blinds; covers for chairs and sofas; towels and face cloths.

European Union trade mark registration No 1 620 434

Class 35: Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

The contested goods and services are the following:

Class 20: Furniture; Bedroom furniture, including beds, box springs, mattresses and pillows; Parts for the aforesaid goods, not included in other classes.

Class 24: Bed linen, including quilts, fitted sheets, flannel undersheets, mattress covers, blankets, sheets (textile), bedspreads and duvets; Textile an textile goods, not included in other classes.

Class 35: Advertising; Business management; Business administration; Office functions; Dissemination of advertising and promotional materials, including via the Internet, in the field of furniture, bedroom furniture, including beds, box springs, mattresses and pillows, parts for the aforesaid goods, bed linen, including quilts, fitted sheets, flannel undersheets, mattress covers, blankets, sheets (textile), bedspreads and duvets, textiles and textile goods (not included in other classes); Business mediation in the purchase, sale, import and export of furniture; Providing business and economic information relating to furniture, including information relating to prices, availability, delivery time, performance and alternatives; Information, consultancy and advice relating to the aforesaid services, whether or not via the Internet.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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 furniture is identically contained in both lists of goods and services.

The contested bedroom furniture, including beds, box springs, mattresses and pillows; parts and fittings for all the aforesaid goods and furniture include, as a broader category or overlap with, the opponent’s beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding; parts and fittings for all the aforesaid goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 24

The contested bed linen, including quilts, fitted sheets, flannel undersheets, mattress covers, blankets, sheets (textile), bedspreads and duvets; textiles are identically contained in both lists of goods and services (including synonyms).

The contested textiles goods, not included in other classes include, as a broader category, the opponent’s bed linen. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested business management; information, consultancy and advice relating to the aforesaid services, whether or not via the Internet include, as a broader category, the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business mediation in the purchase, sale, import and export of furniture; Information, consultancy and advice relating to the aforesaid services, whether or not via the Internet are included in the broad category of the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods. Therefore, they are identical.

The contested providing business and economic information relating to furniture, including information relating to prices, availability, delivery time, performance and alternatives; Information, consultancy and advice relating to the aforesaid services, whether or not via the Internet are included in the broad category of the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods. Therefore, they are identical.

The contested business administration; Information, consultancy and advice relating to the aforesaid services, whether or not via the Internet are similar to the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods as they have the same purpose. They can coincide in providers and end users.

The contested advertising; dissemination of advertising and promotional materials, including via the Internet, in the field of furniture, bedroom furniture, including beds, box springs, mattresses and pillows, parts for the aforesaid goods, bed linen, including quilts, fitted sheets, flannel undersheets, mattress covers, blankets, sheets (textile), bedspreads and duvets, textiles and textile goods (not included in other classes); Information, consultancy and advice relating to the aforesaid services, whether or not via the Internet are similar to a low degree to the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods as they have the same purpose. They can coincide in providers and end users.

The contested office functions are similar to a low degree to the opponent’s business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods as they can coincide in providers and end users

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 and similar to different degrees are directed at the public at large and a professional public with an average degree of attention.

3. The signs

NEXT	NXTDAY
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

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 marks are word marks and consist of the word element ‘NEXT’. The contested sign is a word mark for ‘NXTDAY’.

The compared signs have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in three out of four letters of the earlier sign, namely the letters ‘N*XT’. The signs differ in the letter ‘E’ of the earlier mark and ‘DAY’ of the contested sign.

The first letter ‘N’ and the letters ‘XT’, which are the first three letters of the contested sign and three out of four letters of the first letters of the earlier marks, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade 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.

Therefore, the signs are similar to an average degree.

Aurally, part of the public will not recognise the word ‘next’ in the contested sign. Although that part will only pronounce the letters ‘NXT’ as letters, the pronunciation of the signs coincides somehow in the sound of the letters ‛N*XT’, present identically in the earlier signs. The signs differ in the sound of the letter ‘E’ of the earlier marks and ‘DAY’ of the contested sign. However, a significant part of the public will recognise the word ‘next’ in the contested sign. For that part of the public the signs coincide in the entire earlier marks.

Therefore, the signs are at least similar to an average degree. For that part of the public who recognises the word ‘next’ in the contested sign the signs are aurally similar to a high degree.

Conceptually, although the contested sign as a whole do not have any meaning for the public in the relevant territory, the element ‘day’ will be associated with its English meaning due to its use in common language in German language. In addition, the word ‘next’ of the earlier marks and, if so recognised in the contested sign, will also be associated with its English meaning. For that part of the public who will perceive the contested sign as ‘next day’, the signs are conceptually similar to an average degree as the signs coincide in the concept of ‘next’. For the remaining part of the public who does not perceive the element ‘next’ in the contested sign but only in the earlier marks the signs are conceptually dissimilar.

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.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods and the contested services are identical and similar to varies degree to the opponent‘s services.

The earlier trade marks and the contested sign are visually similar to an average degree and, for at least part of the public, aurally similar to a high degree and conceptually similar to an average degree. For part of the public the aural similarities between the signs are on account of the common and normally distinctive element ‘NEXT’, which constitutes the totality of the earlier marks and represents aurally the beginning of the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Although there are certain visual, aural and conceptual differences between the signs, it is considered that the circumstances of the case are such that there is a risk of likelihood of confusion between the marks. This is because at least part of the consumers will recognise the element ‘Next’ in the contested sign. While the remaining elements will not be overlooked, the coincidences between the signs are at the beginning of the contested sign. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier marks configured in a different way according to the type of goods and services, which it designates. Therefore, consumers could be led to believe that the owner of the ‘Next’ trade marks has launched a new line of goods and services designated by the trade mark applied for.

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).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public who perceives the word ‘next’ in the contested sign. 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 registrations No 15 594 and No 1 620 434. It follows that the contested trade mark must be rejected for all the contested goods and services. Due to the similarities of the sign there is also a likelihood of confusion for the services similar to a low degree.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and/or reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier rights, European Union trade mark registrations No 15 594 and No 1 620 434, lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(5) and Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR.

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

Peter QUAY

Martin EBERL

Sigrid DICKMANNS

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.