CANCELLATION No 40 263 C (INVALIDITY)

DIY Element System GmbH, Stettiner Straße 1, 89616 Rottenacker, Germany (applicant), represented by df-mp Dörries Frank-Molnia & Pohlman Patentanwälte Rechtsanwälte PartG mbB, Fünf Höfe Theatinerstr. 16, 80333 Munich (professional representative)

a g a i n s t

Elfa International AB, Södra Tullgatan 3, 211 40 Malmö, Sweden (EUTM proprietor), represented by AWA Sweden AB, Jakobsbergsgatan 36, 11 44 Stockholm, Sweden (professional representative).

On 20/01/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 958 505 . The application is based on, inter alia, International trade mark registration No 1 309 901 designating the European Union and registered for goods and services in Classes 6, 20 and 35.

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the similarity of the signs is striking on account of the expressions ‘Create your space’ and ‘Creating space’, being the only differences between the signs in the company names ‘Element System’ and ‘elfa’ and in mere decorative elements. Furthermore, the goods are either identical or highly similar. All of this will mean that the consumers will confuse the origin of the goods.

The EUTM proprietor explains that it is a Swedish company well-known in Europe for its storage system solutions with customized sliding doors and wall-hung or free-standing wardrobe interiors as well as storage solutions for the garage, home office and hobbies. In relation to the marks, the proprietor refutes the applicant’s argument that ‘ELEMENT SYSTEM’ and ‘elfa’ will be viewed as company names and adds that the wordings “Create your space” and “CREATING SPACE” are of secondary importance in the conflicting marks. Therefore, the marks lack visual, aural and conceptual similarity, what excludes that the public might confuse the origin of the relevant goods.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s International trade mark registration No 1 309 901.

a) The goods and services

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

International trade mark registration No 1 309 901

Class 6: Metal parts for racks, namely fittings for furniture, consoles, shelves, perforated panels, bookends; wall rails, profile columns, metal supporting arms; metal tool holders, wire baskets, boxes, connectors and fasteners, ironmongery, fittings, mouldings, wall mounts and wall rail systems consisting thereof for the fixing of furniture and furniture parts, included in this class.

Class 20: Furniture; shelves for metal, of wood, glass, stone; racks and rack systems consisting thereof; cupboards, room dividers, consoles (furniture); mouldings for picture frames; wall mounts and wall rail systems consisting thereof, for the fixing of furniture and furniture parts, not of metal; racks mainly comprising metal parts; boxes, not of metal, connectors and fasteners, included in class 20; shelves for storage racks; consoles; perforated panels as parts of furniture.

Class 35: Wholesale and retail services in relation to goods included in classes 6 and 20, namely wall rails, profile columns, shelves, brackets, supporting arms, perforated panels, bookends, tool holders, ski supports, wire baskets, boxes, connectors and fasteners, ironmongery, fittings, mouldings, wall mounts and wall rail systems consisting thereof for the fixing of furniture and furniture parts, included in class 6, furniture, shelves for metal, of wood, glass, stone, racks and rack systems consisting thereof, cupboards, room dividers, consoles (furniture), mouldings for picture frames, wall mounts and wall rail systems consisting thereof, for the fixing of furniture and furniture parts, not of metal, racks mainly comprising metal parts, boxes, connectors and fasteners, included in class 20.

The contested goods are the following:

Class 6: Metal building materials; small items of metal hardware; fittings of metal for building and furniture; knobs of metal; clothes hooks of metal; rails of metal; doors frames and door panels of metal; sliding doors of metal; metal frames for sliding doors; furniture casters of metal; metal wires, metal wire netting, rail, brackets, standards, drawers, boxes, baskets, hooks, all of metal, constituting components in storing equipment.

Class 19: Building materials (non-metallic); doors, doors panels and door frames, not of metal; cornices, not of metal; wood panelling; cask wood; folding doors (not of metal); sliding doors (not of metal).

Class 20: Furniture; mirrors; doors for furniture; lockers; coat hangers; furniture shelves; edgings of plastic for furniture; clothes hooks, not of metal; cases of wood and plastic; furniture casters, not of metal; furniture partitions of wood; furniture fittings, not of metal; cupboard; wardrobes; sliding door wardrobes; interior fittings; shelves; baskets, not of metal; trays, not of metal; racks; shelf fittings; sliding doors for wardrobes and cupboards.

Some of the contested goods are identical to goods on which the application is based, for example furniture in Class 20. For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of construction among others. The degree of attention may vary from average to high depending on the exact nature and price of the goods.

c) The signs

Earlier trade marks	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The marks in conflict are figurative as they are composed of verbal and figurative elements. In the case of the earlier mark the verbal elements consist of the terms ‘ELEMENT’, ‘SYSTEM’ and ‘Create your space.’, the first two bigger in size and placed above the second; a figurative element in the form of three triangles that appears to the left of the first two elements. The mark is shown in white, blue and grey. In turn, the contested mark appears in red and black, with the expression ‘elfa®’ placed above ‘CREATING SPACE’.

The denominations ‘ELEMENT’ and ‘SYSTEM’ in the earlier mark are basic English words that will be understood by the relevant public, and given their meanings (‘(T)he different elements of something are the different parts it contains’ and ‘a way of working, organizing, or doing something which follows a fixed plan or set of rules’, respectively (Collins online dictionary, retrieved on 11/01/2021), they could describe characteristics of the goods in Classes 6 and 20; to set just some examples, ‘fittings’ could be also understood as ‘elements’ and ‘door frames and door panels’ could be a part of a ‘system’ in the sense of the ‘structure’ in a building.

Contrary to what the applicant states, the dominant elements in the marks are ‘ELEMENT’ and ‘SYSTEM’, as well as the figurative element in the earlier sign and elfa®’ in the contested EUTM due to their bigger size with respect to the remaining elements. Moreover, they are the first elements in the signs and hence, they will be perceived before the rest of the expressions and will stay longer in the memory of the consumers. So even if ‘ELEMENT’ and ‘SYSTEM’ are perceived as weak in respect of some goods, they are still visually outstanding, whereas ‘Create your space.’ and ‘CREATING SPACE’ are less relevant; not only because of their smaller size, but also because they are composed of English terms and their combination will be understood by part of the public as simple promotion slogans referring to the decorating of spaces, for example, and therefore as weak elements. Another part of the public, for example the Bulgarian and Polish public, will not understand the meaning of these expressions. As for the term ‘elfa’ of the contested mark, it is distinctive given that it means nothing in relation to the goods.

Visually, the dissimilarities between the marks overcome their links through the similar expressions on account of the dominance of the differing elements and (as regards the contested sign and for part of the public) the more distinctive charge of the dissimilar element elfa®’. Also, the figurative elements in the shape of the triangles and the different colours will contribute to differentiate between the marks. For all these reasons there is only a low degree of visual similarity between the signs.

Phonetically, for the public who understands the similar verbal elements, the dominant expressions are completely different, being the similar expressions subordinated to them, all of which accounts for a low degree of aural similarity. For the public who do not understand the similar expressions, the different terms ‘ELEMENT’, ‘SYSTEM’ and ‘elfa’ are still more dominant, and account must be taken of the fact that they will be pronounced first. Therefore, the degree of aural similarity is still low for this part of the public.

The Cancellation Division cannot agree that ‘ELEMENT’, ‘SYSTEM’ and ‘elfa’ will be perceived as company names; on the contrary, conceptually, the expression elfa®’ of the contested mark means nothing, whereas ‘ELEMENT’ and ‘SYSTEM’ in the earlier mark will be perceived with the meanings reflected above. For the public who do not understand ‘Create your space.’ and ‘CREATING SPACE’ the signs are not conceptually similar, whereas they are similar to a low degree on account of their meaning for the public who understand the expressions.

As it has been established that there is a certain degree of similarity between the mark (though low) 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 and services from the perspective of the public in the relevant territory. Therefore, its distinctiveness must be seen, on the whole, as normal, despite some weak elements.

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 (eighth
Recital 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 applicant states that the aural similarities between the mark are important in view of the fact that the day-to-day trade usually implies oral exchanges. However, in the case at issue the contested goods are in Classes 6, 19 and 20, being the goods in the first two cited Classes used as building materials, and those in Class 20 proper to the interior of buildings (furniture, etc.), which means that the consumers will purchase all of them after a visual inspection.

It has been established that visually, phonetically the marks have a low degree of similarity, as well as (at most) conceptually, because the links between them concern elements which are weak for part of the public or at any rate secondary within the overall impression given by the signs. Considering this the Cancellation Division finds that there is no likelihood of confusion on the part of the public (which includes the risk of association) even if, as in this case, the goods have been considered identical and despite a potential average degree of attention in relation to some goods. Therefore, the cancellation application must be rejected.

The applicant has also based its cancellation application on the German trade mark registration No 3 020 150 395 064 registered for goods and services in Classes 6, 20 and 35.

Since this mark is identical to the one already compared and cover the same or very similar goods, the outcome cannot be different. Therefore, there is no likelihood of confusion for this earlier right.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Richard BIANCHI

María Belén IBARRA DE DIEGO

Pierluigi M. VILLANI

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.