OPPOSITION Nо B 3 088 806

TRU Kids Inc., 5 Wood Hollow Road, 07054 Parsippany, United States of America (opponent), represented by Elkington And Fife Llp, Prospect House, 8 Pembroke Road, TN13 1XR Sevenoaks, United Kingdom (professional representative)

a g a i n s t

Gerald Salletmeier, Am Burgfried 8, 4910 Ried Im Innkreis, Austria (applicant), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative).

On 09/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 806 is partially upheld, namely for the following contested goods:

Class 20: All the contested goods in this class, except for beds for animals.

Class 24: Bean bag covers; mattress covers; ticks (mattress and pillow coverings); protective loose covers for mattresses and furniture; pillow shams; sofa covers; sleeping bags; curtains.

2. European Union trade mark application No 18 047 823 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 047 823 ‘Bruni’ (word mark). The opposition is based on EUTM registration No 5 344 825 ‘BRUIN’ (word mark). 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

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

Class 12: Strollers and baby carriages; covers and hoods for the aforesaid goods; baby car seats and car seat restraints; stroller canopies and stroller foot warming muffs, sunblinds and sunshades, car mirrors, car tidies, seat belt pads, travel barriers adapted for cars to restrict the movement of infants and children; all excluding sports-related subject matter and themes.

Class 18: Stroller parasols, baby carriers, baby harnesses and slings, wrist links, stroller bags, changing bags, all excluding sports-related subject matter and themes.

Class 20: Bassinets, baby dressers, baby highchairs, baby booster seats, babywalkers, cots; travel cots; cot mattresses; baby changing mats; baby swingcarriers; bumpers for cots, moses baskets, car mobiles (decoration), bed guards, cot tidies, all excluding sports-related subject matter and themes.

Class 24: Baby bedding, quilts, sheets, pillow cases and blankets; baby towels and cloths; sleeping bags, burp towels, duvets, curtains, car seat blankets, all excluding sports-related subject matter and themes.

The contested goods are the following:

Class 20: Seating furniture; seats for children; bean bag beds; bean bag pillows; bean bag cushions; bean bag chairs; upholstered furniture; bolsters; armchairs; cushions (upholstery); upholstered convertible furniture; foam mattresses; mattresses; mattress cushions; mattress toppers; nap mats [cushions or mattresses]; beds; children’s beds; beds for animals; furniture being convertible into beds; easy chairs; coffee tables; chair pads; pouffes [furniture]; bean bags; tables; sofas; extendible sofas; divans; love seats.

Class 24: Bean bag covers; mattress covers; ticks (mattress and pillow coverings); protective loose covers for mattresses and furniture; pillow shams; sofa covers; sleeping bags; curtains.

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 some of the goods of the opponent’s earlier mark include the restriction ‘all excluding sports-related subject matter and themes’. As this restriction is likely to affect only designs potentially figuring on the goods when brought to market and will not in any way affect the nature and thus the scope of protection of the goods, it will not be mentioned in the following comparisons.

Contested goods in Class 20

The contested beds; children’s beds include, as broader categories, or overlap with, the opponent’s cots; travel cots. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested bean bag pillows; bean bag cushions; bolsters; cushions (upholstery); foam mattresses; mattresses; mattress toppers; nap mats [cushions or mattresses]; mattress cushions are identical or at least similar to the opponent’s cot mattresses. Some of the contested goods (such as mattresses) include, as a broader category, the opponent’s cot mattresses, while others (such as foam mattresses) overlap. The rest of the contested goods are at least similar, as they coincide in relevant public, producers and distribution channels.

The contested seating furniture; seats for children; bean bag chairs; upholstered furniture; armchairs; upholstered convertible furniture; furniture being convertible into beds; easy chairs; coffee tables; chair pads; pouffes [furniture]; bean bags; tables; sofas; extendible sofas; divans; love seats; bean bag beds are identical or at least similar to the opponent’s baby highchairs, cots. Some of the contested goods (such as seats for children) include, as a broader category, the opponent’s baby highchairs, while others (such as armchairs) overlap. The rest of the contested goods are at least similar as they coincide in relevant public, producers and distribution channels.

The contested beds for animals are dissimilar to all goods covered by the earlier right because they have nothing in common. The earlier goods are articles, furniture and household items specially designed or adapted for babies, while the contested goods are aimed at animals. These goods have different distribution channels (most likely pet stores rather than baby and furniture shops), and consumers would not expect them to originate from the same undertaking. They are not in competition with or complementary to each other. They serve completely different purposes. Their method of use is different. Moreover, the distribution channels and sales outlets are different.

Contested goods in Class 24

Sleeping bags; curtains are identically contained in both lists of goods.

The contested bean bag covers; mattress covers; ticks (mattress and pillow coverings); protective loose covers for mattresses and furniture; pillow shams; sofa covers are at least similar to the opponent’s baby bedding, quilts, sheets, pillow cases and blankets as they coincide in relevant public, producers and distribution channels.

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 at least 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. In its decision of 16/01/2008, the General Court confirmed the conclusion of the Board of Appeal, which had held that the relevant consumers tended to be observant (since the purchase of furniture was for the most part expensive), that the majority of consumers bought only after a relatively long process of comparison and reflection, and that the average consumer displayed a high level of attention when buying goods falling within Class 20 (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 36-38).

c) The signs

BRUIN	Bruni
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.

Both marks are not meaningful in certain territories, for example in those countries where Bulgarian and Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian- and Spanish-speaking parts of the public.

None of the verbal elements composing the marks have any meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the letters ‘BRU’, placed at the beginning. 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. However, they differ in their ending letters, ‘IN’ of the earlier mark and ‘NI’ of the contested mark. The marks have the same structure of five letters, but with the order of the final two letters reversed.

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

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.

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 claimed that the earlier trade mark enjoys a high degree of inherent distinctiveness, as there was no relationship between the mark and the goods covered. However, when an earlier mark is not descriptive (or is not otherwise non-distinctive), Office practice is to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). However, a mark will not necessarily have a higher degree of distinctiveness just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich EU:C:2013:317, § 71).

Consequently, the distinctiveness of the earlier mark will be assessed based 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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). The likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical or at least similar, and target the general public, who displays an average to high degree of attention. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to an above-average degree, as they are composed of the same letters, with the only difference being that the order of their last two letters is reversed. Conceptually, the signs are neutral since a conceptual comparison is not possible.

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).

Therefore, the differences between the signs – mainly at the end of the verbal elements, to which the customers pay less attention – are clearly not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to similar and identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and Spanish-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 344 825. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

The rest of the contested goods 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rosario GURRIERI

Francesca DRAGOSTIN

Valeria ANCHINI

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.