OPPOSITION No B 2 996 802

Sedes, S.A., Arquitectos Galán, núm. 2 Bajo, 33007 Oviedo, Spain (opponent), represented by Kapler S.L., Calle Orense, 10, 1º Of. 12, 28020 Madrid, Spain (professional representative)

a g a i n s t

Prominent Comfort Producten B.V., Energieweg 16 18, 8071 DA Nunspeet, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 25/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 996 802 is partially upheld, namely for the following contested goods and services:

Class 20: Furniture, mirrors, picture frames; reclining chairs; statues, ornaments, furnishing accessories, interior decoration, works of art and models of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials (namely of wood, wax, gypsum or plastic); seats; cushions.

Class 35: Retailing or wholesaling in connection with furniture, mirrors, picture frames, reclining chairs and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Building construction; installation, cleaning, repair and maintenance of furniture, mirrors, picture frames.

2. European Union trade mark application No 16 955 916 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 35: Advertising; business management; business administration; office functions; import and export in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, furniture, mirrors, picture frames, reclining chairs, interior decoration, furnishing accessories, works of art and models; retailing or wholesaling in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, interior decoration, furnishing accessories, works of art and models and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; web-shops; merchandising and business consultancy thereon; sales promotion; business management of performing artists; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; commercial management; publication of publicity texts; dissemination of advertising articles and advertising material; publicity; public relations services; professional management of commercial businesses; organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; demonstration of goods; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 37: Installation, cleaning, repair and maintenance of works of art and models.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 955 916 ‘SEDES’, namely against all the goods and services in Classes 20, 35 and 37. The opposition is based on, inter alia, Spanish trade mark registrations No M 1 975 852 , No M 2 619 902 and No M 1 975 856 . 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 Spanish trade mark registrations No M 1 975 852, No M 2 619 902 and No M 1 975 856.

a) The goods and services

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

Spanish trade mark registration No M 1 975 852 (earlier mark 1)

Class 20: Wooden goods not included in other classes, furniture, mirrors, frames.

Spanish trade mark registration No M 2 619 902 (earlier mark 2)

Class 37: Building services.

Spanish trade mark registration No M 1 975 856 (earlier mark 3)

Class 39: Storage and transport of building materials.

The contested goods and services are the following:

Class 20: Furniture, mirrors, picture frames; reclining chairs; statues, ornaments, furnishing accessories, interior decoration, works of art and models of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials (namely of wood, wax, gypsum or plastic); seats; cushions.

Class 35: Advertising; business management; business administration; office functions; import and export, retailing or wholesaling in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, furniture, mirrors, picture frames, reclining chairs, interior decoration, furnishing accessories, works of art and models and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; web-shops; merchandising and business consultancy thereon; sales promotion; business management of performing artists; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; commercial management; publication of publicity texts; dissemination of advertising articles and advertising material; publicity; public relations services; professional management of commercial businesses; organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; demonstration of goods; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 37: Building construction; installation, cleaning, repair and maintenance of furniture, mirrors, picture frames, works of art and models.

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.

Contested goods in Class 20

Furniture, mirrors are identically contained in the lists of goods of earlier mark 1 and the contested sign.

The contested picture frames are included in the broad category of the opponent’s frames (earlier mark 1). Therefore, they are identical.

The contested reclining chairs; seats are included in the broad category of the opponent’s furniture (earlier mark 1). Therefore, they are identical.

The contested furnishing accessories, interior decoration of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials (namely of wood, wax, gypsum or plastic); cushions are household articles that can be used for the purpose of decorating a house. They are similar to the opponent’s furniture (earlier mark 1), as they have the same purpose, namely decorating or furnishing a room or building, and target the same public. Moreover, these goods are often sold in the same specialised outlets, such as interior design stores, and may be complementary.

The contested statues, ornaments, works of art and models of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials (namely of wood, wax, gypsum or plastic) have the same nature as the opponent’s wooden goods not included in other classes (earlier mark 1). Their purpose, in the broadest sense, may also be the same in that they are for decorating a house. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they are produced by the same companies, that their methods of use are the same, that they have the same distribution channels or that they are in competition or complementary.

Contested services in Class 35

The contested retailing or wholesaling in connection with furniture, mirrors, picture frames, reclining chairs and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods (namely, furniture, mirrors, picture frames, reclining chairs) are similar to a low degree to the opponent’s furniture, mirrors, frames in Class 20 (earlier mark 1). Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested import and export in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, furniture, mirrors, picture frames, reclining chairs, interior decoration, furnishing accessories, works of art and models have nothing in common with the opponent’s storage and transport of building materials in Class 39 (earlier mark 3), since it would not be expected that the service provider importing and exporting these goods, which are cleaning preparations or furnishing articles, would also store and transport building materials. The services in question would be distributed through different channels and have different relevant consumers. Moreover, they are neither complementary nor in competition. Therefore, they are considered dissimilar. For the same reasons, these contested services are considered dissimilar to the opponent’s goods in Class 20 (earlier mark 1) and services in Class 37 (earlier mark 2).

The contested retailing or wholesaling in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, interior decoration, furnishing accessories, works of art and models and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are related to the sale of various goods, including those found to be similar (to varying degrees) to the opponent’s goods in Class 20 (earlier mark 1). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Since similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can be found only where the goods involved in the retail services and the specific goods covered by the other mark are identical, and this condition is not fulfilled in the present case, these contested services are considered dissimilar to the opponent’s goods in Class 20 (earlier mark 1).

The contested webshops are retail services in general (i.e. not limited in the specification to the sale of particular goods) through online shops and are considered dissimilar to any goods that might be sold through these online shops. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs and have different purposes. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested services are considered dissimilar to the opponent’s goods in Class 20 (earlier mark 1).

These contested services are also dissimilar to the opponent’s services in Class 37 (earlier mark 2), building services, and in Class 39 (earlier mark 3), storage and transport of building materials, since they have completely different natures and purposes. Retail companies do not usually provide either building or transportation services to third parties and, conversely, companies providing building or transportation services do not retail goods.

The contested advertising; business management; business administration; office functions; merchandising and business consultancy thereon; sales promotion; business management of performing artists; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; commercial management; publication of publicity texts; dissemination of advertising articles and advertising material; publicity; public relations services; professional management of commercial businesses; organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; demonstration of goods; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet are business management, administration and advertising services, intended to help companies manage their businesses or provide others with assistance in the sale of their goods and services. These services are usually rendered by specialist companies, such as business consultants, that gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share, or by specialist companies that study their clients’ needs, provide all the necessary information and advice for marketing the clients’ goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. All these contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements or form part of a company’s business is insufficient for a finding of similarity. These contested services are different in nature, purpose, commercial origin, relevant consumers and distribution channels from the opponent’s goods and services in Classes 20, 37 and 39 of earlier marks 1, 2 and 3 respectively. Therefore, they are considered dissimilar.

Contested services in Class 37

The contested building construction is included in the broad category of the opponent’s building services (earlier mark 2). Therefore, they are identical.

The contested installation, cleaning, repair and maintenance of furniture, mirrors, picture frames are similar to the opponent’s furniture, mirrors, frames in Class 20 (earlier mark 1). As a rule, the manufacturers of furniture often provide installation, cleaning, repair and maintenance services in relation to furniture, since the same know-how and technical knowledge is required. Therefore, the contested services and the opponent’s goods may have the same manufacturers/providers, distribution channels and relevant public. They are also complementary.

The contested installation, cleaning, repair and maintenance of works of art and models clearly differ in their nature from the opponent’s building services in Class 37 (earlier mark 2), which are the services involved in the physical construction of a building. When comparing the contested services with opponent’s furniture, mirrors, frames in Class 20 (earlier mark 1), it cannot be assumed that manufacturers of furniture, mirrors or frames will provide installation, cleaning, repair and maintenance of works of art and models. When comparing the contested services with the opponent’s wooden goods not included in other classes, without further examples or an express limitation by the opponent clarifying the specification, it cannot be assumed that these goods and services are produced/provided by the same companies, that their methods of use are the same, that they have the same distribution channels or that they are in competition with or complementary to the contested services. For the reasons given above and also taking into account that, by their nature, goods are generally dissimilar to services — since goods are articles of trade, wares or merchandise, the sale of which usually entails the transfer in title of something physical, whereas services consist of the provision of intangible activities — the contested services are considered dissimilar to the opponent’s goods and services in Classes 20 and 37 mentioned above.

The contested installation, cleaning, repair and maintenance of works of art and models are also dissimilar to the opponent’s services in Class 39 (earlier mark 3), which are storage and transport of building materials, as these services have completely different purposes, natures, providers, distribution channels and relevant consumers.

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 and services found to be identical or similar (to varying degrees) are directed at both the public at large and professionals in the relevant fields. The degree of attention may vary from average to higher than average, depending on the price and frequency of purchase of the goods or services.

c) The signs

Earlier marks 1 and 3 Earlier mark 2	SEDES
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 marks are figurative marks consisting of the word ‘sedes’ written in slightly stylised black lower case letters and a figurative element depicting three square pillars with yellow, white, blue and red sides.

The contested sign is a word mark, ‘SEDES’. In the case of a word mark, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters.

The relevant Spanish-speaking public will perceive the word ‘SEDES’, present in all the signs, as the plural form of the Spanish word ‘SEDE’, referring to a seat or headquarters. Although it might be perceived as alluding to the head office or control centre of the producer/provider of the goods and services offered, it can still be considered to have an average degree of distinctiveness in relation to the relevant goods and services.

The figurative elements of the earlier marks consist of a combination of simple geometric shapes and are rather decorative in nature. Therefore, their distinctiveness is considered low.

The earlier marks do not have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘SEDES’, which is the only verbal element in all the signs under comparison. The signs differ in the figurative elements and colours of the earlier marks.

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). Consequently, the verbal element ‘sedes’ of the earlier marks will be the only element by which they will be referred to by the relevant consumers and, therefore, it has a stronger impact than the figurative elements.

Although the abovementioned differing elements create some visual differences between the earlier marks and the contested sign, the latter reproduces the only verbal element of the earlier marks in its entirety. Therefore, the signs are considered visually similar to an average degree.

Aurally, the earlier marks and the contested sign will be pronounced as ‘SEDES’. The figurative elements of the earlier marks will not be referred to orally by the relevant consumers. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the figurative elements of the earlier marks do not convey any particular meaning and the verbal element ‘SEDES’ in all the marks will convey the same concept, the earlier marks and the contested sign are considered conceptually identical.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no clear 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 marks must be seen as normal, despite the presence of a low‑distinctive element in the marks, as stated above in section c) of this decision.

e) 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/or 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).

As concluded above, the contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and services. The earlier marks have a normal degree of distinctiveness.

The earlier marks and the contested sign are visually similar to an average degree and aurally and conceptually identical. As detailed in section c), the contested sign ‘SEDES’ reproduces the only verbal element of the earlier marks in its entirety, and the signs differ in the figurative elements and colours of the earlier marks.

Having regard to the fact that the signs were found to be visually similar to an average degree only because of the figurative elements of the earlier marks, the Opposition Division considers that the aural and conceptual identity between the earlier marks and the contested sign (on account of their identical verbal element ‘SEDES’) clearly outweighs the visual differences between them. Taking into account that the verbal element of a sign usually has a stronger impact on the relevant consumers, the fact that the only verbal element of the earlier marks is reproduced in its entirety in the contested sign must be viewed as strong indication of likelihood of confusion. Therefore, it is considered that the relevant consumers, even when the degree of attention is higher than average, will confuse the signs and assume that the goods and services in question come from the same undertaking or economically linked undertakings.

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 Spanish trade mark registrations No M 1 975 852, No M 2 619 902 and No M 1 975 856.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks. Taking into account the abovementioned principle of interdependence, the contested trade mark must also be rejected for the services found to be similar to a low degree to the goods of the earlier trade marks, as the obvious similarities between the signs offset the low degree of similarity between the goods and services.

The rest of the contested services 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 services cannot be successful.

The opponent also based its opposition on the following Spanish trade mark registrations:

1. No M 1 975 849

Class 11: Apparatus for lighting, heating, water supply, sanitary purposes.

2. No M 1 975 851

Class 19: Non-metallic building materials, non-metallic rigid pipes for building, asphalt, non-metallic transportable buildings.

3. No M 1 975 854

Class 36: Real estate services and real estate promotion.

The contested services in Class 35, namely, advertising; business management; business administration; office functions; import and export in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, furniture, mirrors, picture frames, reclining chairs, interior decoration, furnishing accessories, works of art and models; retailing or wholesaling in connection with bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, interior decoration, furnishing accessories, works of art and models and the bringing together, for the benefit of others, of the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; web-shops; merchandising and business consultancy thereon; sales promotion; business management of performing artists; arranging and conducting of promotional events and activities, including openings, demonstrations and product presentations; arranging and conducting publicity and advertising events; commercial management; publication of publicity texts; dissemination of advertising articles and advertising material; publicity; public relations services; professional management of commercial businesses; organisation of trade fairs, exhibitions and other events for commercial and advertising purposes; demonstration of goods; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet that were found to be dissimilar to the opponent’s goods and services in Classes 20, 37 and 39 in section a) of this decision are, for the same reasons, dissimilar to the opponent’s goods in Classes 11 and 19 listed above, since, apart from being different in nature (since services are intangible whereas goods are tangible), they serve different needs and have different purposes. Furthermore, these goods and services have different methods of use and are neither in competition nor necessarily complementary. The same is true in relation to the opponent’s services in Class 36 listed above, which are financial services provided by organisations in the finance industry, such as banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds, and have nothing in common with the contested services in Class 35.

Similarly, the contested services in Class 37, namely installation, cleaning, repair and maintenance of works of art and models (which were found to be dissimilar to the opponent’s goods and services in Classes 20, 37 and 39 in section a) of this decision), and the opponent’s goods and services in Classes 11, 19 and 36 listed above have nothing in common, since they differ in nature and purpose, have different origins and relevant consumers, are distributed through different channels and are neither complementary nor in competition with each other. Therefore, they are dissimilar.

Consequently, the outcome cannot be different with respect to the contested services that were found to be dissimilar to the opponent’s goods and services in section a) of the current decision.

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 these remaining services because the signs and the goods and services in question 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.