OPPOSITION No B 3 058 738

Espadesa Retail Sociedad Limitada, Ronda del Ferrocarril, No 24, Plataforma Logística Zaragoza (Plaza), 50197 Zaragoza, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Bekaertdeslee Innovation, Deerlijkseweg 22, 8790 Waregem, Belgium (applicant), represented by Ifori, Victor Braeckmanlaan 107, 9040 Gent, Belgium (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 738 is partially upheld, namely for the following contested goods:

Class 20: Mattresses; bed bases; bedding (except textiles), cushions and headrests (furniture); beds; bedroom furniture.

Class 24: Textile goods, not included in other classes; mattress covers; bed blankets; shams; duvet covers; duvets; bed linen; fitted sheets; quilts; tick [linen]; mattress covers; sleeping bags.

2. European Union trade mark application No 17 869 014 is rejected for all the above goods. It may proceed for the remaining goods, namely textiles in Class 24, and all the non-contested services in Class 42.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 869 014 for the figurative mark , namely against all the goods in Classes 20 and 24. The opposition is based on Spanish trade mark registration No 3 007 788 for the figurative mark and Spanish trade mark registration No 3 518 201 for the word mark ‘BED’S’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) 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 Spanish trade mark registration No 3 518 201, which is not subject to proof of use.

a) The goods and services

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

Class 20: Beds, mattresses, spring mattresses, pillows and furniture.

Class 35: Wholesale and retail services in commerce, as well as through global computer networks of beds, mattresses, spring mattresses, pillows and furniture; services of granting franchise contracts.

The contested goods are the following:

Class 20: Mattresses; bed bases; bedding (except textiles), cushions and headrests (furniture); beds; bedroom furniture.

Class 24: Textiles and textile goods, not included in other classes; mattress covers; bed blankets; shams; duvet covers; duvets; bed linen; fitted sheets; quilts; tick [linen]; mattress covers; sleeping bags.

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

Mattresses; beds are identically contained in both lists of goods.

The contested bed bases; headrests (furniture); bedroom furniture are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested bedding (except textiles) includes, as a broader category, or overlaps with, the opponent’s mattresses. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cushions overlap with the opponent’s pillows and are, therefore, identical.

Contested goods in Class 24

The contested textile goods, not included in other classes; mattress covers; bed blankets; shams; duvet covers; duvets; bed linen; fitted sheets; quilts; tick [linen]; mattress covers and the opponent’s beds, mattresses in Class 20 are similar as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary and some of the goods also coincide in their purpose of use.

The contested sleeping bags and the opponent’s mattresses in Class 20 are similar insofar as the latter goods include camping mattresses that are used for sleeping using a sleeping bag. These goods have the same purpose of use and are complementary. Furthermore, they coincide in relevant public and distribution channels.

The contested textiles are raw materials for manufacturing a wide variety of products, typically clothing, but also, for example, the opponent’s mattresses or pillows.

The contested textiles are dissimilar to all the goods and services for which the earlier mark is registered in Classes 20 and 35, since they have nothing relevant in common that could justify finding a level of similarity between them.

Although the contested textiles could be used as a raw material for the production of the opponent’s mattresses or pillows, it is only one of several materials used in the production process. Moreover, the degree of transformation of those textiles into mattresses or pillows is very high. Therefore, this cannot give rise to any degree of similarity between them.

Furthermore, the contested textiles and the opponent’s wholesale and retail services in commerce, as well as through global computer networks of beds, mattresses, spring mattresses, pillows and furniture in Class 35 are not similar either. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail/wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail/wholesale services of specific goods covered by one mark and the specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not 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 or similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

BED’S
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 applicant argued that the common element or the string of letters ‘BED’ was non-distinctive because it described the goods sold under the respective signs. The applicant referred to figures published by the Spanish National Statistical Office according to which 42.5 % of Spanish adults speak English; according to EF EPI (Education First English Proficiency Index), the Spanish public has a moderate English skill level. The applicant claimed that a large part of the Spanish population would know the English word ‘bed’ and, therefore, the element ‘BED’ had to be seen as non-distinctive.

Although a large portion of the Spanish public would know the English word ‘bed’, as argued by the applicant, there is still a significant part of the Spanish public that does not speak English and would not know the word ‘bed’. In this context, if a significant part of the relevant public for the goods or services at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. Consequently, in comparing the signs, it is necessary to take into account also the significant part of the Spanish public that does not speak English and for whom the element or string of letters ‘BED’, included in both marks, has no meaning and is, therefore, distinctive to an average degree.

The elements ‘BED’S’ of the earlier mark and ‘BEDR.’ of the contested sign have no clear meaning for a significant part of the relevant public and are, therefore, distinctive.

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. Consequently, the fact that the signs coincide in their beginning ‘BED*’ is particularly relevant in the present case.

Visually, the signs coincide in the sequence of letters ‘BED*’. However, they differ in their endings, namely the apostrophe and ‘S’ of the earlier mark and ‘R’ followed by a full stop of the contested sign. The contested sign is depicted in standard bold upper-case characters; however, this stylisation has practically no relevance for the visual comparison of marks.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BED*’, present identically in both signs. The pronunciation differs in the sound of the last letters of the signs, namely ‛S’/‛R’, as the apostrophe and the full stop have no bearing on the sound of the earlier mark and the contested sign respectively.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for a significant part of the public in the relevant territory. For this part of the public, the alleged play on words in the contested sign ‘BEDR.’ referring to ‘better’ or ‘beder’, as argued by the applicant, will not be understood. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

In view of the above findings, the overall impressions created by the signs are highly similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (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 a significant part 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 signs are visually and aurally highly similar and their conceptual aspect remains neutral; the goods are partly identical, partly similar and partly dissimilar. The degree of distinctiveness per se of the earlier trade mark is average. The level of attention of the relevant public, which is the public at large, will vary from average to high.

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).

In view of the above, and given the fact that a significant part of the relevant Spanish public does not speak English and will not understand the English word ‘bed’, it is likely that this part of the public will confuse the commercial origin of the identical or similar goods sold under the signs at issue.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 518 201.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As identity or 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 cannot be successful.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on earlier Spanish trade mark registration No 3 007 788 for the figurative mark .

This earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements (script stylisation, label-like background, grey and white colours), which are not present in the contested trade mark. Moreover, it covers the same scope of the goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain and Portugal.

As the opposition is based solely on two Spanish trade marks, the claimed reputation in Portugal is irrelevant, because it has no impact on the assessment of the present opposition in the territory of Spain, which is the territory where the earlier marks are protected.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 07/03/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely the following (the list is the same for both earlier marks):

Class 20: Beds, mattresses, spring mattresses, pillows and furniture.

Class 35: Wholesale and retail services in commerce, as well as through global computer networks of beds, mattresses, spring mattresses, pillows and furniture; services of granting franchise contracts.

The opposition is directed against the following remaining goods:

Class 24: Textiles.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 05/09/2018, the opponent submitted the following evidence:

 Annex 3: print-outs from the opponent’s website www.beds.es, dated in April 2018, mentioning that the ‘BED’S’ stores have been active in the field of bedding since 1985 and that currently there are more than two hundred ‘BED’S’ stores in Spain (and Portugal), which form the leading chain of stores in the bedding sector.

 Annex 4: a dossier with information about the ‘BED’S’ chain of stores to 2011. It states that by 2011 ‘BED’S’ had become the market leader in terms of the number of stores and turnover. It also mentions that the chain sells bedding articles of the main trade marks on the market, such as ‘Pikolin’ or ‘Bultex’.

 Annex 5: an undated technical data sheet showing several mattresses bearing the marks ‘Pikolin’ and ‘Bultex’ together with ‘BED’S’.

 Annex 6: articles from the Spanish websites www.infofranquicias.com, www.mundofranquicia.com and www.franquicia.net, dated in August 2017, stating, inter alia, that the ‘BED’S’ franchise has become the leading chain of stores in the area of bedding.

 Annex 7: two articles from the Spanish newspaper www.elconfidencial.com, dated 2008, stating that ‘BED’S’ is the first chain in its sector with 9 % of market sales and that it offers a wide range of bedding products from the main brands in the market.

At a later stage of the proceedings, namely on 31/05/2019, the opponent submitted the following evidence as proof of use of the first earlier trade mark:

 Annexes 1-6: invoices for the sale of various bedding goods, dated 2013-2018,

 Annexes 7 and 8: leaflets with information on the goods offered in ‘BED’S’ stores, dated 2013-2018,

 Annex 9: brochure with information about the external appearance and design of the ‘BED’S’ stores,

 Annex 10: the same as Annex 3 submitted on 05/09/2018,

 Annex 11: printouts from the opponent’s website, dated in May 2019, with a long list of ‘BED’S’ stores in Spain (and a few in Portugal) and their photographs,

 Annex 12: article from www.elconfidencial.com already submitted in Annex 7 on 05/09/2018.

On the basis of the evidence of reputation submitted on 05/09/2018, the Opposition Division concludes that both earlier trade marks have a reputation in Spain.

Although the evidence is quite limited, there are sufficiently clear indications that the earlier trade marks have been used for a substantial period of time (more than thirty years), that there are around two hundred ‘BED’S’ stores in Spain and that ‘BED’S’ was the market leader in 2008 and 2017 (this information coming from independent third parties).

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade marks, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to retail services in commerce of beds, mattresses, spring mattresses, pillows and furniture, whereas there is no or little reference to the remaining goods (mattresses, beds, etc.) and services (wholesale, sale through global computer networks). All the evidence shows that the earlier trade marks are known only as a chain of brick-and-mortar retail stores selling bedding articles. Although the marks are sometimes shown on mattresses, together with the main brand of the mattress such as ‘Pikolin’ and ‘Bultex’, this does not make the marks reputed (i.e. known) for mattresses.

The additional evidence submitted on 31/05/2019 does not bring any further indications on the reputation for any other services or goods than the retail services mentioned above. Consequently, it is not necessary to assess this set of evidence in detail as a possible belated evidence of reputation, because it would not bring any wider scope of reputation than the one proven by the evidence of 05/09/2018.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. It has been found that the marks are visually and aurally highly similar and that the conceptual aspect remains neutral.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are highly similar visually and aurally. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The opponent’s reputed retail services in commerce of beds, mattresses, spring mattresses, pillows and furniture and the contested textiles in Class 24 are clearly dissimilar. Their nature is totally different, namely intangible retail services in shops versus tangible goods (textiles), which are raw materials for manufacturing other goods. The relevant public overlaps only to some extent, because the earlier marks target the public at large, whereas the contested goods essentially target professionals (manufacturers). It follows that the distribution channels of the opponent’s services and the contested goods are totally different. All in all, the relevant goods and services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public, despite the high degree of similarity of the marks and the reputation of the earlier trade marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

In view of the above, it is not necessary to examine the proof of use of the second earlier trade mark, because it would not have any impact on the outcome of the decision.

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

Marzena MACIAK

Vít MAHELKA

Chantal VAN RIEL

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.