OPPOSITION Nо B 3 105 237

 

Hobby Flower De España, S.A., Avda. Joan Carles I, 46-48, 08908 L'Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Magazzini Cosma Di Cosma Oliviero & C. S.N.C., Via Molinetto, 234, 31030 Borso Del Grappa, Italy (applicant), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative).

On 26/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 105 237 is partially upheld, namely for the following contested goods: Class 20: Furniture; seats; folding chairs; easy chairs; sun loungers; reclining chairs; furniture; composable furniture; screens [furniture]; tables; tea carts; stools; glass furniture; outdoor furniture; lawn furniture; furniture of plastic materials; wooden furniture; furniture made of rattan; armchairs; coffee tables; pasting tables; tables for use in gardens; coffee tables; furniture and furnishings; benches [furniture] divans; sofas; chaise longues; containers made of cane. Class 21: Vases; flower pots; glass vases; flower pots; containers for flowers; porcelain ware.

 

2.	European Union trade mark application No 18 103 605 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 18 103 605  (figurative mark). The opposition is based on Spanish national trade mark registration No 898 421, . 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 20: Planters.

The contested goods are the following:

Class 6: Metal gazebos; gazebos primarily of metal; arbours [structures of metal]; portable gazebos primarily of metal; cupboards of metal; moveable walls made of metal; mobile display units of metal; metal furniture sliders.

Class 18: Umbrellas and parasols; patio umbrellas; patio umbrellas; beach umbrellas [beach parasols]; rainproof parasols; parasols; covers for parasols; umbrella or parasol ribs; framework parasols; framework parasols; boxes for carrying objects.

Class 19: Portable gazebos not primarily of metal; Gazebo [non-metallic structures].

Class 20: Furniture; seats; folding chairs; easy chairs; dining chairs; conference chairs; office armchairs; babies' chairs; rocking chairs; sun loungers; reclining chairs; chairs being office furniture; furniture; composable furniture; bar cabinets; screens [furniture]; work surfaces; shelf dividers; writing desks; antique furniture; tables; mirrors (silvered glass); decorative mirrors; chests of drawers; tea carts; magazine stands; bean bags; clothes stands; lockers; bookstands; stools; vitrines; filing cabinets; wall units; partitions; indoor furniture; glass furniture; living room furniture; outdoor furniture; lawn furniture; furniture of plastic materials; furniture for kitchens; wooden furniture; furniture made of rattan; furniture incorporating beds; cupboards; cupboards being furniture; armchairs; bed chairs; paper racks; bedside cabinets; coffee tables; pasting tables; dining room tables; tables for use in gardens; coffee tables; furniture and furnishings; cupboards; writing desks; writing desks; benches [furniture]; beds; bed heads; bunk beds; children's beds; frames; photograph holders; mirror frames; picture frames; frames (picture- ) of non-metallic materials; wood statues; room dividers; stands [furniture] for use with television; cushions; mattresses; mattresses; divans; divan beds; sofas; chaise longues; containers made of cane; storage chests; storage baskets; bathroom fittings in the nature of furniture; figures made of rattan.

Class 21: Ornamental sculptures made of porcelain; ornamental sculptures made of porcelain; figurines made of terra cotta; sculptures made from glass; sculptures made from glass; vases; flower pots; glass vases; tableware, other than knives, forks and spoons; ceramic hollowware; pots; candle jars [holders]; plates; saucers; decorative plates; candlesticks; glass holders for candles; flower pots; containers for pot pourri; containers for flowers; canister sets; porcelain ware; works of art made of porcelain; works of art made of glass; ceramics for kitchen use; works of art made of crystal; works of art, of porcelain, terra-cotta or glass.

Contested goods in Classes 6, 18 and 19

The contested goods in Classes 6, 18 and 19 encompass structures and transportable buildings, cupboards of metal; moveable walls made of metal; metal furniture sliders, umbrellas and parasols as well as parts and accessories therefor. All these contested goods do not share any relevant points of contact with the opponent’s goods in Classes 20 namely planters (in particular planters of wood, given their inclusion in Class 20). The goods of the earlier mark are essentially decorative items generally used in garden and terraces for growing plants, which have different natures, purposes and methods of use compared to the contested goods. Additionally, they are not complementary or in competition. Furthermore, they generally have different channels of distribution and producers. Therefore, and in the absence of any arguments to prove similarity by the opponent, they are considered to be dissimilar.

Contested goods in Class 20

The contested furniture; seats; folding chairs; easy chairs; rocking chairs; sun loungers; reclining chairs; furniture; composable furniture; screens [furniture]; tables; tea carts; stools; glass furniture; outdoor furniture; lawn furniture; furniture of plastic materials; wooden furniture; furniture made of rattan; armchairs; coffee tables; tables for use in gardens; coffee tables; furniture and furnishings; benches [furniture]; divans; sofas; chaise longues; containers made of cane are or include outdoor pieces of furniture or furnishing. Therefore, although they might have a different purpose and method of use, they can coincide with the opponent’s planters in public, producers and distribution channels. Indeed, the opponent’s planters are used as an outdoor decorative item containing plants and/or flowers that can have the same style or decorative features of pieces of outdoor furniture such as benches, screens, stools or sofas. It is not unusual that companies producing outdoor furniture and furnishing items also produce wooden planters to enable purchasers to buy both set of goods at the same time to achieve an accomplished and harmonious decorative outfit. Furthermore, they address the same public and can be distributed through the same channels. Therefore, they are at least similar to a low degree.

On the contrary, according to their usual and natural meaning, the contested dining chairs; conference chairs; office armchairs; babies' chairs; chairs being office furniture; bar cabinets; work surfaces; shelf dividers; writing desks; antique furniture; mirrors (silvered glass); decorative mirrors; chests of drawers; magazine stands; bean bags; clothes stands; lockers; bookstands; vitrines; filing cabinets; wall units; partitions; indoor furniture; living room furniture; furniture for kitchens; furniture incorporating beds; cupboards; cupboards being furniture; bed chairs; paper racks; bedside cabinets; pasting tables; dining room tables; cupboards; writing desks; writing desks; beds; bed heads; bunk beds; children's beds; frames; photograph holders; mirror frames; picture frames; frames (picture- ) of non-metallic materials; room dividers; stands [furniture] for use with television; mattresses; mattresses; divan beds; storage chests; storage baskets; bathroom fittings in the nature of furniture are pieces of furniture and furnishing items conceived to be used indoor. These items are not generally produced by the same companies manufacturing wooden planters and are generally sold through different distribution channels. Therefore, taking into account that all these goods have also different specific purpose, method of use and they are not complementary or in competition with the opponent’s planters, they are dissimilar to the opponent’s goods.

Although it is not excluded that the contested cushions are used in combination with outdoor or garden furniture, they are not generally produced by the same undertakings producing planters. The same applies to the contested wood statues; figures made of rattan. Therefore, although the distribution channels of these goods can in some instances coincide with the opponent’s planters, since they can be all items sold for outdoor spaces decoration, they do not have any other point in common. Indeed, they have different purpose, method of use and producers. Furthermore, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 21

The contested vases; flower pots; glass vases; flower pots; containers for flowers; porcelain ware are or contain vases, pots and container for plants and flowers. As such they have a very similar purpose and method of use of the opponent’s planters. Furthermore, they can have the same public, producers and distribution channels. Therefore, they are at least similar.

The contested ornamental sculptures made of porcelain; ornamental sculptures made of porcelain; figurines made of terra cotta; sculptures made from glass; sculptures made from glass; works of art made of porcelain; works of art made of glass; works of art made of crystal; works of art, of porcelain, terra-cotta or glass are dissimilar to the opponent’s planters. although the distribution channels of these goods can in some instances coincide with the opponent’s planters, since they can be all items sold for outdoor spaces decoration, they do not have any other point in common. Indeed, they have different purpose, method of use and producers. Furthermore, they are not complementary or in competition.

The contested tableware, other than knives, forks and spoons; ceramic hollowware; pots; candle jars [holders]; plates; saucers; decorative plates; candlesticks; glass holders for candles; containers for pot pourri; canister sets; ceramics for kitchen use are dissimilar to the opponent’s planters. In addition to having a different purpose, these goods do not generally have the same producers and distribution channels. Furthermore, they are not complementary or in competition.

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 to varying degrees are directed at the public at large.

 

The degree of attention may vary from average to high. Indeed, while for certain goods (e.g. vases or flower pots) the relevant public is likely to display an average degree of attention, for other goods (e.g. furniture, tables or armchairs) the average consumer can make his choice on the basis of a number of functional and aesthetic considerations, in order to ensure that these goods are in keeping with other furniture already in his possession. While the actual act of purchase may be completed quickly in the case of certain items of furniture, the process of comparison and reflection before the choice is made requires, by definition, a high level of attention (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 36-38).

 

c) The signs

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 earlier mark is composed of the verbal element 'COSMO' in uppercase letters presenting a certain stylisation. Indeed, part of the letters are decorated with thin parallel lines.

The contested sign is composed of the verbal element 'cosma' depicted in white (with the exception of the last letter 'a' which is depicted in black) and in rather standard lower case letter on an oval dark background. On the background is also depicted a curved white line creating an abstract figurative element that might be perceived as recalling the last letter 'a' of the verbal element 'cosma'.

The verbal element 'COSMO' in the earlier mark will be associated with the concept of 'world, universe' (information extracted from Diccionario de la Real Academia Española on 20/11/2020 at https://dle.rae.es/cosmo-). Since such meaning is not related to the relevant goods (planters), it has an average degree of distinctiveness.

The verbal element 'cosma' in the contested sign will be perceived as devoid of any meaning and as such distinctive.

The stylisation of the verbal elements will be perceived as serving a decorative function and will not be attributed trademark significance.

The oval background in the contested sign will be perceived as a banal decorative element composed of a basic shape. Therefore, it is non-distinctive.

The figurative element of the contested sign recalling the last letter 'a' of the verbal element 'cosma' does not convey any meaning related to the relevant goods. Therefore it has an average degree of inherent distinctiveness.

There are no element in the contested sign that can be considered more dominant (eye- catching) than others.

Visually and aurally, the signs coincide in four (out of five) letters of the verbal element of the earlier mark ‘COSM*’ which are identically reproduced, in the same order, in the sole verbal element of the contested sign. The signs differ in their last letter 'O' (in the earlier mark) and 'a' (in the contested sign). 

It is particularly relevant that the four coinciding letters are identically reproduced in the same order at the beginning of both signs 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.

At a visual level the signs also differ in the stylisation of their verbal elements as well as in the background and figurative element of the contested sign. This figurative element resembling a letter 'a' will be perceived as a mere repetition of the last letter of the element 'cosma' and as such it will not be pronounced.

With specific reference to these differing elements, it must be noted that when signs consist of both verbal and figurative components, 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; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, taking also into account the degree of distinctiveness of the elements of the marks, the signs are visually similar to an average degree and aurally highly similar.

 

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above ('world', universe'), the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

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, the earlier trade mark as a whole has no meaning for any of the goods 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

In the present case, some of the goods have been found to be similar to varying degrees while some of them are dissimilar . The signs are visually similar to an average degree, aurally highly similar and conceptually not similar. The earlier mark has an average degree of inherent distinctiveness.

The goods found to be similar to varying degrees target the public at large displaying a degree of attention varying from average to high. However, even consumers with 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).

The similarity between the signs lies in the fact that four (out of five) letters of the earlier mark are identically reproduced in the same order, in the contested sign. The differences between the verbal elements of the signs are limited only to their final letters ‘O’ and ‘a’.

It is true that there are some additional elements in the contested sign, and that the verbal elements are depicted with different stylisations in both signs under comparison. However, the differing stylisations of the signs and the figurative elements of the contested sign, will have limited impact. As already explained, verbal components of a sign usually have a stronger impact on the consumer than the figurative component.

Therefore, the Opposition Division considers that the differences between the signs would not allow consumers to safely distinguish between the earlier mark and the contested sign, even when their degree of attention is high.

Considering all the above, the Opposition Division finds that 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 Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark, even those found similar at least to a low degree. Indeed, applying the aforementioned principle of interdependence, it is considered that the similarities between the signs are sufficient to offset the low degree of similarity between some of the goods.

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

 

 

Tzvetelina IANTCHEVA

Rosario GURRIERI

Sandra IBAÑEZ

 

 

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.