OPPOSITION Nо B 3 080 866

John Cotton Group Limited, Nunbrook Mills, Mirfield WF14 0EH, United Kingdom (opponent), represented by Mathys & Squire Llp, Abbey House 32 Booth Street, Manchester M2 4AB, United Kingdom (professional representative)

a g a i n s t

Relief-Mart, Inc., 28505 Canwood St., Ste. C, 91301 Agoura Hills, United States of America (applicant), represented by Pintz & Partners Llc, Csepreghy Utca 2. II. Em., 1085 Budapest, Hungary (professional representative).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 866 is upheld for all the contested goods.

2. European Union trade mark application No 18 007 204 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 18 007 204 ‘Snuggle-Pedic’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 399 691 ‘SNUGGLEDOWN’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(4) and (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 European Union trade mark registration No 399 691.

a) The goods

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

Class 20: Furniture; pillows, bolsters and cushions (none being for surgical or curative purposes); mattresses (other than for childbirth purposes) and sleeping bags, all filled wholly or principally with down; beds and bedding (other than bed clothing); parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 20: Beds, bedding, mattresses, pillows and cushions.

The contested beds, bedding, pillows and cushions are identically contained in the opponent’s goods in Class 20.

The contested mattresses include, as a broader category, the opponent’s mattresses (other than for childbirth purposes), all filled wholly or principally with down. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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

c) The signs

SNUGGLEDOWN	Snuggle-Pedic
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs’ verbal elements are meaningful for the English-speaking consumers. Since the meaning conveyed for this part of the public enhances the sign’s conceptual similarities, the Opposition Division finds it appropriate to focus the comparison on this part of the public.

Although the earlier mark is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the relevant public will perceive the elements ‘SNUGGLE’ and ‘DOWN’ in the earlier mark.

The common element ‘SNUGGLE’ means ‘[s]ettle or move into a warm, comfortable position’ (information extracted from Lexico English Dictionary on 11/01/2021 at https://www.lexico.com/definition/snuggle). Contrary to the applicant’s arguments, although this meaning is allusive of an action carried out with the relevant goods, as it has no direct relationship with them, this element is considered distinctive.

The element ‘DOWN’ of the earlier mark may be seen, inter alia, as a preposition indicating ‘[f]rom a higher to a lower point of (something)’ or as a noun meaning ‘feathers taken from ducks or their nests and used for stuffing cushions, quilts, etc.’ (information extracted from Lexico English Dictionary on 11/01/2021 at https://www.lexico.com/definition/down).

Therefore, the element ‘DOWN’ may be perceived as emphasising the meaning of the element ‘SNUGGLE’ and, therefore, will be distinctive, or it may be perceived as a component of the opponent’s goods. In this latter case, it is a non-distinctive element since it describes the composition of the goods.

The element ‘Pedic’ of the contested sign will be perceived as an allusion to orthopaedic, which is ‘[r]elating to the branch of medicine dealing with the correction of deformities of bones or muscles’ (information extracted from Lexico English Dictionary on 11/01/2021 at https://www.lexico.com/definition/orthopaedic). Considering that the contested goods may have orthopaedic characteristics for healthcare, this element is considered weak for these goods.

The hyphen between the elements ‘Snuggle’ and ‘Pedic’ of the contested sign will be perceived as a punctuation mark and will have a reduced impact because it is commonly used.

The contested sign has no element that could be considered clearly more dominant than other elements.

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. Therefore, the fact that the coinciding element is at the beginning of the signs is relevant for the present case.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘SNUGGLE’. However, they differ in the earlier mark’s element/sound ‘DOWN’, which is non-distinctive if it is perceived as a component of the relevant goods. The signs also differ in the contested sign’s element/sound ‘-Pedic’, which is weak, and its non-distinctive hyphen.

Therefore, the signs are visually and aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, because of the coincidence in the element ‘SNUGGLE’, the signs are conceptually similar to an above-average degree.

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 the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark if perceived as a component of the opponent’s relevant goods, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are identical to the opponent’s goods. The relevant public is the public at large whose degree of attention varies from average to above average. The earlier mark’s degree of distinctiveness has been considered normal.

The marks are visually, aurally and conceptually similar to an above-average degree, since they coincide in the distinctive element ‘SNUGGLE’ placed at the beginning of the signs, which is the part where the public focus their attention first.

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 origin. Indeed, 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). In the present case, the reproduction of the first and distinctive element of the earlier mark at the beginning of the contested sign, with a weak element as a second element in the contested sign, may lead the public to see a new line of the opponent’s goods.

The hyphen between the elements ‘Snuggle’ and ‘Pedic’ in the contested sign is not enough to prevent that the trade mark applied for is seen as a mere variation of the former since it is common practice for undertakings to update its marks with such variations.

In its observations, the applicant argued that the earlier trade mark has a low degree of distinctiveness given that many trade marks include the element ‘SNUGGLE’. In support of its argument, the applicant referred to some trade mark registrations in the European Union and in the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SNUGGLE’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 399 691. It follows that the contested trade mark must be rejected for all the contested goods.

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.

As the earlier European Union trade mark registration No 399 691 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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

Saida CRABBE

Victoria DAFAUCE MENÉNDEZ

Marzena MACIAK

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.