OPPOSITION No B 3 049 430

Billerbeck Betten-Union GmbH & Co. KG, Eppinger Strasse 40 - 44, 76703 Kraichtal, Germany (opponent), represented by Nonnenmacher Rechtsanwälte Partnerschaft mbB, Opelstr. 8 c, 68789 St. Leon-Rot, Germany (professional representative)

a g a i n s t

Jin Chi (Hangzhou) trade limited liability company, Rm.725, No.28, Huancheng West Road, Xiacheng Dist, Hangzhou, Zhejiang, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative)

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 430 is partially upheld, namely for the following contested goods:

Class 20: Mattresses; cots for babies; cushions; pillows; mats for infant playpens; sleeping pads; indoor window blinds [shades] [furniture]; interior textile window blinds.

Class 24: Towels of textile; table napkins of textile; bath towels; bed covers; quilts; sheets [textile]; eiderdowns [down coverlets]; bed linen; household linen; ticks [mattress covers]; bed blankets; sleeping bags; comforters (bedding); table runners of textile; tablecloths, not of paper; place mats of textile; furniture coverings of textile; curtains of textile.

2. European Union trade mark application No 17 573 023 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 573 023 for the word mark 'Cosiness club', namely against some of the goods in Classes 20 and 24. The opposition is based on the following European Union trade mark registrations:

1. No 14 915 797 for the word mark 'Cosineck';

2. No 15 075 633 for the word mark 'COSIDORM';

3. No 14 915 731 for the word mark 'Cosicotton'; and

4. No 14 915 681 for the word mark 'Cosidream'.

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 registration No 14 915 797.

a) The goods

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

Class 20: Neck-supporting pillows; Cushions; Mattresses; Mattress toppers; Pillows; Bedding, except linen.

Class 24: Mattress covers; Ticks (mattress and pillow coverings); Bed blankets; Quilt bedding mats; Eiderdowns [down coverlets]; Quilts filled with down; Quilts; Woolen blankets; Bed clothes and blankets.

The contested goods are the following:

Class 20: Mattresses; cots for babies; cushions; pillows; mats for infant playpens; sleeping pads; indoor window blinds [shades] [furniture];interior textile window blinds.

Class 24: Towels of textile; table napkins of textile; bath towels; bed covers; quilts; sheets [textile];eiderdowns [down coverlets];bed linen; household linen; ticks [mattress covers];bed blankets; sleeping bags; comforters (bedding);table runners of textile; tablecloths, not of paper; place mats of textile; furniture coverings of textile; curtains of textile or plastic.

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

Cushions; mattresses; pillows are identically contained in both lists of goods.

The contested sleeping pads are similar to the opponent’s mattresses since they have the same purpose, target the same relevant public, share the same distribution channels and are produced by the same undertakings.

The contested cots for babies; mats for infant playpens are similar to the opponent’s bedding, except linen since they can target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The contested interior textile window blinds; indoor window blinds [shades] [furniture] (which also includes indoor textile window blinds) are, or can be, principally made of textile with a simple mechanism for covering or uncovering a window. Therefore, these goods are similar to the opponent’s bed clothes and blankets in Class 24 since, although they have a different purpose can have a similar nature of being (principally) textile goods that can target the same relevant public (seeking to purchase household textile goods), share the same distribution channels and be produced by the same undertakings.

Contested goods in Class 24

Quilts; bed blankets; eiderdowns [down coverlets] are identically contained in both lists of goods.

The contested bed covers include, as a broader category, the opponent’s quilts. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested ticks [mattress covers] are included in the broader category of the opponent’s ticks (mattress and pillow coverings). Therefore, they are identical.

The contested sheets [textile]; bed linen; comforters (bedding) are included in the broad category of the opponent’s bed clothes and blankets. Therefore, they are identical.

The contested household linen overlaps with the opponent’s bed clothes since both of these categories include goods such as bed sheets. Therefore, they are identical.

The contested sleeping bags are similar to a high degree to the opponent’s bed clothes and blankets since they have the same nature, purpose and method of use. Furthermore, the goods under comparison target the same relevant public, share the same distribution channels and are produced by the same undertakings.

The contested towels of textile; table napkins of textile; bath towels; table runners of textile; tablecloths, not of paper; place mats of textile; furniture coverings of textile; curtains of textile consist of or include different textile goods which are similar to the opponent’s bed clothes and blankets which are also textile goods and therefore have the same nature as the contested goods. Furthermore, the goods under comparison target the same relevant public (seeking to purchase household textile goods), share the same distribution channels and can be produced by the same undertakings active in the manufacture of textile goods.

However, the contested curtains of plastic are not textile goods and these contested goods are therefore unlikely to coincide in the same producers as those of the opponent’s goods which essentially concern mattresses, pillows and bedding (except linen) in Class 20 and bed clothes in Class 24. Furthermore, these goods do not have the same nature or purpose and are not complementary to each other or in competition. Therefore, even if the contested curtains of plastic may share the same distribution channels as the opponent’s goods, this is not sufficient for a finding of similarity between them. As a result, they are dissimilar.

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 found to be identical or similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Cosineck	Cosiness club
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 verbal elements in both signs will have a meaning for the English-speaking public in the relevant territory. In this respect, the word 'cosiness' in the contested sign is an English noun referring to 'the quality of being comfortable, pleasant, and warm' and the word 'club' means, inter alia, 'a group or association of people with common aims or interests'. As regards the earlier mark, the element 'cosi' is very close to the word 'cosy', meaning 'comfortable and warm', and the element 'neck' is an English word meaning 'the part of an organism connecting the head with the rest of the body'. Consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, even if the earlier mark is depicted as one verbal element, it will be broken down by the English-speaking public into the elements 'cosi' and 'neck' and associated with the meanings outlined above. Bearing in mind that the goods concerned essentially consist of bedding, bed clothes and other textile goods which are intended to provide comfort and warmth or may otherwise be intended to give a comfortable and pleasant home atmosphere, the concept of 'cosy' as explained above is as such non-distinctive. Since the signs in dispute, considered as a whole, convey different meanings, the English-speaking part of the public is less likely to confuse them merely on the basis of the coincidence in a concept that is non-distinctive as such or believe that there is an economic link between them.

However, the verbal element 'Cosineck' of which the earlier mark consists and the verbal element 'Cosiness' of the contested sign, which cannot be considered to consist of very basic English words, are not meaningful in certain territories where English is not generally spoken or understood and will therefore be perceived as a whole as fanciful words.

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.

Consequently, since the English-speaking public will more easily distinguish between the signs for the reasons set out above, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public in the relevant territory, such as that in Spain where the degree of familiarity of the public with the English language is generally held to be low (18/04/2007, Joined Cases T‑333/04 and T‑334/04, House of Donuts v OHIM – Panrico (House of donuts), ECLI:EU:T:2007:105, § 53 and the case-law cited).

As already outlined above, 'Cosineck' of the earlier mark and 'Cosiness' of the contested sign, will be perceived as meaningless words by the part of the public under analysis and they are, therefore, distinctive to a normal degree in relation to the goods concerned.

However, as regards the additional verbal element 'club' in the contested sign, it is also a Spanish word with the same meaning as that outlined above. Therefore, the verbal element 'club' will simply be perceived by the relevant public under analysis as meaning that the goods are provided by, or for, members of a club called ‘Cosiness’. Therefore, the word ‘club’ in the contested sign is non-distinctive (see by analogy 26/03/2010, R 888/2009-2, THE Club, § 20). Consequently, the verbal element 'Cosiness' is the only distinctive element of the contested sign for the part of the public under analysis and the element to which consumers will pay their attention when perceiving the sign. Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the only element of which the earlier mark consists and the first verbal element of the contested sign, which is its only distinctive element and the element to which consumers will pay their attention as explained above, coincide in the six letters/sounds ‘COSINE**’ present identically at the beginning of both signs and only differ in their respective last two letters/sounds ‘CK/SS’. The signs also differ in the additional word/sound ‘CLUB’ in the contested sign which is, however, non-distinctive and will therefore have little impact in the overall impression produced by the sign on consumers.

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

Conceptually, neither of the signs has a meaning as a whole for the part of the public under analysis. The word 'club' in the contested sign evokes a concept whereas the earlier mark is meaningless hence the signs are not conceptually similar. However, this does not constitute a significant difference between the signs given the non-distinctive character of the concept in question.

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 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 has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 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).

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.

Account should also be 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).

In the present case, the goods have been found partly identical or similar to varying degrees and partly dissimilar and the degree of attention of the relevant public is average.

The earlier mark has a normal distinctiveness and the signs have been found visually and aurally similar to an above average degree. Furthermore, there is no relevant conceptual difference between the signs for the part of the public under analysis that could otherwise help consumers to more easily distinguish between them.

In view of the considerable similarities between the signs and bearing in mind the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the Spanish-speaking part of the relevant public in the European Union within the meaning of Article 8(1)(b) EUTMR.

Indeed, even if the contested sign also introduces an additional verbal element that is not present in the earlier mark, it is non-distinctive and it is therefore highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 partly well founded on the basis of the opponent’s European Union trade mark registration No 14 915 797.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks which all cover the same goods in Classes 20 and 24 as those on which the opposition is based as listed above in section a) of this decision:

 No 15 075 633 for the word mark 'COSIDORM';

 No 14 915 731 for the word mark 'Cosicotton'; and

 No 14 915 681 for the word mark 'Cosidream'.

Since these marks cover the same scope of goods as the earlier mark for which a likelihood of confusion has been examined, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Furthermore, since the remaining contested goods are dissimilar to the opponent’s goods as covered by all the earlier marks invoked, there is no need to assess the opponent’s claim of a family of marks since a similarity of the goods at issue would still be a necessary condition for the application of Article 8(1)(b) EUTMR. Therefore, even assuming that the opponent has proven to have a family of marks characterised by the word 'Cosi' as claimed, no likelihood of confusion exists with respect to those goods.

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

Anna ZIOŁKOWSKA

Sam GYLLING

Begoña URIARTE VALIENTE

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.