OPPOSITION No B 2 751 736

Teknos Group Oy, Takkatie 3, 00371 Helsinki, Finland (opponent), represented by Kolster OY AB, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative)

a g a i n s t

Nordeko AB, Box 84, 553 17 Jönköping, Sweden (applicant), represented by Blomberg & Co. Skandinaviska Patentbyrån AB, Ann-Sofi Margareta Blomberg, P.O. Box 14031, 104 40 Stockholm, Sweden (professional representative)

On 30/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 751 736 is upheld for all the contested goods, namely:

Class 2: Furniture oils, oils for the preservation of wood, wood staining.

2. European Union trade mark application No 14 506 621 is rejected for all the above goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 506 621, namely against all the goods in Class 2. The opposition is based on, inter alia, Danish trade mark registration No VR 2007 02199. The opponent invoked Article 8(1)(a) and (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 Danish trade mark registration No VR 2007 02199.

1. The goods

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

Class 2: Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists.

The contested goods are the following:

Class 2: Furniture oils, oils for the preservation of wood, wood staining.

The contested goods are used to protect a wooden surface against e.g. the weather in order to prevent deterioration of the material. Therefore, they are included in the opponent’s preservatives against deterioration of wood. Consequently, these goods are identical.

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 identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

NORDICA	NORDEKA
Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 word mark ‘NORDICA’ may be understood by the relevant public as referring or alluding to ‘nordic’ and thus relating to or denoting Scandinavia, Finland and Iceland. However, this word has no specific meaning in relation to the relevant goods. Therefore, its inherent distinctiveness must be seen as normal.

The contested sign ‘NORDEKA’ has no clear meaning in the relevant territory for the goods at hand, even if the element ‘NORD’ will be understood as ‘the north’. Its distinctiveness as a whole is, however, normal.

It should be noted 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. Consequently, the fact that the signs share, amongst others, the fourth first letters, ‘NORD’, should be taken into account in the assessment of the overall impression of the signs.

Visually, the signs coincide in ‘NORD**A’, presenting five out of seven letters of both signs. However, the signs differ in the respective fifth and sixth letters ‘IC’ and ‘EK’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛NORD*CA’ and ‘NORD*KA’, because the pronunciation of the letter ‘C’ of the earlier mark and the ‘K’ in the contested sign are the same in Danish. Moreover, the difference in pronunciation by the relevant public of the differentiating vowels ‘I’ in the earlier mark and ‘E’ in the contested sign is hardly perceptible. The marks have furthermore the same length, number of syllables and rhythm.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and to that extent they share concept of ‘northern’.

Therefore, the signs are 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C-251/95, „Sabèl‟, paragraph 22 et seq.).

In the present case, the goods are identical. The signs are visually and conceptually similar to an average degree and aurally even highly similar. The earlier mark is distinctive to a normal degree. The degree of attention of the relevant public is deemed to be average. Account is also 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s Danish trade mark registration No VR 2007 02199. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

For the sake of completeness, it must be mentioned that the opposition fails insofar as it is based on grounds under Article 8(1)(a) EUTMR because the signs are not identical.

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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

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.