OPPOSITION No B 2 999 368

Akaba S.A., Atallu Kalea, 14-16, 20170, Usurbil (Gipuzkoa), Spain (opponent), represented by Consultores Urizar & Cia., Gordóniz, 22 - 5º, 48012, Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Akaba mobiliario, Av. Central de Reiros nº 1024, 4585-774 Vandoma – Paredes, Portugal (applicant)

On 03/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 999 368 is upheld for all the contested goods, namely:

Class 20: Furniture.

2. European Union trade mark application No 17 008 509 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 008 509 for the word mark ‘HAKABA’. The opposition is based on European trade mark registration No 17 008 509for the figurative mark and Spanish trade mark registration No 17 008 509for the figurative mark . 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 European trade mark registration No 17 008 509

1. The goods and services

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

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.

Class 35: Representation services, sole distribution, import, export, commercial retailing and business management and retailing via global computer networks relating to furniture of all kinds and decorative items.

Class 39: Transport, packaging, storage and distribution of goods, in particular relating to furniture of all kinds and decorative items.

The contested goods are the following:

Class 20: Furniture.

Furniture is identically contained in both lists of goods.

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 may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

	HAKABA
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.

To avoid examining specific pronunciations in several languages, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public as it is more prone to confusion.

The earlier trade mark is a figurative mark composed of one verbal element, ‘AKABA’ depicted in a rather standard typeface. As all letters are aligned and of the same size and shade, there are no elements that could be considered more dominant (visually eye-catching) than other elements.

The contested trade mark is a word mark composed of one verbal element, ‘HAKABA’. As it is a word mark, it has no elements that could be considered more dominant (visually eye-catching) than other elements.

The verbal elements ‘AKABA’ and ‘HAKABA’ have no meaning for the relevant public in relation to the goods in question. Therefore, they have an average degree of inherent distinctiveness.

Visually, the signs coincide in ‘(*)AKABA’ which are all the letters constituting the earlier sign and five of the six letters composing the contested mark. The signs differ in the letter ‘H’ in the beginning of the contested mark and in their representation, as the earlier sign is a figurative trade mark and the contested sign is a word trade mark. Nevertheless, the typeface of the earlier mark is very ordinary and can hardly be distinguished from that of the other mark.

The applicant argues that the two trade marks begin with different letters (A/H) and the writing of the words is distinct. However due to the common part of the verbal element, almost the same length of the marks, the rather standard typeface of the earlier sign and the strong repetition of the letter ‘A’ in both, the public will not perceive easily the difference between the marks.

Therefore, the signs are similar to an average degree.

Aurally, the trade marks will be pronounced identically by the Portuguese-speaking part of the public. ‘H’ is a silent letter with no pronunciation.

Conceptually, neither of the signs has a meaning for the Portuguese-speaking public. Since a conceptual comparison is not possible, 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 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 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).

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 contested goods are identical to the opponent’s goods. The earlier mark has a normal degree of distinctiveness. The degree of attention of the public varies from average to higher than average.

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). 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).

The signs in question are visually similar to an average degree. They are aurally identical. Contrary to the applicant’s arguments that the letter ‘H’ is fundamental for the composition of the word, the addition of a single letter at its beginning is not sufficient in this case to create a new fanciful word as this additional letter will not be pronounced by the relevant public. While it is true, as argued by the applicant, that the initial part of the signs may be liable to attract the consumer’s attention more than the following parts, in this case, the small difference in their beginnings is too insignificant to dispel their overall similarity, especially from an aural perspective where this difference is not noticeable.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Portuguese-speaking part of the public. 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, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 17 008 509It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier opponent’s European trade mark registration No 4 784 252 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Adriana VAN ROODEN

Stanislava STOYANOVA

Carlos MATEO PÉREZ

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.