OPPOSITION No B 2 628 371

Lichtraeume Gercek und Muralter GbR, Lützowstr. 102-104, 10785 Berlin, Germany

(opponent), represented by Maikowski & Ninnemann Patentanwälte Partnerschaft mbB, Kurfürstendamm 54-55, 10707 Berlin, Germany (professional representative)

a g a i n s t

Incoin Holding B.V., Groteweg 9, 1756CK 't Zand, The Netherlands (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warszawa, Poland (professional representative).

On 30/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 628 371 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 and services of European Union trade mark application No 14 184 204, namely against all the goods in Class 20 and part of the services in Class 35. The opposition is based on, inter alia, international trade mark registration No 1 107 039 designating the European Union. 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 International trade mark registration No  1 107 039 designating the European Union.

1. The goods and services

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

Class 20: Furniture; mirrors; picture frames; office furniture; screens; room dividers; racks, shelves; cupboards, wardrobes; desks; drawers; chairs; tables; glass cabinets; furniture, mirrors and picture frames with integrated illumination.

The contested goods and services are the following:

Class 20: Furniture; school furniture; wicker furniture; high chairs for babies; cradles; children's chairs; cradles; wicker structures for cots; playpens for babies; mats for playpens; cradles; infant walkers; furniture fittings of wood; modesty screens; chests for toys; pillows; sleeping bags for children; cushions; bolsters; bolsters; mattress (straw -); mattresses; infant cot mattresses; cot mattresses.

Class 35: Wholesaling and retailing of furniture; wholesaling and retailing via the internet, including via online auction services, of furniture.

Some of the contested goods and services are identical to goods on which the opposition is based. 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 directed at the public at large as well as at business customers with specific professional knowledge or expertise (insofar wholesaling). The degree of attention is considered to be average.

3. The signs

GOTO
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 earlier mark is a word mark.

The contested sign is a figurative mark that consists of a figurative element consisting of the depiction of a stylised koala and the word ‘COOTO’ in rather standard characters.

The marks have no elements that could be considered clearly more distinctive than other elements. Furthermore, the marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘*-O-*-T-O’. However, they differ in the letter ‘G’ of the earlier mark, the letters ‘C’ and ‘O’ of the contested sign and in the figurative element and stylisation (even if rather standard) of the contested sign.

Although, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component this is not a standard rule. In the present case, it is considered that the figurative element of the contested sign is rather striking and will catch consumer attention. Furthermore, it placed as first element of the contested sign and the marks differ in their first letter and the additional ‘O’ also placed at the beginning. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides, at least for a part of the relevant public, in the sound of the letters ‛‘*-O-*-T-O’, present in both signs. For another part of the public (for example, the English speaking public), the marks are less similar as the double ‘OO’ will be pronounced as ‘U’.

Therefore, the signs are similar to an average degree at least for a part of the relevant public.

Conceptually, the relevant territory will perceive the figurative element of the contested sign as a stylised koala. The other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to a low degree.

The marks are visually similar to a low degree, aurally similar to an average degree for a part of the public, and are not conceptually similar. In particular, they differ in their first letter (‘G’ in the earlier mark versus ‘C’ in the contested sign), in the letter ‘O’ of the contested sign, and in the figurative element and stylisation of the contested sign. The figurative element is the first element of the contested sign and is rather striking. Furthermore, this element introduces a concept that is not present in the earlier mark. It is considered that this element will not be overlooked but on contrary will be clearly perceived and will catch the attention of consumers. Furthermore, the ‘OO’ in the contested sign is rather striking.

Therefore, it is considered that the similarities between the signs are not sufficient to overcome the dissimilarities.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on German earlier trade mark No 302 011 027 165 for the word mark ‘GOTO’.

Since this mark is identical to the one which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different. Therefore, no likelihood of confusion exists.

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

Beatrix STELTER

Francesca CANGERI SERRANO

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