OPPOSITION No B 3 046 819

Mio AB, Fågelviksleden 2, 54321 Tibro, Sweden (opponent), represented by Advokatfirman Delphi i Göteborg KB, Östra Hamngatan 29, 411 10 Göteborg, Sweden (professional representative)

a g a i n s t

Shanghai Yuyi Baby Products Co. Ltd., 5/ F No. 89-90 Lane 825, Ledu West Rd., Songjiang Dist., Shanghai, People’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27, 99-300 Kutno, Poland (professional representative).

On 23/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 819 is upheld for all the contested goods and services, namely:

Class 20: Cots; Cradles; Bassinettes; Infant walkers; Works of art of wood, wax, plaster or plastic; Pet cushions; Furniture fittings, not of metal; Mats for infant playpens; Door fittings, not of metal; Picture frames; Beds.

Class 35: Advertising; Publicity; Commercial administration of the licensing of the goods and services of others; Provision of an on-line marketplace for buyers and sellers of goods and services; Marketing.

2. European Union trade mark application No 17 481 607 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 481 607 for the word mark ‘MIOOO’, namely against all the goods in Class 20 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registrations No 16 581 035 and No 5 806 311, both for the word mark ‘MIO’. 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.

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 Union trade mark registrations No 16 581 035 and No 5 806 311, both for the word mark ‘MIO’.

a) The goods and services

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

1) European Union trade mark registration No 16 581 035 for the word mark ‘MIO’

Class 20: Furniture; Lawn furniture; Office furniture; Furniture for children; Mirrors [looking glasses]; Picture frames; Curtain rails; Racks; Cushions; Beds; Spring mattresses; Bedding, except linen; Mattress toppers; Slatted bases for beds; Mattresses; Box springs; Mattress cushions; Sofas; Deck chairs; Wood bedsteads; Bunk beds; Pillows; feather pillows; Coverings (Fitted -) for furniture; Settees; Footrests; Pouffes [furniture]; Bed frames; Bed frames of metal; Pillows; Bolsters; Stools; Benches [furniture]; Seats; Seating furniture; Tables; Dining room tables; Desks and tables; Office tables; Modular desks [furniture]; Coffee tables; Chests of drawers; Wall chests; Cupboards; Sideboards; Bedside cabinets; Lockers; Cupboards; Storage racks; Bookcases; Stands [furniture] for use with television; Hat racks [furniture]; Metal hat racks; Shoe cabinets; Shoe racks; Work counters [furniture]; Step ladders made of wood; Ladders made of plastics; Non-metal hooks; Clothes hangers and clothes hooks; Furniture and furnishings; Children’s beds; Parasol stands; Drapery hardware; Curtain rings; Indoor window blinds [shades] [furniture]; Signboards of wood or plastics; Medicine cabinets; Key cabinets; Wine racks [furniture]; Carpet coasters for protecting furniture legs; Magazine racks; Display boards; Clothes hangers; Storage drawers [furniture].

Class 35: Advertising; Input, processing, checking, storing and/or retrieval of data in databases; Business management; Business administration; Office functions; Goods brokerage; provision of online market for buyers and sellers of products and services; Sales promotion, advertising and marketing via on-line websites; Electronic commerce, namely providing of product information online for advertising and sales purposes; Business administration services for processing sales made on the internet; Sales administration; Clerical services for the taking of sales orders; Presentation of goods on communication media, for retail purposes; Retailing and wholesaling in department stores, shops and online in relation to furniture and furnishings, interior decor, glassware, porcelain ware, furniture, lighting, lighting and heating apparatus, parts and fittings therefor, lighting goods for offices and public premises, lamps, electric light bulbs, exterior lights, electric pocket torches, basins, bathroom fittings, candles, tealights, tealight holders, fairy lights for festive decoration, electric lights for Christmas trees, LED light sources; Retailing and wholesaling in department stores, shops and online in relation to lamp shades, flares, halogen lamps, key rings (trinkets or fobs), garden furniture, office furniture, children’s furniture, mirrors, picture frames, curtain rails, shelving, cushions, beds, memory foam mattresses, bedding, except linen, mattress toppers, mattress supports, mattresses, spring mattresses, mattress pads, sofas, armchairs, settees, footstools, pouffes (furniture), stools, benches (furniture); Retailing and wholesaling in department stores, shops and online in relation to chairs (seats), seats, tables, dining tables, desks and tables, office tables, modular desks (furniture), coffee tables, chests of drawers, wardrobes, cupboards, sideboards, bed tables, bed frames, bed frames of metal, headboards, bedsteads of wood, bunk beds, cots, seats, lockers, storage furniture, storage racks, bookcases, stands (furniture) for TV sets, hat racks (furniture), hat racks of metal, shoe cabinets; Retailing and wholesaling in department stores, shops and online in relation to shoe racks, work counters (furniture), step ladders of wood, step ladders of plastic, hooks, not of metal, clothes hangers and clothes hooks, pillows, cushions, feather pillows, furniture coverings, household or kitchen utensils and containers, cutting boards for kitchen purposes, household or kitchen utensils, non-electric cooking pots and pans, stew-pans, food preparation implements, kitchen knives and cutlery, dishes, trays, combs and cleaning sponges; Retailing and wholesaling in department stores, shops and online in relation to brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, except building glass, glassware, porcelain and earthenware, glass flasks (containers), glass stoppers, glass caps, glass bowls, lamp-glass brushes, signboards of porcelain or glass, figurines (statuettes) of porcelain, earthenware or glass, drinking glasses; Retailing and wholesaling in department stores, shops and online in relation to glass (receptacles), crystal (glassware), enamelled glass, mosaics of glass, not for building, opal glass, opaline glass, painted glassware, works of art of porcelain, earthenware or glass, boxes of glass, busts of porcelain, earthenware or glass, wine racks (furniture), pots, hammocks, clocks, curried skins, imitation leather, worked or semi-worked hides and other leather; Retailing and wholesaling in department stores, shops and online in relation to fabric and textile goods, bed covers, bed clothes, tablecloths, towels, curtains, bed linen, tea towels, travelling rugs (lap robes), duvets, bed blankets, bath linen, except clothing, towels of textile, ticks (mattress covers), mattress covers, sleeping bags (sheeting), pillowcases, blankets, artificial plants, carpets, rugs, mats and matting, straw mats, cork mats and other materials for covering existing floors; Retailing and wholesaling in department stores, shops and online in relation to linoleum and other materials for covering existing floors, wall hangings (non-textile), wall hangings, not of textile, non-slip underlays, tealight holders, glass candlesticks, vases, waste paper baskets, laundry baskets, waste bins for household use, shoe horns, posters, lithographic prints, pictures, framed or unframed paintings (pictures), napkins, calendars, postcards, straws for drinking, parasols, covers for parasols; Retailing and wholesaling in department stores, shops and online in relation to parasol stands, curtain fittings, curtain rings, window blinds, signboards of wood or plastics, medicine cabinets, key cabinets, decorations and ornaments for Christmas trees, Christmas tree skirts, Christmas stockings, Christmas trees of synthetic material, gift wrap, gift bags, desk sets, desk blotters, aroma lamps, soaps and gels, reed diffusers, fire extinguishers, fire alarms, fire blankets, reflecting discs for wear, natural plants; Retailing and wholesaling in department stores, shops and online in relation to flowers, dressing gowns, aprons (clothing), furniture stops, magazine racks, display boards, pot holders, drying racks for washing, clothes hangers, cardboard household storage boxes, storage drawers (furniture).

2) European Union trade mark registration No 5 806 311 for the word mark ‘mio’

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.

The contested goods and services are the following:

Class 20: Cots; Cradles; Bassinettes; Infant walkers; Works of art of wood, wax, plaster or plastic; Pet cushions; Furniture fittings, not of metal; Mats for infant playpens; Door fittings, not of metal; Picture frames; Beds.

Class 35: Advertising; Publicity; Commercial administration of the licensing of the goods and services of others; Provision of an on-line marketplace for buyers and sellers of goods and services; Marketing.

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

Picture frames; beds are identically contained in both lists of goods (earlier mark 1).

The contested cots; cradles; bassinettes; infant walkers are included in the broad category of the opponent’s furniture for children (earlier mark 1). Therefore, they are identical.

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

The contested furniture fittings, not of metal; door fittings, not of metal are similar to the opponent’s furniture (earlier mark 1), as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested mats for infant playpens are similar to the opponent’s furniture (earlier mark 1), as they usually have the same producers, relevant public and distribution channels.

The opponent’s 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 (earlier mark 2) and the contested works of art of wood, wax, plaster or plastic have the same nature. Their purpose, in the broadest sense, may also be the same, for example to decorate. 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 coincide in other criteria.

Contested services in Class 35

Advertising; provision of an on-line marketplace for buyers and sellers of goods and services are identically contained in both lists of services (earlier mark 1).

The contested publicity; marketing are included in the broad category of the opponent’s advertising (earlier mark 1). Therefore, they are identical.

The contested commercial administration of the licensing of the goods and services of others are included in the broad category of the opponent’s business administration (earlier mark 1). Therefore, they are identical.

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 the public at large and at a professional public with specific knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased or provided.

c) The signs

MIO	MIOOO
Earlier trade marks	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 marks are the word marks ‘MIO’/‘mio’ and the contested sign is the word mark ‘MIOOO’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper or lower case characters.

Part of the relevant public, for example the Spanish-speaking public, will perceive the word ‘MIO’ in the earlier marks as ‘mine’. Although the verbal element of the contested sign, ‘MIOOO’, does not exist as such, it will, due to the mere repetition of the last letter ‘O’, also be associated by this part of the relevant public with the word ‘MIO’ meaning ‘mine’. For the remaining part of the relevant public, the verbal elements of the marks are not meaningful. In any case, as they are not directly related to the goods or services in question, they are distinctive.

Visually, the signs coincide in the letters ‘MIO’, which constitute the entire earlier marks and the first letters of the contested sign. However, they differ in the last two letters, ‘OO’, of the contested sign. Although the earlier marks are short, and therefore the two additional letters in the contested sign might be easily perceived, the fact that the last two letters are a mere repetition of the last letter of the earlier signs, ‘O’, means that these additional letters will have a reduced impact.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘MIO’, present identically in both signs. The pronunciation differs slightly in the two additional letters, ‘OO’, in the contested sign, which will merely prolong the sound of the letter ‘O’.

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. For part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public. The remaining part of the relevant public will perceive the signs as having the same meaning, and for that part of the relevant public the signs are 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 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier marks have an average degree of distinctiveness. The relevant public is the general public and a professional public whose degree of attention will vary 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 goods and services are partly identical and partly similar (to varying degrees).

The signs are visually similar to an average degree and aurally similar to a high degree. Conceptually, for part of the public the marks are identical and for the remaining part of the public the conceptual aspect does not influence the assessment of the similarity of the signs.

The earlier marks have three letters, while the contested sign has five letters; the verbal element of the earlier marks is, consequently, relatively short. The fact that the contested sign has two additional letters is considered relevant when evaluating the likelihood of confusion between the conflicting signs. However, these two additional letters in the contested sign are a repetition of the last letter of the earlier signs, ‘O’, which the signs have in common, and therefore the difference in these additional letters does not have a significant impact on the overall perception of the signs.

Taking into account the above, the similarities between the marks clearly outweigh their differences, so the relevant public might be led to believe that the contested goods and services come from the same undertaking as the opponent’s goods and services, or from economically linked undertakings, and this would be the case even for the part of the public with a higher than average degree of attention. According to the principle of interdependence mentioned above, the low degree of similarity between some of the goods is counterbalanced by the greater degree of similarity between the signs.

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 European Union trade mark registrations No 16 581 035 and No 5 806 311. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier European Union trade mark registrations No 16 581 035 and No 5 806 311 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

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

Chantal VAN RIEL

Saida CRABBE

Michal KRUK

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.