OPPOSITION No B 3 054 959

Helen of Troy Limited, The Financial Services Centre Suite 1, Ground Floor, Bishop’s Court Hill, BB14004 St. Michael, Barbados (opponent), represented by Società Italiana Brevetti S.P.A., Via Carducci, 8, 20123 Milan, Italy (professional representative)

a g a i n s t

Bejot Sp. z o.o., Wybickiego 2a, Manieczki 63-112, Brodnica k/Poznania, Poland (applicant) represented by Rumpel Spółka Komandytowa Rumpel I Partnerzy Częstochowska 1 a, 93-115 Łódź, Poland (professional representative) and Bartłomiej Emil Fijałkowski, Al. Kościuszki 52/5 Łódź, Poland (professional representative).

On 16/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 959 is upheld for all the contested goods.

2. European Union trade mark application No 17 707 911 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 17 707 911, ‘OXXO’ (word mark). The opposition is based on, inter alia, Italian trade mark registration No 502 016 000 127 731 ‘OXO’ (word mark). 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 Italian trade mark registration No 502 016 000 127 731.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 20: Furniture and furnishings; beds, bedding, mattresses, pillows and cushions; frames; mirrors (silvered glass); indoor blinds, and fittings for curtains and indoor blinds; clothes hangers and clothes hooks; containers, and closures and holders therefor, non-metallic; baskets, non-metallic; fasteners, non-metallic; trays, not of metal; removable mats or covers for sinks; displays, stands and signage, non-metallic; parts and fittings of all the aforesaid goods, included in the class.

The contested goods are the following:

Class 20: Office furniture; chairs being office furniture.

The contested office furniture; chairs being office furniture are included in the broad category of the opponent’s furniture and furnishings. 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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will be average.

c) The signs

OXO	OXXO
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs are word marks. They consist of the same word, ‘OXO’, which has an additional letter ‘X’ in the contested sign. The signs are meaningless and have an average degree of distinctiveness.

Visually, the signs coincide in the letters ‘OXO’. However, they differ in the additional letter ‘X’ of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OX*O’, present identically in both signs. The sound of the additional ‘X’ will not be noticed.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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, and 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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and the degree of the public’s attention (the public at large and business customers) is average.

The signs are word marks, visually similar to a high degree and aurally identical. The signs consist of the same word except for an additional letter in the contested sign. Bearing in mind the identity between the goods, it is considered that the difference between the signs is not sufficient to outweigh their high degree of visual and aural similarity.

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).

In its observations, the applicant argues that its goods and customers are different to the opponent’s. However, this argument is of no relevance in the evaluation of these proceedings. When assessing likelihood of confusion, the signs have to be compared in relation to the goods and services for which they are protected, that is, in relation to the goods and services for which they are registered or for which registration is sought. The actual or possible use of the contested sign in relation to more specific goods is irrelevant when comparing the signs.

The applicant refers to previous decisions of the court of Justice to support its arguments. In the present case, the previous cases referred to by the applicant (inter alia, 17/02/2011, T‑385/09, Ann Taylor Loft, EU:T:2011:49; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177;) are not relevant to the present proceedings, because the signs at issue are different and, therefore, the conclusions in the current proceedings are based on different facts.

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 Italian trade mark registration No 502 016 000 127 731. It follows that the contested trade mark must be rejected for all the contested 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.

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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.