OPPOSITION No B 3 094 790

Espadesa Retail Sociedad Limitada, Ronda del Ferrocarril, No 24, Plataforma Logística Zaragoza (Plaza), 50197 Zaragoza, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Mea Cama, Lda., Praça Colónia de Sacramento, 196, Costa, 4810-556 Guimarães, Portugal (applicant), represented by Sónia Mota Maia, Al. Qtª de Stº António Nº 1-Núcleo 1-2ºE, 1600-675 Lisboa, Portugal (professional representative)

On 25/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 790 is upheld for all the contested goods.

2. European Union trade mark application No 18 060 417 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 18 060 417 (figurative mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 518 201 for the word mark ‘BED’S’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(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 Spanish trade mark registration No 3 518 201 ‘BED’S’, which, as a word mark, has more similarities to the contested sign than the other earlier trade mark invoked which is figurative.

a) The goods

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

Class 20: Beds.

The contested goods are the following:

Class 24: Bed linen.

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 bed linen and the opponent’s beds are similar as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary and coincide in their purpose.

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 similar are directed at the public at large. The degree of attention of the public will be average.

c) The signs

BED’S
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 common element/string of letters ‘BED’ is an English word meaning, essentially, ‘a piece of furniture for sleep or rest, typically a framework with a mattress’ (information extracted from Oxford English Dictionary on 14/08/2020 at www.lexico.com/definition/bed).

Although the English word ‘bed’ is relatively common and part of the Spanish public would understand it, there is still a significant part of the Spanish public that does not speak English and would not know the word ‘bed’. In this context, if a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. Consequently, in comparing the signs, the Opposition Division will focus on the significant part of the Spanish public for whom the element/string of letters ‘BED’, included in both marks, has no meaning.

The elements ‘BED’S’ of the earlier mark and ‘bed’ of the contested sign have no meaning for the part of the public referred to above and are, therefore, distinctive to an average degree.

Part of the Spanish public would understand the element ‘INC’ of the contested sign as an English abbreviation of the legal form of a company, ‘Incorporated’. However, a significant part of the Spanish public that does not speak English (the part focussed on here) would not understand the element ‘INC’. For this part of the public the element has no clear meaning and is, therefore, distinctive to an average degree. Nevertheless, as the element is small and hardly visible, it will have a very limited impact on the overall impression created by the contested sign. It is clear that the contested sign is visually dominated by the element ‘bed’ due to its large size.

Visually, the signs coincide in the sequence of letters ‘BED*’. However, they differ in the ending of the earlier mark, namely the apostrophe and the letter ‘S’, and in the hardly visible element ‘INC’ of the contested sign. The element ‘bed’ of the contested sign is depicted in only slightly stylised characters, which means that the stylisation has a limited impact. The signs also differ in the colour grey of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BED*’, present identically in both signs. The pronunciation differs in the sound of the last letter, ‛S’, of the earlier mark. In the unlikely event that the public were to read and pronounce the hardly visible element ‘INC’ of the contested sign, this would create an additional aural difference.

On the whole, the signs are considered aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the significant part of the public in the relevant territory referred to above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

In view of the above findings, the overall impressions created by the signs are similar to an 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 a significant part 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 signs are visually and aurally similar to an average degree and their conceptual aspect remains neutral. The overall impressions created by the marks are similar. Furthermore, the goods are similar. The degree of distinctiveness per se of the earlier trade mark is average. The level of attention of the relevant public, which is the public at large, will be average.

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).

Taking into account the impact or weight of each of the elements forming the marks for the reasons explained above (e.g. their position, size or visual impact) it can be concluded that the signs coincide in the elements of greater impact and differ in elements that are secondary or of reduced impact.

In view of the above, and given the fact that a significant part of the relevant Spanish public does not speak English and will not understand the concepts of the verbal elements forming the marks, it is likely that this part of the public will confuse the commercial origin of the similar goods sold under the signs at issue.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 518 201. 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 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 above 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).

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(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

Marta GARCÍA COLLADO

Vít MAHELKA

María del Carmen SUCH SÁNCHEZ

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.