OPPOSITION No B 2 985 581

Marcin Kęcik, Nieszkowice Wielkie 56, 32700 Bochnia, Poland (opponent), represented by Kancelaria Prawno-Patentowa Anna Bełz, Północna 6/24, 20-064 Lublin, Poland (professional representative)

a g a i n s t

Mobi Mobilya Iç Mimarlik Sanayi Ticaret Limited Sirketi, Yalova Yolu 14. Km, Sanayi Caddesi, NO:4, Ovaakça Köyü, Osmangazi, Bursa, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 04/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 985 581 is partially upheld, namely for the following contested goods:

Class 20: Furniture; mirrors; display stands and boards, index cabinets, medicine cabinets, writing desks and drawing desks, tea carts, deck chairs, counters (tables) not of metal, work benches (not of metal), vice benches, not of metal, furniture chests, non-metal mailboxes, fixed towel dispensers (not of metal), coat hangers, coat stands; mattresses, spring mattresses, pillows, air mattresses and pillows, hydrostatic (water) beds, not for medical purposes; straw mattresses; mirrors; playpens for babies, high chairs for babies, bassinettes, infant walkers; inflatable plastic signs, signboards of wood or plastics, display boards, picture frames, picture frame brackets, moldings (mouldings) for picture frames, identity plates, not of metal; nameplates, not of metal; registration plates, not of metal; number plates, not of metal; wood boxes, containers, not of metal (storage, transport), chests, not of metal, packaging containers of plastic, boxes of wood or plastic, non-metal valves for containers; windows handles, not of metal; door handles, not of metal, chair legs, not of metal, latches not of metal, window fittings, not of metal; door fittings, not of metal; locks, not of metal and non-electric; racks, door handles, not of metal; drawer rails, not of metal; casters, not of metal; bolts, not of metal; screws, not of metal; dowels, not of metal; pipe or cable clips, not of metal, plugs (dowels) not of metal; furniture fittings (not of metal), furniture parts, namely, chair legs, table leaves, arm rests; mannequins, mobiles (decoration), wall plaques made of plastic or wood (furniture); kennels, nesting boxes, cushions, beds for household pets; portable steps (ladders), not of metal, of wood or plastic; mobile boarding stairs not of metal for passengers; curtain holders, not of textile material; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tie-backs, bamboo curtains, indoor window blinds (shades), slatted indoor blinds, bead curtains for decoration.

2. European Union trade mark application No 16 945 701 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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 against all the goods of European Union trade mark application No 16 945 701 . The opposition is based on European Union trade mark registration No 15 136 931 . 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.

1. The goods and services

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

Class 20: Furniture and accessories for furniture, upholstered furniture, lounge furniture, lounge furniture of leather, corner units, settees, sofa beds, armchairs, chair beds, sofas, pouffes, furniture units, cupboards, fitted cupboards, sideboards, chests of drawers, coffee tables, vitrines, tables, seats, racks, office furniture, desks, rack bases, bedroom furniture, lawn furniture, mirrors [looking glasses], frames for mirrors and pictures, furniture for kitchens; furniture for children and young people; dining sets; bathroom and garden furniture; modular furniture installation systems.

Class 35: Retailing, wholesaling, and sale via the internet of furniture and interior furnishings; organisation of trade exhibitions.

Class 42: Design services for furniture; Interior design and furnishing; Industrial design.

The contested goods are the following:

Class 20: Furniture; display stands and boards, index cabinets, medicine cabinets, writing desks and drawing desks, tea carts, deck chairs, counters (tables) not of metal, work benches (not of metal), vice benches, not of metal, furniture chests, non-metal mailboxes, fixed towel dispensers (not of metal), coat hangers, coat stands; mattresses, spring mattresses, pillows, air mattresses and pillows, hydrostatic (water) beds, not for medical purposes; straw mattresses; mirrors; playpens for babies, high chairs for babies, bassinettes, infant walkers; inflatable plastic signs, signboards of wood or plastics, display boards, picture frames, picture frame brackets, moldings (mouldings) for picture frames, identity plates, not of metal; nameplates, not of metal; registration plates, not of metal; number plates, not of metal; wooden barrels, wood casks, wood kegs, containers for industrial and commercial liquids, not of metal, wood boxes, containers, not of metal (storage, transport), chests, not of metal, transport pallets, not of metal, packaging containers of plastic, plastic barrels, plastic casks, plastic kegs, reservoirs, neither of metal nor of masonry; boxes of wood or plastic, non-metal valves for containers, taps for casks (not of metal); windows handles, not of metal; door handles, not of metal, chair legs, not of metal, latches not of metal, bottle closures, not of metal; bottle caps, not of metal; corks for bottles, cork bands, window fittings, not of metal; door fittings, not of metal; locks, not of metal and non-electric; racks, door handles, not of metal; drawer rails, not of metal; casters, not of metal; bolts, not of metal; screws, not of metal; dowels, not of metal; pipe or cable clips, not of metal, plugs (dowels) not of metal; furniture fittings (not of metal), furniture parts, namely, chair legs, table leaves, arm rests; works of art in this class, of wood, wax, plaster or plastic; sculptures of bone, ivory, plaster, plastic, wax or wood, busts of bone, ivory, plaster, plastic, wax or wood; mannequins, mobiles (decoration), wall plaques made of plastic or wood (furniture), stuffed animals; kennels, nesting boxes, cushions, beds for household pets; portable steps (ladders), not of metal, of wood or plastic; mobile boarding stairs not of metal for passengers; curtain holders, not of textile material; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tie-backs, bamboo curtains, indoor window blinds (shades), slatted indoor blinds, bead curtains for decoration.

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.

Furniture; mirrors; racks are identically included in both lists of goods

The contested display stands and boards, index cabinets, medicine cabinets, writing desks and drawing desks, tea carts, deck chairs, counters (tables) not of metal, work benches (not of metal), vice benches, not of metal, furniture chests, non-metal mailboxes, fixed towel dispensers (not of metal), coat hangers, coat stands; mattresses, spring mattresses, pillows, air mattresses and pillows, hydrostatic (water) beds, not for medical purposes; straw mattresses; mirrors; playpens for babies, high chairs for babies, bassinettes, infant walkers; inflatable plastic signs, signboards of wood or plastics, display boards, picture frames, picture frame brackets, moldings (mouldings) for picture frames, identity plates, not of metal; nameplates, not of metal; registration plates, not of metal; number plates, not of metal; wood boxes, containers, not of metal (storage, transport), chests, not of metal, packaging containers of plastic, boxes of wood or plastic, non-metal valves for containers; windows handles, not of metal; door handles, not of metal, chair legs, not of metal, latches not of metal, window fittings, not of metal; door fittings, not of metal; locks, not of metal and non-electric; racks, door handles, not of metal; drawer rails, not of metal; casters, not of metal; bolts, not of metal; screws, not of metal; dowels, not of metal; pipe or cable clips, not of metal, plugs (dowels) not of metal; furniture fittings (not of metal), furniture parts, namely, chair legs, table leaves, arm rests; mannequins, mobiles (decoration), wall plaques made of plastic or wood (furniture); kennels, nesting boxes, cushions, beds for household pets; portable steps (ladders), not of metal, of wood or plastic; mobile boarding stairs not of metal for passengers; curtain holders, not of textile material; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tie-backs, bamboo curtains, indoor window blinds (shades), slatted indoor blinds, bead curtains for decoration are all pieces of furniture or accessories or indispensable parts thereof or can be used as household furnishing items. Consequently, these contested goods are at least similar to the opponent’s broad category of furniture and accessories for furniture.

The contested works of art in this class, of wood, wax, plaster or plastic; sculptures of bone, ivory, plaster, plastic, wax or wood, busts of bone, ivory, plaster, plastic, wax or wood have different purposes and methods of use in comparison with the opponent’s goods in Class 20. Furthermore, they are neither complementary to each other nor in competition. These goods are not normally produced by the same undertakings and the fact that some items for home decoration may be found in the same distribution channels is insufficient for a finding of similarity between them. Therefore, these goods compared are dissimilar. The same conclusion can be drawn in relation to these contested goods and the opponent’s services for the reasons explained before and also because of the fundamental difference between tangible goods and intangible services.

The contested bottle closures, not of metal; bottle caps, not of metal; corks for bottles, cork bands; plastic barrels, plastic casks, plastic kegs, reservoirs, neither of metal nor of masonry; wooden barrels, wood casks, wood kegs, containers for industrial and commercial liquids, not of metal, transport pallets, not of metal are practical household items with very specific purposes (liquid containers and their accessories as well as goods for transportation) that do not coincide with the purpose of the opponent’s goods. These goods have different producers and distribution channels, and they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

The contested stuffed animals are dead animals filled with materials to embalm them. These goods are dissimilar to the opponent’s ones since they are different in nature, purpose, method of use, manufacturers, distribution channels and relevant public.

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 or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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.

The earlier mark contains the word ‘polska’ which means ‘Poland’ in Polish. This word lacks any distinctiveness in that language since it merely refers to the geographic origin of the relevant goods. The earlier mark’s other element is distinctive for the Polish-speaking public, therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the relevant public.

The earlier mark consists of the verbal elements ‘mobi polska’ and an orange square. As explained above, the relevant public will pay very little attention to the non-distinctive element ‘polska’ and also to the square which serves decorative purposes. The mark’s other verbal element ‘mobi’ lacks any meaning in relation to the goods in question and, therefore, it is distinctive to an average degree. Furthermore, it is in bold letters, the largest of the mark’s elements and is placed at the beginning.

The contested sign consists of a red rectangle with the verbal element ‘mobi’ in white letters placed inside. The colour and the simple geometric shape will have mere decorative purposes while ‘mobi’ is distinctive for the reasons explained in the previous paragraph.

Visually, the signs coincide in the distinctive verbal element ‘mobi’ and differ in the geometrical shapes and their colours as well as in the colours of the letters and in the earlier mark’s additional, non-distinctive word ‘polska’. It is reminded that 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). This is all the more relevant in the present case since the simple and banal figurative (and colour) elements in the signs are for decoration only, and customers will pay a lot more attention to the verbal elements of which the distinctive ones coincide and the differing one is non-distinctive. Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛mobi’, present identically in both signs, and it differs in the sound of the letters of the non-distinctive element ‛polska’ of the earlier mark. Given the coincidence in the signs’ distinctive verbal part, which is the only verbal element in the contested sign and the initial element in the earlier mark, it must be concluded that the signs are highly similar.

Conceptually, since the signs’ distinctive, coinciding part lacks any meaning and the differing word is non-distinctive, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of non‑distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

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 and services are partly dissimilar and partly identical or similar while the signs are visually and aurally similar to a high degree and the conceptual aspect plays no role. The fact that the earlier mark’s only distinctive word coincides with the contested sign’s sole verbal element, in combination with the non-distinctiveness or banality of the differing elements, would clearly lead consumers to believe the relevant goods come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in Poland and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark invoked. 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.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.

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

Ioana MOISESCU

Ferenc GAZDA

Rasa BARAKAUSKIENE

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.