OPPOSITION No B 3 054 239

Forbo Financial Services AG, Linden Str. 8, 6340, Baar, Switzerland (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968, Köln, Germany (professional representative)

a g a i n s t

Diego Kereskedelmi és Szolgáltató Korlátolt Felelősségű Társaság, Beton utca 26., 2372 Dabas, Hungary (applicant), represented by Jalsovszky Law Firm, Csörsz u. 41, 1124 Budapest, Hungary (professional representative).

On 27/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 239 is partially upheld, namely for the following contested goods and services:

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings [non-textile].

Class 37: Repair; installation services.

2. European Union trade mark application No 17 675 802 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 17 675 802, . The opposition is based on international trade mark registration No 706 306 designating the European Union for the word mark 'STEP'. 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.

a) The goods and services

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

Class 27: Coverings for floors and hard floors, mats, carpets and rugs, linoleum; non-textile tapestry and wall coverings.

The contested goods and services are the following:

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings [non-textile].

Class 37: Building construction; repair; installation services.

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 27

The contested carpets, rugs, mats and matting, linoleum and other materials for covering existing floors are identical to the opponent’s coverings for floors and hard floors, mats, carpets and rugs, linoleum, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include or overlap with the contested goods.

The contested wall hangings [non-textile] are included in the broad category of the opponent’s wall coverings. Therefore, they are identical.

Contested services in Class 37

The applicant´s term repair; installation services do not provide a clear indication of what services are covered (see the Office´s Classification Guidelines). As set out in Article 33(2) EUTMR, it is the EUTM applicant’s responsibility to comply with the requisite standards of clarity and precision. An ambiguous, vague and broad specification cannot be interpreted in a way favourable to the EUTM applicant (09/07/2015, R 863/2011-G, MALTA CROSS + INTERNATIONAL + FOUNDATION (fig.) / Malteserkreuz (fig.), § 55; 11/11/2009, T-162/08, Green by missako, EU:T:2009:432, § 31;06/02/2014, C-301/13 P, Club Gourmet, EU:C:2014:235, § 66).

Since the applicant has not clearly specified its services, the Opposition Division considers that, without an express limitation, these services and the opponent´s goods have some points of contact at least as far as they concern producers/providers, distribution channels and targeted consumers may be the same. It follows that these services are considered to be similar to a low degree, at least to the opponent's goods in Class 27.

Finally, the contested building construction and the opponent's goods have nothing in common in terms of nature and purpose, distribution channels, sales outlets, producers, or method of use and they are neither in competition with each other nor complementary to each other. Therefore, 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 and services found to be identical or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is deemed to be average.

c) The signs

STEP
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign consists of several English terms and its word element 'STEP' which also forms the earlier mark will be understood by the English-speaking part of the public as referring to the action of lifting your foot and putting it down in a different place, or to a raised flat surface in front of a door. Nevertheless, 'STEP' has no meaning in relation to the goods and services at issue and therefore, it is distinctive to a normal degree for this part of the public. In view of the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘WOOD' of the contested sign will be associated with the material which forms the trunks and branches of trees. This material is often used as a building material and is often imitated in all sorts of other materials so as to provide the esthetics of natural wood. The expression 'LAMINATE FLOORING' will be understood by the public under analysis as referring to a type of floor covering, namely a multi-layer synthetic flooring product fused together with a lamination process. Laminate flooring simulates wood (or sometimes stone) with a photographic applique layer under a clear protective layer. Bearing in mind that the relevant goods are all sorts of coverings for floors as well as other goods that may be made to look like made of wood, and that the relevant services can be provided in relation to wooden materials or other materials that imitate wood, 'WOOD' 'LAMINATE FLOORING' are at best weak for the contested goods and services. Moreover, the latter element, will be perceived as occupying a secondary position within the sign as it is written in smaller characters below the words 'WOOD' and 'STEP'.

The contested sign further contains figurative elements such as a green rectangular background and a red dot as well as a specific typography applied to the word elements. These elements are not particularly elaborate or sophisticated and are therefore hardly distinctive of the relevant goods and services. In any event, it should be noted that 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).

Visually, the signs coincide in the letters 'STEP' whereas they differ in the way this word is represented in the contested sign as well as in the remaining elements of this sign. Taking into account the degree of distinctiveness of the different elements composing the signs at issue as well as the impact they have on consumers, the signs are similar to a low degree, at least.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛STEP’, present identically in both signs whereas it differs in the pronunciation of the word 'WOOD'. Taking into account the limited distinctiveness and the secondary position of the expression 'LAMINATE FLOORING', the Opposition Division considers that the public under analysis will not pronounce this element. Indeed, has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. Therefore, and taking also into account the limited distinctiveness of the element 'WOOD', the signs are similar to an average degree, at least.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the distinctive word 'STEP' but differ in the remaining elements of the contested sign of limited distinctiveness, the signs are conceptually similar to an average degree, at least.

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 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.

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 (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partly identical or similar to a low degree and partly dissimilar. The goods and services at issue are directed at the public at large as well as at business or professional customers and the degree of attention is average. The earlier mark is distinctive to a normal degree. The signs are visually similar to a low degree, at least and aurally and conceptually, they are similar to an average degree at least in that the earlier mark 'STEP' is entirely reproduced in the contested sign in which it is the only distinctive element and plays an independent role.

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, taking into account the limited distinctiveness of the word elements 'WOOD' and 'LAMINATE FLOORING' and the limited impact of the figurative elements of the contested sign, it is 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), for instance goods that are made of wood or imitate wood.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s International registration trade mark registration No 706 306 designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark.

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 goods and services cannot be successful.

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

Begoña URIARTE VALIENTE

Martina GALLE

Jorge ZARAGOZA GÓMEZ

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.