OPPOSITION No B 3 085 644

Flokk AB, Box 294, 571 23 Nässjö, Sweden (opponent), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)

a g a i n s t

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

On 10/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 644 is upheld for all the contested goods.

2. European Union trade mark application No 18 017 412 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 18 017 412 for the word mark ‘RHO’. The opposition is based on European Union trade mark registrations No 9 840 414 for the word mark ‘RH’ and No 5 446 034 . 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.

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 9 840 414.

1. The goods

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

Class 20: Office furniture, chairs, work chairs, office chairs.

The contested goods are the following:

Class 20: Work chairs; conference chairs; meeting chairs; chairs being office furniture; perch chairs, office perching chairs; office sit stand chairs.

Work chairs are identically contained in both lists of goods.

The contested conference chairs; meeting chairs; chairs being office furniture; perch chairs, office perching chairs; office sit stand chairs are included in the broad category of the opponent’s office chairs. Therefore, they are identical.

2. 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, as acknowledged by both parties, at average consumers and professionals.

The public’s degree of attentiveness will be relatively high, not only depending on price or because they are rather infrequent purchases, but mainly because the relevant goods are chairs for use during the workday and the purchase may contribute towards better posture and can affect the user’s health and, therefore, productivity.

3. The signs

RH	RHO
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).

Both signs are short word marks consisting of two and three letters respectively.

The earlier mark is the letters ‘RH’, which, despite some potential concepts, have no obvious meaning in relation to the relevant goods for any of the public and, therefore, is distinctive as a whole.

The contested sign ‘RHO’, as claimed by the applicant, might be perceived by part of the public as the 17th letter of the Greek alphabet (Ρ ρ). However, for the majority of the relevant public this word is meaningless and distinctive in relation to the goods at issue.

A substantial part of the relevant public will not associate the verbal elements of the signs with any meaning but will rather perceive them as fanciful words. Since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory. This will avoid having different scenarios.

Visually, the signs coincide in the letters ‘RH’, which are the only two letters of the earlier mark and the first two letters of the contested sign. However, they differ in the additional third letter of the contested sign, ‘O’, which has no counterpart in the earlier mark.

The fact that the earlier mark is identically reproduced at the beginning of the contested sign has a significant influence on the general impression conveyed by this sign, since 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 signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced by the relevant public letter by letter (‘R’/‘H’), whereas the contested sign will be pronounced by part of the public as a word (as one syllable) and by the remaining part of the public letter by letter (‘R’/‘H’/‘O’).

Therefore, the signs are not aurally similar for the part of the public that will pronounce the contested sign as one word but are similar to an average degree for the remaining part of the public.

Conceptually, 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 trade mark has a reputation and enjoys a high degree of distinctiveness as a result of its long-standing and intensive use among the relevant public in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted its observations accompanied by evidence to support its claim.

As a preliminary remark, in its observations the opponent indicates that the company was founded in 1977 by Rolf Holstensson (the mark ‘RH’ is his initials) in Sweden, as a small-scale production. The demand grew quickly and, between 1994 and 2007, RH established subsidiaries in Denmark, France, the Netherlands, Norway and the United Kingdom (UK). In 2017, and after several mergers and changes (e.g. Scandinavian Business Seating was founded in June 2007 by a merger of some companies, one of them being RH), the group was rebranded as Flokk. The company has more than 30 years of history, and has revolutionised the ergonomic office chair market and its mark ‘RH’ has been extensively used and marketed to build up international brand recognition. According to the opponent, ‘the group is the largest supplier of office chairs in Western Europe and the products are sold in more than 40 countries world wide’.

The opponent submitted, in particular, the following evidence:

• Annex 1: annual reports 2013-2018

The opponent provided a self-made chart listing the total revenues in the European Union and the total marketing costs for the whole group, Flokk, from 2013 to 2018. The currency is in Norwegian krone (NOK).

It also provided a copy of the annual reports for 2014, 2015, 2016 and 2017, where the sales appear specified per brand (inter alia, the ‘RH’ mark) and copies from Ernst & Young AS’s audited annual accounts confirming the turnover and operating profit figures for 2015, 2016 and 2017.

The reports show several pictures of office chairs with the ‘RH’ brand. This mark, along with others of the group, is considered one of the market leaders in the field of office chairs in many countries in Europe. ‘The RH Mereo chair continues to win major contracts, and is becoming the “standard” chair for more and more companies’.

• Annex 2: history book

Entitled ‘RHevolution. This is the story of RH 1977-2017’. The book, in English, shows the history of the company from its creation as a small-scale production to the present-day international company reputed in the office furniture market. It contains a chart that shows how the sales tripled between the 1990s and 2000, due to the development of the product, the export market, and advertising and marketing, and provides pictures of the different office chairs under the mark ‘RH’ through the years (e.g. RH 190, RH Support, RH Moveon, RH Activ Update).

• Annex 3: opponent’s website

Several extracts from the opponent’s website, www.flokk.com, dated 22/10/2019 showing the use of the mark ‘RH’, a brief explanation of its history, different projects, and pictures of the different models of office chairs available under this mark, as well as a link to download the RH Inspiration Lookbook.

• Annex 4: opponent’s blog

Several examples of blogposts taken from the blog for the ‘RH’ mark, such as: ‘Brand New RH Lookbook available online now’, dated 06/06/2018’; ‘Swedish housing experts look to RH for support in office relocation’, dated 12/09/2018; ‘RH showcase full range of possibilities in stylish photo sets’, dated 28/11/2017.

• Annex 5: article

Undated article, in English, from the magazine Mixmax about the Stockholm Furniture Fair, stating ‘the prize for innovative product display and sheer noise undoubtedly goes to RH’. The article shows pictures of different office chairs under the ‘RH’ mark.

• Annex 6: press releases issued by RH

Several articles, in English, issued by RH. The mark appears at the top.

• Undated article: ‘Haute Couture in the furniture industry: Launching the black panther of office chairs at Stockolm Furniture Fair’. An article introducing the RH chair line RH Ambio. It mentions that ‘The turnover since 2007 was 392 MSEK with a 67 percent profit on export. The largest export market is the United Kingdom’.

• Article dated October 2010: ‘Greenguard certification for RH’s main collection’. Greenguard is the largest independent certification programme for low-emitting products.

• Article dated March 2011: ‘RH designed for human performance’. This provides information about the ‘RH’ mark, such as its history and philosophy, and shows a timeline with pictures of different ‘RH’ office chairs through the years.

• Annex 7: brochures and catalogues

Undated brochure and catalogue, both in English, of different office chairs under the ‘RH’ mark, showing the mark . On the last page there is an address in the UK.

• Annex 8: research study

Evaluation of the RH Logic 400 office chair conducted by the Chalmers University of Technology in Gothenburg in collaboration with Stockholm University. The report shows that the chair provides good health effects in relation to sedentary work.

Although the evidence is not particularly exhaustive, it is nevertheless clear when examined as a whole that the mark ‘RH’ has been used since 1977 in relation to office chairs, and that it is generally known in the relevant territory in the product sector concerned. This can be clearly inferred from the history book (Annex 2), the extracts from the opponent’s website and blog (Annexes 3 and 4), the press articles (Annexes 5 and 6) and the catalogues (Annex 7). Furthermore, the annual reports (Annex 1) contain the history of the mark and the activities and perspectives of the opponent’s company (which is present in 40 countries with fully-owned subsidiaries in Denmark, France, Germany, the Netherlands, Sweden, and the UK), and indicate that the mark is associated with a high turnover and impressive sales (e.g. the number of chairs sold (in thousands) are 432 (2015), 421 (2014), 417 (2013), 433 (2012), 455 (2011)). The probative value of the annual reports, despite the applicant’s opinion, is substantially heightened since they were reviewed by independent auditors.

Therefore, having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

5. Global assessment, other arguments and conclusion

The goods are identical and they target the public at large, as well as professionals, who both display a relatively high degree of attention.

The signs are visually similar and, at least for part of the public, also aurally similar insofar as the earlier mark ‘RH’ is fully reproduced at the beginning of the contested sign. The signs have no meaning that could help to differentiate them.

The applicant argues that, since the signs are two short signs, the difference in the additional last letter of the contested sign (‘O’) is a relevant factor to consider when evaluating the similarity of the signs. Indeed, the Opposition Division agrees with the applicant that the signs are two short signs. However, 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 the present case, taking into account the enhanced distinctiveness of the earlier mark, it is likely that consumers will remember the identical beginnings of the signs when they encounter them in the market and will overlook or not remember the differing additional letter located at the end of the contested sign.

The applicant also refers to a previous decision of the Board of Appeal to support its arguments (18/10/2000, R 74/2000‑3, ELS / ILS (fig.)). However, the cited case is not relevant to the present proceedings because those signs are not comparable to the present ones. In the cited case the signs differ in their first letter, whereas in this case the signs have identical beginnings, which, as explained above, is of material importance when assessing the likelihood of confusion between the signs.

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 undertaking or economically linked undertakings. Indeed, taking into account that the earlier mark is completely reproduced at the beginning of the contested sign and that the goods are identical, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). For example, in the present case, consumers may think that the applicant’s sign refers to a special product line of the opponent’s goods.

The applicant further argues that it has been using the contested sign at least since 2003 and ‘it has an established reputation and goodwill within the office furniture market business’.

However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the public that will perceive both signs as meaningless. 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 9 840 414. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Sylvie ALBRECHT

Sofía SACRISTÁN MARTÍNEZ

Tzvetelina IANTCHEVA

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.