OPPOSITION No B 2 995 929

Link Holding GmbH, Im Bosch 7, 76547 Sinzheim, Germany (opponent), represented by Geitz Truckenmüller Lucht Christ Patentanwälte PartgmbB, Kriegsstr. 234, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Alexandre Lefebvre, rue des Matériaux, 20 bte 61, 1070 Anderlecht, Belgium (applicant), represented by Sophie Racquez, rue du Brutia 24, 5030 Gembloux, Belgium (professional representative).

On 10/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 995 929 is partially upheld, namely for the following contested goods:

Class 20: Dinner wagons (furniture); racks; flower-stands (furniture); furniture; flower-pot pedestals; display racks.

2. European Union trade mark application No 16 861 701 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 861 701 for the figurative mark , namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 10 665 362 for the word mark ‘Surf’. 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.

a) The goods

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

Class 20: Tables (furniture).

The contested goods are the following:

Class 20: Dinner wagons (furniture); racks; flower-stands (furniture); furniture; flower-pot pedestals; display racks; reservoirs, not of metal nor of masonry.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested furniture includes, as a broader category, the opponent’s tables (furniture). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dinner wagons (furniture); racks; flower-stands (furniture); flower-pot pedestals; display racks are all pieces of furniture for various purposes (e.g. carrying food and drinks, hanging and shelving clothes, and supporting flowers and plants). These goods have the same nature and distribution channels as the opponent’s tables (furniture). The goods under comparison target the same consumers and can also be produced by the same undertakings (the manufacturing sites, technical know-how and expertise required are the same). Therefore, they are similar.

The contested reservoirs, not of metal nor of masonry are not furniture or decorative articles, contrary to the opponent’s arguments, but ‘natural or artificial lakes or large tanks used for collecting and storing water, especially for community water supplies or irrigation’ (information extracted from Collins English Dictionary on 10/10/2018 at https://www.collinsdictionary.com/dictionary/english/reservoir). As such, these goods have nothing relevant in common with the opponent’s tables (furniture). Their natures, purposes and methods of use are obviously very different. They do not have the same end users and their distribution channels are distinct. In addition, the goods under comparison are neither complementary nor in competition, and they do not have the same usual origin (manufacturers/producers) either. Therefore, they are dissimilar.

b) 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 or similar are directed at the public at large. However, as some of the relevant goods are not purchased on a daily basis and can be quite expensive (e.g. furniture), the degree of attention may vary from average to higher than average.

c) The signs

Surf
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, which consists solely of the element ‘Surf’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, the use of upper or lower case letters, or a combination thereof, is immaterial.

The element ‘Surf’ is a basic English word that will be understood in all Member States as referring to ‘a sport or activity consisting in riding on waves’. However, as it has no connection with the relevant goods, it is distinctive.

The contested sign is a figurative mark consisting of two verbal elements, namely ‘Green’ and ‘SURF’, depicted in a rather standard typeface in title case blue letters (‘Green’) and upper case green letters (‘SURF’) and surrounding a figurative device consisting of basic shapes and depicting two trees in green and white and two geometrical figures in blue resembling a house and a plot.

The verbal element ‘Green’ is an English word commonly used in commerce in the whole of the European Union. It not only describes a colour but also refers to environmentally friendly products or services (see, for example, 27/02/2018, R 8/2017‑4, GREEN FLUTE (fig.) / AMBAR-GREEN, § 29; 12/07/2018, R 288/2018‑5, GREENIC (fig.) / GREENICE (fig.), § 25). Therefore, this element is weak in relation to the relevant goods (furniture), as it alludes to their characteristics (e.g. that they are products manufactured in an eco-friendly way) and/or nature (e.g. that they are products made of recycled wood). Similarly, the figurative device is also weak, as it alludes to the characteristics and/or nature of the relevant goods. The same can be said in relation to the use of the colour green. The public will understand the meaning of these weak elements and will not pay as much attention to them as to the other, distinctive, element of the mark (i.e. the verbal element ‘SURF’). Consequently, the impact of the weak elements is limited when assessing the likelihood of confusion between the signs at issue.

In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and 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).

The contested sign does not have any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the element ‘SURF’, which is the only element of the earlier mark and the most distinctive element of the contested sign. They differ in the verbal element ‘Green’ and the figurative device of the contested sign, which are all weak, as explained above. They also differ in the colours of the contested sign, also weak in the case of the colour green, and in its rather standard typeface.

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

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SURF’, present identically in both signs, and which constitute the only verbal element of the earlier mark and the most distinctive element of the contested sign. The pronunciation differs in the sound of the letters ‛Green’ of the contested sign, which constitute a weak element, as explained above.

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. As the signs will be associated with ‘the activity of surfing’, and since the word ‘Green’ and the figurative device of the contested sign are weak and therefore have a lesser impact on the assessment, 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.

d) 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.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

In the present case, the goods are partly identical or similar and partly dissimilar. The signs are aurally similar to a high degree, and visually and conceptually similar to at least an average degree.

The earlier mark enjoys an average degree of distinctiveness, and the degree of attention of the relevant public may vary from average to higher than average. However, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 665 362.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.