OPPOSITION No B 3 067 642

Gailarde Limited, Unit 2, Elstree Distribution Park, Elstree Way, WD6 1RU, Borehamwood, United Kingdom (opponent), represented by Kilburn & Strode Llp, Laapersveld 75, 1213 VB, Hilversum, Netherlands (professional representative)

a g a i n s t

Orangebox Ltd, Parc Nantgarw, CF16 7QU Cardiff, United Kingdom (applicant), represented by Bdb Pitmans Llp, 50 Broadway, SW1H 0BL London, United Kingdom (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 642 is upheld for all the contested goods.

2. European Union trade mark application No 17 928 316 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 17 928 316 ‘COZE’. The opposition is based on European Union trade mark registration No 14 541 668 ‘COZE’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

Regarding the applicant’s argument that the opponent did not substantiate its earlier right, the Opposition Division points out that according to the Office practice explained in the Guidelines “if the earlier mark is an EUTM, the opponent does not have to submit any documents as far as the existence and validity of the EUTM is concerned. The examination of the substantiation will be done ex officio with respect to the data contained in the Office’s database.”

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR and

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opponent also invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.

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

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

Class 20: Non-metallic bins, bean bags, indoor blinds, book shelves, wardrobes, cushions, clothes hangers, mattresses, pillows, plate racks, non-metallic storage racks, curtain rings, sleeping bags, sleeping mats, chairs, stools, non-metallic trays.

The contested goods are the following:

Class 20: Office furniture; office chairs; office seats; work chairs; furniture; specialist office furniture; sofas; high back sofas; low back sofas; chairs; Lounge chairs; high back chairs; wing back chairs; Barstools; dining chairs; booth seating with table; Furniture for offices; Chairs being office furniture.

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.

Chairs are identically contained in both lists of goods.

The contested office chairs; office seats; work chairs; lounge chairs; high back chairs; wing back chairs; dining chairs; chairs being office furniture are included in the broad category of the opponent’s chairs. Therefore, they are identical.

The contested barstools are included in the broad category of the opponent’s stools. Therefore, they are identical.

The contested furniture include, as broader category the opponent’s chairs. 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 office furniture; specialist office furniture; furniture for offices overlap with the opponent’s chairs as the contested goods can also be chairs. The goods are therefore identical.

The contested sofas; high back sofas; low back sofas; booth seating with table are all furniture items offering a comfortable seating for the users in a similar manner to the opponent’s chairs. The goods have therefore similar nature and purpose, can coincide in manufacturers, distribution channels and users. Contrary to the applicant’s arguments, the goods are similar.

b) The signs

COZE	COZE
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, and contrary to the arguments of the applicant, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these 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, 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

Rosario GURRIERI

Erkki MÜNTER

Christophe DU JARDIN

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.