OPPOSITION No B 3 046 532

Sedus Stoll AG, Christof-Stoll-Straße 1, 79804 Dogern, Germany (opponent), represented by Pfeiffer Rechtsanwälte, Im Wallgraben 48, 79761 Waldshut-Tiengen, Germany (professional representative)

a g a i n s t

Abramis Sp. z o.o., ul. Łąkowa 52A, 05-092 Łomianki, Poland (applicant), represented by JWP Rzecznicy Patentowi Dorota Rzążewska Sp. k., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative).

On 30/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 532 is upheld for all the contested goods, namely:

Class 20: Boxes for fishing tackle, not specially adapted for fishing tackle; fishing stools; fishing chairs; camping chairs; deck chairs; camp beds; deck chairs.

2. European Union trade mark application No 17 492 307 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 492 307 for the figurative mark namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 11 175 536 for the word mark ‘terri tory’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected. If the earlier trade mark has been used in relation to only part of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The applicant stated that as the opponent uses the mark solely for one type of goods, namely modular storage space, it significantly limits the actual scope of protection of the earlier mark.

In this regard it must be stated that, firstly, the applicant has not submitted an explicit, unambiguous and unconditional request for proof of use. Secondly, the five-year grace period would apply in this case. This is because the date of filing of the contested trade mark is 17/11/2017 and the registration date of the earlier mark is 22/01/2013.

Therefore, since the applicant’s statement cannot be regarded as a valid request for proof of use and since the grace period applies, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use. As a consequence, the fact that the opponent of its own motion provided some pieces of evidence is irrelevant. This evidence will not be assessed due to the lack of an admissible request from the applicant and therefore the scope of protection of the earlier mark will not be limited.

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

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

Class 20: Furniture, in particular office furniture; chairs and tables for offices; chairs, easy chairs, pivot chairs, pivot easy chairs, desks, conference tables, side furniture, containers for files; parts and fittings of office furniture; accessories for conference and seminar rooms (included in class 20), namely pinboards, portable partitions, flipcharts, rostrums and clothes cupboards.

The contested goods are the following:

Class 20: Boxes for fishing tackle, not specially adapted for fishing tackle; fishing stools; fishing chairs; camping chairs; deck chairs; camp beds; deck chairs.

An interpretation of the wording of the lists of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested fishing chairs; camping chairs; deck chairs are included in the broad category of the opponent’s chairs. Therefore, they are identical.

Moreover, as the opponent’s furniture, in particular office furniture covers all different kinds of furniture, including garden and camping furniture (not only office furniture as the applicant seems to assume), the contested camp beds and fishing stools are identical to the opponent’s goods. This is because the latter includes stools in general, including the ones for camping, garden or fishing; it also includes garden daybeds, camp beds etc.

As for the contested boxes for fishing tackle, not specially adapted for fishing tackle it must be noted that the wording of these goods is misleading. Fishing tackle boxes, as such, should be, according to the Nice Classification, classified in Class 28 with other fishing accessories. However, as in this case the applicant specifically mentioned that the boxes are not specially adapted for fishing tackle, these goods are considered to be multipurpose boxes that could, among other purposes, be used for storing fishing tackle. In this case these goods are identical to the opponent’s furniture. This is because furniture includes items that are used to store things, including boxes such as blanket boxes, glory boxes and many different multipurpose boxes, especially made of wood or plastic. Therefore, these goods could overlap with the contested 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 and business customers. Contrary to applicant’s arguments, the public does not solely consist of professionals (namely interior designers and fishermen). This is because the majority of the general public chooses its furniture by itself; moreover, fishing chairs and fishing stools are aimed at leisure fishing customers rather than the fishing industry.

The Opposition Division considers that the degree of attentiveness of the public is average.

3. The signs

terri tory
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 verbal element ‘territory’ of the contested mark is meaningful in those countries where English is understood. It will be associated with an area of land, or sometimes sea, that is considered as belonging to or connected with a particular country or person (extracted from the Cambridge Dictionary on the 13/05/2019 at https://dictionary.cambridge.org/dictionary/english/territory). Therefore, the meaning of this verbal element has no direct connections with the goods at issue and thus must be considered distinctive. The earlier mark consists of the same verbal element; however, split in two parts ‘terri tory’. Contrary to the applicant’s arguments, at least the English-speaking public will immediately identify the mark with the word ‘territory’ and will associate it with its meaning.

Consumers are used to words being modified to some extent in trade marks; therefore, it is unreasonable to believe that adding a space in the middle of a meaningful word will preclude the public from understanding the mark as a whole. Even if some of the English-speaking consumers also perceive the earlier mark as a play on words/names ‘Terri’ (a female given name) and ‘Tory’ (another female name or a colloquial word for supporters of the conservative party in the UK), these elements also form the clearly perceivable word ‘territory’. Therefore, since having a meaningful element in common could approximate the signs conceptually, and since English-speaking consumers are more likely to perceive the earlier mark with the same meaning as the contested mark, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that speaks English as their first or second language.

The figurative stylisation of the contested sign is of a purely decorative character and therefore, it has at most a weak distinctive character. The simple, black, italic font and the two ellipses below the verbal element merely bring the verbal element to the attention of the public. For the majority of consumers the figurative elements do not create any additional concept nor are they visually striking. Moreover, even if part of the public perceives the ellipses as circles on water (for example created by a fishing rod float), this will only allude to the character of the goods as fishing accessories. Therefore, the concept of circles on water, even if perceived, will have at most a very weak distinctive character.

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). Moreover, as the perception of the ellipses as circles on water is not obvious, and as the verbal element is dominant in the sign (due to its size and position on top of the figurative element), the impact of the figurative element on the visual impression is minimal.

Visually, the signs coincide in the sequence of letters ‘TERRITORY’. They differ in the fact that in the earlier mark, the elements ‘TERRI’ and ‘TORY’ are separated by a space whereas in the contested mark they form a single word. Furthermore, the marks differ in the figurative stylisation of the contested sign, which however must be considered to have at most a weak distinctive character, as mentioned above.

Therefore, as the signs differ only in irrelevant aspects, which will have a small impact on the visually impression created by the marks, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TERRITORY’, present identically in both signs. The space (pause) between the two elements ‘terri’ and ‘tory’ is barely perceptible in the pronunciation of the earlier sign. Therefore, the signs are aurally at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs have a meaning for the relevant public that is not related to the goods in question and therefore is distinctive. As both signs will be perceived as ‘TERRITORY’, the signs are conceptually identical.

Moreover, if part of the public also perceives the other possible meanings in the earlier sign (which might, however, not always be the case), the signs as a whole will still remain highly similar conceptually, due to the coinciding concept of territory, which dominates the impression created by the marks.

Likewise, even if part of the public notices and associates the figurative element of the contested sign with circles on water, this additional concept, being at most weak, will not be enough to further conceptually differentiate the signs. Therefore, at least a high degree of similarity cannot be denied in any scenario.

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.

In its submissions dated 14/02/2019 the opponent stated that it had claimed enhanced distinctiveness of its earlier mark in the relevant time limit (within the substantiation period). In this regard it must be noted that although it is doubtful if the assertions from 18/09/2018 (regarding the use of the earlier mark) could be regarded as an explicit and unambiguous claim of enhanced distinctiveness, and the evidence submitted to support this alleged claim was filed late, for the reasons of procedural economy, the Opposition Division will not further investigate these issues (see below in ‘Global assessment’).

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).

In the present case, the goods are identical. The marks are visually highly similar and aurally at least highly similar. It is probable that the difference between the signs arising from the fact that, in the contested mark, the words ‘terri’ and ‘tory’ are separated by a space, whereas in the earlier mark they form a single word, will be barely perceptible to the consumers. It follows that both marks will evoke an identical concept of territory (regardless of whether any other concepts are evoked by the earlier sign). Average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them. Furthermore, the differing figurative element, which could be perceived as circles on water or a decorative element, also cannot counteract the considerable similarities between the marks. This is because it has a purely decorative role in the contested trade mark.

The argument of the applicant that the parties operate in different fields does not remove the likelihood of confusion. For the purpose of these proceedings, the goods both parties actually manufacture or the kind of customers they actually have is irrelevant. The goods have to be compared as they appear on the register and as they are listed in the application before the Office (11/11/2010, R 1327/2010-2, MONELLA VAGABONDA VIP (FIG MARK) / VAGABOND et al., § 25). The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary over time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Considering all the above, there is a likelihood of confusion on the part of the English-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 175 536. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to address the issues regarding the enhanced degree of distinctiveness of the opposing mark due to its extensive use. The result would be the same even if the Opposition Division accepted the claim, analysed the belated evidence and found that the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Claudia MARTINI

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.