OPPOSITION No B 3 087 081

Pascal Klein, Zietenstr. 42, 40476 Düsseldorf, Germany (opponent), represented by Kreuzkamp & Partner, Ludenberger Str. 1A, 40629 Düsseldorf, Germany (professional representative)

a g a i n s t

Woud A/S, Søndergade 43 1. tv., 8700 Horsens, Denmark (applicant), represented by Jakob Andersen, Havnegade 39, 1058 Copenhagen, Denmark (professional representative).

On 09/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 081 is partially upheld, namely for the following contested goods and services:

Class 20: Furniture; Sofas; Lounge chairs; Seating furniture; Benches [furniture]; Stools; Tables; Writing desks; Sideboards; Cupboards; Shelving units; Chests of drawers; Wall chests; Mirrors (silvered glass); Beds; Mattresses; Pillows and cushions; Coat hangers, clothes hangers; clothes stands [furniture] and clothes hooks; Freestanding partitions [furniture]; Containers, not of metal, for storage.

Class 21: Statues, figurines, plaques and works of art made from materials including porcelain, earthenware or glass, included in this class; porcelain, Kitchen utensils and containers; Glassware, porcelain and earthenware.

Class 35: Retailing and wholesaling, including online retailing and wholesaling relating to furniture, porcelain, glassware and earthenware.

2. European Union trade mark application No 18 009 011 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 009 011 for the verbal mark ‘WOUD’. The opposition is based on German trade mark registration No 302 016 111 140 for the verbal mark ‘WUUD’. 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.

a) The goods and services

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

Class 9: Recorded content; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; devices for treatment using electricity; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; eyeglasses, sunglasses.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; other goods of precious metals and precious stones, and information imitations relating thereto, namely statues and figurines made from or coated with precious metals or semi-precious metals or stones or imitations thereof, ornaments, coins and tokens made from or coated with precious metals or semi-precious metals or stones or imitations thereof, works of art of precious metal, key rings (trinkets or fobs); jewellery boxes and watch boxes; parts and accessories for all the aforesaid goods, included in this class.

Class 20: Furniture, mirrors, picture frames; goods, not included in other classes, made of wood, cork, cane, reed, wicker, horn, bone, ivory, whalebone, tortoiseshell, amber, mother-of-pearl, meerschaum and their substitutes or of plastics, namely grab bars and rails, joints for furniture, hooks and holders, protectors and supporters, rings, poles, tissue holders, trays; statues, figurines, works of art and ornaments and decorations, included in this class; furnishing articles; animal housing and beds; ladders and movable steps; display boards, standing desks, inflatable plastic signs; parts and accessories to all the aforementioned goods, included in this class; cupboards; seats; sofas; beds; furniture for kitchens; tables; armchairs.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brushes (except paintbrushes); material for brush-making; cleaning articles; steel wool; glass, unworked or semi-worked, except building glass; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (included in this class); statues, figurines, signs and works of art, included in this class; brooms, and brush making materials; tableware, cookware and containers; articles for cleaning purposes; cosmetic and toilet utensils and bathroom articles; parts and accessories for all the aforesaid goods, included in this class; wooden cutting boards; carving boards.

Class 37: Construction industry; repair services relating to goods and wood products mentioned in classes 09, 14, 20 and 21; installation services relating to goods and wood products specified in classes 09, 14, 20 and 21; Ladenbau shop fitting; rental, hire and leasing of property in connection with the aforesaid services, included in this class; consultancy and information relating to the aforesaid services, included in this class; services of joinery [repair]; Repair services of wood processing companies.

The contested goods and services are the following:

Class 11: Lighting apparatus; LED illuminators; Electric discharge lighting fixtures and electric lighting installations; Apparatus for lighting, including lamps, pendant lamps, desk lamps, light bulbs, lighting fixtures, reflectors, light projectors, light diffusers, being parts of lighting installations.

Class 20: Furniture; Sofas; Lounge chairs; Seating furniture; Benches [furniture]; Stools; Tables; Writing desks; Sideboards; Cupboards; Shelving units; Chests of drawers; Wall chests; Mirrors (silvered glass); Beds; Mattresses; Pillows and cushions; Coat hangers, clothes hangers; clothes stands [furniture] and clothes hooks; Freestanding partitions [furniture]; Containers, not of metal, for storage.

Class 21: Statues, figurines, plaques and works of art made from materials including porcelain, earthenware or glass, included in this class; porcelain, Kitchen utensils and containers; Glassware, porcelain and earthenware.

Class 35: Advertising; Business management; Business administration; Office functions; Direct mail advertising; Professional business consultancy; Sample distribution; Retailing and wholesaling, including online retailing and wholesaling relating to furniture, candles, porcelain, glassware and earthenware.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The Opposition Division notes that the opponent’s list of goods and services contains obvious translation mistakes, omissions and additions. For instance, ‘recorded data’ in Class 9 was translated slightly inaccurately with recorded content. The same applies to ‘equipment for physical reactions by means of electricity’ which was translated as devices for treatment using electricity. The wording ‘parts and accessories for all the aforesaid goods, included in this class’ at the end of Class 9 is missing in the translated text. The term ‘imitations’ in Class 14 was wrongly translated as information. In Class 20, inflatable plastic signs is not contained in the original text. Furthermore, the term ‘Ladenbau’ in Class 37 was not translated at all.

In particular, the fact that the term ‘Ladenbau’ remained untranslated could lead to the opposition being partially or even wholly unsubstantiated. Nevertheless, it must be borne in mind that these translation issues do not have a material impact on the scope of protection of the earlier mark and, consequently, on the outcome of the decision.

‘Ladenbau’ means ‘shop fitting’, and is the trade of fitting out retail and service shops and stores with equipment, fixtures and fittings. A shop fitter executes planning, designs shop layout and installs equipment and services and typically has professional expertise in interior design, manufacturing of bespoke furniture, signage and fittings (with own or outsourced facilities) and purchasing of retail equipment. The term thus overlaps with the terms ‘construction industry’ as well as, and primarily, ‘installation services relating to goods and wood products specified in classes 09, 14, 20 and 21’. Thus, the activities which define ‘Ladenbau’ are (at least partly) covered by the other terms in the list of the opponent’s goods. As a consequence, the untranslated term ‘Ladenbau’ does not add a broader protection to the opponent’s mark vis-à-vis the contested goods and services. It will be covered in the comparison of the goods and services by the other terms in Class 37.

Therefore, for the purposes of the comparison, the Opposition Division will replace the obviously incorrect translations by what it deems appropriate, where this is necessary.

Contested goods in Class 20

Furniture; sofas; tables; cupboards; beds are identically contained in both lists of goods.

The contested lounge chairs; seating furniture; benches [furniture]; stools; writing desks; sideboards; shelving units; chests of drawers; wall chests; freestanding partitions [furniture]; containers, not of metal, for storage and clothes stands [furniture] are included in the broad category of, or overlap with, the opponent’s furniture. Therefore, they are identical.

The contested coat hangers, clothes hangers; clothes hooks are included in the broad category of, or overlap with, the opponent’s hooks and holders; parts and accessories to all the aforementioned goods, included in this class. Therefore, they are identical.

The contested mirrors (silvered glass) are included in the broad category of, or overlap with, the opponent’s mirrors. Therefore, they are identical.

The contested mattresses; pillows and cushions and the opponent’s furniture target the same consumers, are sold through the same channels and, furthermore, they are complementary. In addition, mattresses and cushions have the same purpose as furniture and mattresses and pillows have the same producers as the opponent’s good. Consequently, these goods are similar.

Contested goods in Class 21

Glassware, porcelain and earthenware are identically contained in both lists of goods (taking into account the slightly different wording of the term in the opponent’s list of goods in Class 21, which are specified to be included in this class).

The contested statues, figurines, made from materials including porcelain, earthenware or glass, included in this class are included in the broad category of, or overlap with, the opponent’s statues, figurines, included in this class. Therefore, they are identical.

The contested plaques and works of art made from materials including porcelain, earthenware or glass, included in this class are included in the broad category of, or overlap with, the opponent’s signs and works of art, included in this class. Therefore, they are identical.

The contested porcelain, kitchen utensils and containers (which the Opposition Division understand to mean ‘kitchen utensils and containers made of porcelain’) are included in the broad category of, or overlap with, the opponent’s household or kitchen utensils and containers. Therefore, they are identical.

Contested goods in Class 11

The contested lighting apparatus; LED illuminators; electric discharge lighting fixtures and electric lighting installations; apparatus for lighting, including lamps, pendant lamps, desk lamps, light bulbs, lighting fixtures, reflectors, light projectors, light diffusers, being parts of lighting installations are all products for emitting light and/or their parts. These goods are dissimilar to the opponent‘s goods in Class 9, being essentially scientific research and laboratory apparatus as well as measuring, detecting and monitoring instruments and eyeglasses, since they are of different nature and purpose. They are neither in competition nor complementary. It is unlikely that they will be produced by the same manufacturers, and they are generally distributed through different channels. And the mere fact that the contested goods are (also) powered by electricity is not sufficient for finding similarity.

Furthermore, the above mentioned contested goods are also dissimilar to the remaining goods and services in Class 20 (essentially furniture and furnishing articles made of various materials, including their parts and accessories), Class 21 (essentially household and kitchen utensils and containers, cleaning articles, and cosmetic and toilet utensils and bathroom articles, including their parts and accessories), Class 14 (essentially, goods of precious metals and precious stones, time instruments, including their parts and accessories) and the services in Class 37 (essentially construction industry and installation services) of the earlier mark. They have no relevant commonalities as they are of different nature, purpose and originate from different undertakings. They do not target the same relevant public and do not use the same distribution channels. Finally, they are neither in competition nor complementary.

Specifically, the opponent’s repair services relating to goods and wood products mentioned in classes 09, 14, 20 and 21 as well as installation services relating to goods and wood products specified in classes 09, 14, 20 and 21 in Class 37 do not refer to Class 11 or, more in particular, to the goods in Class 11 at issue in the present case. Thus, there are no relevant commonalities with these specific services either.

Contested services in Class 35

The contested advertising; business management; business administration; office functions; direct mail advertising; professional business consultancy; sample distribution either refer to advertising or to business-related services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. All this is clearly linked to the contested business administration; office functions and professional business consultancy.

Taking the aforementioned into account, the contested advertising; business management; business administration; office functions; direct mail advertising; professional business consultancy; sample distribution are dissimilar to the opponent‘s services in Class 37 (essentially construction industry and installation services), since they are of different nature and have a different purpose. They are neither in competition nor complementary. It is unlikely that they will be provided by the same undertaking, and they are generally distributed through different channels to different end consumers.

In particular, the opponent’s construction industry and installation services relating to goods and wood products specified in classes 09, 14, 20 and 21 in Class 37 do not relate to the above contested services in Class 35. ‘Installation’ in this context refers to the action of setting up or fixing in position for service or use, of a mechanical apparatus for instance. The term ‘construction industry’ refers to a specialised branch of the economy which focuses on the building, maintaining, and repairing of structures. These services are not provided by the same providers, and they are generally distributed through different channels. The installation services do not refer to the services in Class 35 and therefore do not show any commonalities either.

Furthermore, the contested advertising; business management; business administration; office functions; direct mail advertising; professional business consultancy; sample distribution are also dissimilar to the remaining goods in Classes 9, 14, 20 and 21, as described above, of the earlier mark. They have no relevant commonalities as they are of different nature, purpose and originate from different undertakings. They do not target the same relevant public and do not use the same distribution channels. Finally, they are neither in competition nor complementary.

It should be added that specifically advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

The contested retailing, including online retailing relating to candles and the opponent’s goods in Classes 9, 14, 20 and 21 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods sold at retail (candles) are dissimilar to the opponent’s goods in Classes 9, 14, 20 and 21.

In addition, the contested retailing, including online retailing relating to candles are dissimilar to the opponent’s services in Class 37. The latter show no commonalities with the contested retailing and wholesaling services in Class 35. They have different purposes, stem from different providers and target different consumers.

By contrast, retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing, including online retailing relating to furniture, porcelain, glassware and earthenware are similar to the opponent’s furniture in Class 20 and glassware, porcelain and earthenware (included in this class) in Class 21.

The principles applied above to the retailing services apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services in Class 35. Therefore, the contested wholesaling, including online wholesaling relating to candles are dissimilar to the opponent’s goods and services (for the same reasons as set out above) while the contested wholesaling, including online wholesaling relating to furniture, porcelain, glassware and earthenware are similar to the opponent’s goods listed above (for the same reasons as set out above).

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 and services found to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise.

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

c) The signs

WUUD	WOUD
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

It cannot be excluded that both or any of the two marks at issue could be understood by a part of the German-speaking consumers as a word resembling ‘Wut’, the term for ‘anger’ in German. However, contrary to what the opponent alleges, even though there might be a phonetic resemblance when the signs are pronounced by German speakers (at least as regards the earlier sign, the contested sign is already markedly different), they are visually so far removed from the term ‘Wut’ in German that the overwhelming majority of the relevant public would not recognise the meaning ‘Wut’ in either of the signs. In addition, the applicant argues that the earlier mark will be identified with the English word ‘wood’ by the relevant consumers. However, this is equally unlikely as this term is not part of the basic English vocabulary which all consumers in the relevant territory understand. The equivalent term in German is ‘Holz’ or ‘Wald’, two completely different words. Also, German speakers pronounce the earlier mark with a long ‘U’ while the English term ‘wood’ is pronounced with a short sharp ‘U’, thus there is also no phonetic resemblance either.

Independently of whether the signs will be understood or not, they do not convey any meaning related to the relevant goods and services and are, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence of the letters/sounds ‘W*UD’ placed in the same position in both signs. Visually, they differ in their second vowels ‛U/O’ the pronunciation of which, however, is not strikingly different. The fact that the relevant consumers will pronounce the vowels O-U as closely drawn together (similar to an umlaut like ‘au’ or ‘eu’ in German) will not create a remarkable phonetic difference.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. 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.

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 and services 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, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services are partially identical or similar and partially dissimilar to those of the earlier mark and are directed at the public at large and professionals, who will display an average to high degree of attention. The signs in dispute have been found to be visually and aurally similar to a high degree due to the fact that they share three identical letters out of four, all placed in the same order and position. Moreover, the differing letters (U/O) do not deviate too far from each other, at least from an aural point of view.

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 016 111 140. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Christian STEUDTNER

Holger KUNZ

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.