OPPOSITION No B 2 500 570

Support Design AB, Brårudsallén 6, 686 25 Sunne, Sweden (opponent), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67 4 TR, 103 95 Stockholm, Sweden (professional representative)

a g a i n s t

Saga Furs Oyj, Martinkyläntie 48, 01720 Vantaa, Finland (applicant), represented by Kolster Oy AB, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

On 15/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 500 570 is upheld for all the contested goods, namely:

Class 20: Furniture used for lying and sleeping, mirrors, picture frames.

2. European Union trade mark application No 13 532 502 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition initially against all the goods and services of European Union trade mark application No 13 532 502 for the word mark ‘SAGA VISION’. The opposition is based on European Union trade mark registration No 8 779 738 for the word mark ‘SAGA’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary note on the scope of the opposition

As stated above, the scope of the opposition initially covered all the goods and services specified in the contested EUTM application, namely all the goods and services in Classes 18, 20, 24, 25, 35, 40 and 42.

Subsequently, on 01/06/2017, the applicant requested a limitation to the list of goods in Class 20, while the goods and services in all the other classes remained unchanged. The contested goods in Class 20, after the limitation, are the following:

Class 20: Furniture used for lying and sleeping, mirrors, picture frames.

In its observations of 17/07/2017, the opponent restricted the scope of its opposition to the goods in Class 20 only.

Accordingly, the Opposition Division will proceed considering only the contested goods in Class 20, as listed above.

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

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

Class 20: Office chairs.

The contested goods are the following:

Class 20: Furniture used for lying and sleeping, mirrors, picture frames.

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.

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

The applicant argues in its observations that the opponent’s office chairs are not similar to the contested furniture used for lying and sleeping. In support of this argument, the applicant relies on the assumptions that office chairs are not habitually used in the home, especially not in bedrooms, and that the applicant’s goods are bedroom furniture. The Opposition Division does not agree with the applicant’s interpretation of the wording.

Office chairs are not aimed only at business customers for use in an office outside of the home. An office chair is merely a type of chair that is designed for use at a desk where some kind of work is performed, including in home offices or work spaces for adolescents or students in their bedrooms. Therefore, the term office chairs will be understood in a wider sense than the applicant assumes will be the case, and these goods must be considered to target also the public at large. This understanding of the term coincides with the view taken by the Boards of Appeal in their decision of 08/03/2018, R 1241/2017-2, SAGA/SAGA.

The contested furniture used for lying and sleeping need not be limited to bedroom furniture, as argued by the applicant; rather, it could also include furniture used for lying or sleeping in spaces other than the bedroom, such as the living room or an office. For example, there are various kinds of furniture made for office spaces that can be used for lying down, such as futons and chaises longues.

Moreover, although office chairs are mainly used for sitting, nowadays they also have adjustable features that can enable the user to take a nap in a more or less horizontal position. Therefore, these goods partly coincide in purpose and method of use with the contested furniture used for lying and sleeping. As for the nature, both goods belong to the same general category of ‘furniture’. In addition, it is not uncommon to find the furniture at issue in the same distribution channels. Furthermore, they target the same consumers and are also produced by the same manufacturers. Therefore, they are considered similar to at least an average degree.

As for the applicant’s reference to the Opposition Division’s earlier decision No B 1 996 217 issued on 03/08/2014, the comparison made in the earlier decision is considered not to be directly analogous to the present case. Contrary to the applicant’s claim, the goods under comparison are not the same. Whereas the opponent’s goods remain the same office chairs, the applicant’s goods in the earlier case regarded bassinettes, bedding (except linen), beds, while the applicant’s goods in the present case have a wider scope, namely furniture used for lying and sleeping. Besides, there exists a more recent decision from the Boards of Appeal, namely the abovementioned decision of 08/03/2018, R 1241/2017-2, SAGA/SAGA, that compared goods closer to the ones at issue where similarity was established. Consequently, the applicant’s arguments on this issue must be set aside.

The contested mirrors, picture frames and the opponent’s office chairs are both used for household equipment and decoration and are likely to be sold via the same distribution channels, such as furniture retail stores interior article shop, and they target the same consumers. Moreover, the goods are often produced by the same manufacturers. Therefore, they are similar to at least a low degree.

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 found to be similar are directed both at the public at large and at business customers with professional knowledge. Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention will vary between average (e.g. for picture frames) and higher than average (e.g. for some items of furniture) (20/10/2011, T‑214/09, Cor II, EU:T:2011:612, § 23 and 16/01/2008, T‑112/06, idea, EU:T:2008:10, § 37). As regards the furniture at issue, namely furniture used for lying and sleeping and office chairs, firstly, these are goods that the average consumer does not regularly buy and they can also be expensive. Furthermore, considerations such as aesthetics and functionality can play an important role when consumers buy furniture. Such items of furniture will, therefore, be more carefully considered before buying them.

3. The signs

SAGA	SAGA VISION
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). 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 English-speaking part of the relevant public, for which the verbal elements of the signs are meaningful and therefore have an impact on the conceptual perception of the signs.

The verbal element ‘SAGA’, included in both signs, refers to ‘a long story of heroic achievement or a long, involved story, account or series of incidents’ (information extracted from Oxford Dictionaries).

The element ‘VISION’ of the contested sign means ‘a mental image of what the future will or could be like or an idea or mental image of something’ (information extracted from Oxford Dictionaries).

None of the meanings of ‘SAGA’ or ‘VISION’ refers to the goods or any of their characteristics. Therefore, the verbal elements of the signs are distinctive.

Visually and aurally, the signs coincide in the distinctive word ‘SAGA’. They differ in the element ‘VISION’ of the contested sign, which has no counterpart in the earlier mark. However, since the element that the signs have in common, ‘SAGA’, constitutes the entire earlier mark and is the first element of the contested sign, the signs are considered visually and aurally similar to an average degree.

The Opposition Division has taken into account the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Furthermore, the fact that the earlier mark is entirely contained in the contested mark constitutes an indication of visual and aural similarity between the signs (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 27).

Conceptually, due to the coinciding distinctive word ‘SAGA’, both signs evoke the concept of a long story of heroic achievement or a long, involved story, account or series of incidents. The additional concept conveyed by the word ‘VISION’ in the contested sign does not alter the meaning of ‘SAGA’, as the expression ‘SAGA VISION’ does not make sense as a whole. Therefore, the signs are conceptually 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.

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 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.

5. Global assessment, other arguments and conclusion

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.

In the present case, the goods are similar to varying degrees. The earlier mark enjoys an average degree of inherent distinctiveness. The degree of attention of the relevant public will vary between average and higher than average.

The signs are visually, aurally and conceptually similar to an average degree, as they have the element ‘SAGA’ in common. Importantly, the conclusions regarding the degree of similarity between the signs take into account the facts that the earlier mark’s only element is entirely reproduced at the beginning of the contested sign and that the additional element present in the contested sign does not alter the meaning of ‘SAGA’, as the combination of words ‘SAGA VISION’ will not be a understood as forming an expression but will be perceived by the relevant public as containing two separate and independent elements. Therefore, the coinciding element ‘SAGA’ will be clearly perceived by consumers.

In the Opposition Division’s view, the differences between the signs at issue are not sufficient to dispel a likelihood of confusion, as it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that it owns several international trade mark registrations designating the European Union and starting with the word ‘SAGA’, all with earlier priority than the opponent’s earlier right. It is important to note that the Office is in principle restricted in its examination to the trade marks in conflict. Furthermore, the responsibility for opposing EUTM applications/IRs designating the EU on the basis of relative grounds lies with third parties, as the EUIPO does not carry out ex officio examinations of relative grounds. Therefore, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the general public, even when a higher than average degree of attention is displayed, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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 8 779 738. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Denitza STOYANOVA-VALCHANOVA

Tu Nhi VAN

Tobias KLEE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.