OPPOSITION No B 3 089 864

memo AG, Am Biotop 6, 97259 Greußenheim, Germany (opponent), represented by Intellectual Property IP-Götz Patent- und Rechtsanwälte, Königstr. 70 Am Literaturhaus, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

‘тед - Инвест’ Еоод, Район Р-н Централен Бул. ‘шести Септември’ No 222A, 4000 Пловдив, Bulgaria (applicant), represented by IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).

On 26/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 864 is upheld for all the contested goods.

2. European Union trade mark application No 18 042 122 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 18 042 122 (figurative mark). The opposition is based on European Union trade mark registration No 5 390 588 ‘memo’ (word mark) and German trade mark registration No 302 013 055 007 ‘memo’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

Proof of use of European Union trade mark registration No 5 390 588 ‘memo’ was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed in relation to the German trade mark registration No 302 013 055 007, which is not subject to proof of use.

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. As stated above, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 013 055 007.

a) The goods

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

Class 20: Furniture; mirrors; picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; office furniture, including containers, shelves, wall boxes, holding devices for computers as well as parts and accessories of the aforementioned goods, included in Class 20; floormats for office furniture; card boxes, namely boxes/cases (non-metal).

The contested goods are the following:

Class 20: Fire resistant mattresses; air mattresses; latex mattresses; box springs; mattress toppers; mattresses; mattresses; mattress bases; futon mattresses [other than childbirth mattresses]; beds, bedding, mattresses, pillows and cushions; furniture and furnishings; beds; wooden beds; bedsprings; bed frames of metal; wood bedsteads; beds incorporating divan bases; furniture being convertible into beds; bed springs of non-metallic materials; divan bases.

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 contested box springs (a type of bed base typically consisting of a sturdy wooden frame covered in cloth and containing springs); beds (listed twice); furniture and furnishings; wooden beds; beds incorporating divan bases; furniture being convertible into beds are included in, include or overlap with the broad category of the opponent’s furniture. Therefore, they are identical.

The contested fire resistant mattresses; air mattresses; latex mattresses; mattress toppers; mattresses (listed three times); mattress bases; futon mattresses [other than childbirth mattresses]; bedding, pillows and cushions; bedsprings; bed frames of metal; wood bedsteads; bed springs of non-metallic materials; divan bases are all accessories, fittings or parts of beds (or divans). They have relevant aspects in common with the broad category of the opponent’s furniture, which includes beds and divans. These goods are either complementary (all of the contested goods except for air mattresses) or in competition (i.e. the contested air mattresses) and coincide in relevant public and distribution channels. Furthermore, some of the contested goods have the same purpose (i.e. the contested fire resistant mattresses; air mattresses; latex mattresses; mattresses; futon mattresses [other than childbirth mattresses]; cushions) and/or the same producers (i.e. fire resistant mattresses; latex mattresses; mattress toppers; mattresses; mattress bases; futon mattresses [other than childbirth mattresses]; bedding; pillows; bedsprings; bed frames of metal; wood bedsteads; bed springs of non-metallic materials; divan bases) as the opponent’s goods. Therefore, the goods are similar.

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 or similar are directed at the public at large.

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

c) The signs

memo
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).

The earlier mark is a word mark ‘memo’.

The contested sign is a figurative mark consisting of two verbal elements, ‘memo’ and ‘optima’, written in an underlined, slightly stylised, ivory-coloured typeface. The first letter of both verbal elements is slightly bigger than the rest.

The common verbal element of the signs, ‘memo’, may be understood by the relevant public as short for ‘memorandum’ (Memorandum in German) or ‘notepad’ (Merkzettel in German) (information extracted from Duden on 25/02/2021 at https://www.duden.de/‌suchen/dudenonline/memo). However, as the applicant correctly points out in its observations, in the context of the goods in question, which cover various items of furniture including beds and bed accessories and parts thereof, the relevant German-speaking consumers are likely to associate this verbal element with a ‘memory effect’ of some of these goods: that is to say, their ability to adapt to the contours of the body of the user. Indeed, some of the contested goods, such as mattresses, pillows and cushions, are commonly equipped with a polyurethane-containing material (most typically with a polyurethane foam) that possesses these properties. Therefore, the verbal element ‘memo’ is weak at least for these goods. It is distinctive to a normal degree for the remaining goods, such as furniture, wooden beds or bed frames of metal, in relation to which no ‘memory effect’ properties are to be expected. For the sake of clarity, the Opposition Division states that ‘memo’ is distinctive to a normal degree for the opponent’s goods that are the subject of the present comparison (i.e. furniture).

The verbal element ‘optima’ of the contested sign may be understood in the relevant territory as the plural form of the German word Optimum, meaning ‘(under the given conditions, with regard to a goal) highest achievable level, highest achievable value’ (information extracted from Duden on 25/02/2021 at https://www.duden.de/suchen/‌dudenonline/optima). It may also be associated with the adjective ‘optimal’ (optimum or optimal in German), which means ‘(under the given conditions, with regard to a goal to be achieved) as good as possible; as cheap as possible’ (information extracted from Duden on 25/02/2021 at https://www.duden.de/rechtschreibung/optimal). Given its laudatory character, the verbal element ‘optima’ is considered at best weak, as it only highlights the quality or other positive characteristics of the relevant goods.

In its observations, the applicant argues that the Office has accepted many trade marks containing the word ‘OPTIMA’, as follows: EUTM No 2 954 675 , EUTM No 3 406 519 ‘Optima’, EUTM No 5 120 829 , EUTM No 5 908 371 , EUTM No 9 002 452 , EUTM No 9 086 893 ‘OPTIMA’, EUTM No 9 127 234 ‘OPTIMA’, EUTM No 9 525 221 , EUTM No 9 573 461 , EUTM No 9 770 108 , EUTM No 10 320 364 , EUTM No 12 009 635 ‘OPTIMA’, EUTM No 12 651 006 ‘OPTIMA’, EUTM No 14 711 766 , EUTM No 15 608 383 , EUTM No 15 856 917 , EUTM No 17 966 075 .

However, the fact that the office has accepted the above trade marks, the majority of which are figurative marks accompanied by additional elements, does not mean that the element ‘optima’, as such, must always be seen as distinctive to a normal degree. In this regard, it must be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions, as well as the goods for which protection is sought (or for which a sign is registered), their possible characteristics and the intrinsic characteristics of a sign applied for (or a registered sign). Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In any event, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). In light of the above, the applicant’s reference to the above trade mark registrations must be set aside.

The stylisation of the verbal elements of the contested sign (typeface, colour and underline) will not distract the consumer’s attention from the words themselves. It has only a decorative function within the sign and, therefore, its impact on the assessment of likelihood of confusion is reduced. In addition, the fact remains that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

In terms of dominance, the earlier mark has no dominant element as it is a word mark. The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the verbal element ‘memo’ and its sound. They differ in the contested sign’s verbal element ‘optima’ and its sound.

Visually, the signs also differ in the figurative aspects of the contested sign, which, however, have less weight in the comparison of the signs, for the reasons explained in detail above.

It is important to note that the entire earlier mark ‘memo’ occurs at the beginning of the contested sign, on which consumers generally tend to focus 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, despite the fact that the coinciding element ‘memo’ is weak for some of the goods in question, and bearing in mind that the contested sign’s additional verbal element ‘optima’ and figurative aspects are of limited distinctiveness and impact, the signs are visually and aurally similar at least to an average degree.

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

The signs coincide in the concept of the element ‘memo’, explained above. Even though this element is weak for some of the goods in question, the signs are still conceptually linked. Therefore, they are conceptually similar at least to an average degree. This holds true despite the presence of the additional concept of the verbal element ‘optima’ in the contested sign, as this concept results from an at best weak element of the sign.

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.

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, despite the meaning described above, the distinctiveness of the earlier mark must be seen as normal for the goods that are the subject of the comparison (furniture).

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

As concluded above, the contested goods are partly identical and partly similar to the opponent’s goods. They target the public at large, whose degree of attention varies from average to high. The earlier mark has a normal degree of inherent distinctiveness for the relevant goods.

The conflicting signs are similar at least to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is because they coincide in the verbal element ‘memo’, which is the sole verbal element of the earlier mark and the first element of the contested sign, to which consumers usually pay more attention. Given the overall similarity of the signs, the fact that the distinctiveness of the verbal element ‘memo’ of the contested sign is weak for some of the contested goods does not affect the outcome of this assessment.

The differences between the signs lie in the additional elements of the contested sign. However, its verbal element ‘optima’ is at best weak, as it only highlights the quality or other positive characteristics of the relevant goods, and its figurative aspects have a reduced weight in the assessment of the similarity of the signs, as explained above. Therefore, the differences between the signs are not sufficient to counteract their similarities and to exclude the likelihood of confusion, even if part of the public displays a high degree of attention for some of the goods.

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 or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example, by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public may detect certain differences between the conflicting signs, the likelihood that it will associate the signs with each other is very real. It is likely that the relevant consumer will perceive the contested sign 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). Indeed, it is conceivable that the relevant public, including the part with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, under the ‘memo’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 013 055 007.

It follows from the above that the contested sign must be rejected for all the contested goods.

As the earlier German trade mark registration No 302 013 055 007 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).

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 ground of the opposition, namely Article 8(1)(a) EUTMR.

Likewise, it is unnecessary to examine the evidence of use filed by the opponent in relation to European Union trade mark registration No 5 390 588 ‘memo’ (word mark).

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

Catherine MEDINA

Martin MITURA

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.