OPPOSITION No B 3 107 773

Furninova AB, Box 28, 28020, Bjärnum, Sweden (opponent), represented by Advokatfirman Lindahl KB, Studentgatan 6, 21138 Malmö, Sweden (professional representative)

a g a i n s t

AFM Online, 53-55 Gen. Eduard I. Totleben bul., 1606 Sofia, Bulgaria (applicant), represented by IPCO Law B.V., Fascinatio Boulevard 216- 220, 3065 WB Rotterdam, The Netherlands (professional representative).

On 06/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 773 is partially upheld, namely for the following contested goods:

Class 20: Furniture, excluding pillows, bedding, cushions, mattresses, interior venetian blinds, paper blinds and non-metal trays.

2. European Union trade mark application No 18 128 811 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 128 811 (figurative mark). Following a restriction of the basis of the opposition filed by the opponent on 15/07/2020, the opposition is based on, inter alia, European Union trade mark registration No 14 663 793 ‘FURNINOVA’ (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.

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 14 663 793.

a) The goods and services

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

Class 11: Lighting apparatus; lights (electric); lamp globes; lamp glasses; lamp shades; lampshade holders; lamp reflectors; chandeliers; fairy lights for festive decoration; flares; lanterns; bed warmers.

Class 20: Pillows; bedding, except linen; cushions; mattresses; interior venetian blinds; paper blinds; trays, not of metal.

After a limitation filed by the applicant on 05/11/2020, the contested goods and services are the following:

Class 20: Furniture, excluding pillows, bedding, cushions, mattresses, interior venetian blinds, paper blinds and non-metal trays.

Class 35: Advertising.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 20

The contested furniture, excluding pillows, bedding, cushions, mattresses, interior venetian blinds, paper blinds and non-metal trays, despite the exclusion are at least similar to the opponent's mattresses because, although they might in some cases serve a different specific intended purpose, they coincide in relevant public, distribution channels and producer.

Contested services in Class 35

The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods being possibly advertised, namely, in this case, all the opponent’s goods in Classes 11 and 20.

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 at least similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

FURNINOVA
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.

The earlier mark is a word mark, ‘FURNINOVA’. The contested mark is a figurative mark, consisting of the element ‘FURNY’ depicted using fanciful dark orange title case letters the last of which ends with a long horizontal line that underlines the other letters, which is followed by the much smaller element ‘.com’, reproduced using lower case letters of the same colour.

It is likely that for at least a part of the relevant public, such as the Portuguese-speaking part of the public, the earlier mark will be perceived as containing a reference to a semantic content in at least a part of it, namely the last four letters ‘NOVA’, which are the equivalent of ‘new’ in English.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public.

As already mentioned, although the earlier mark is meaningless per se in Portuguese, it cannot be excluded that its final four letters ‘NOVA’ will be associated to a meaning that is laudatory and weak since it makes reference to the general concept of novelty, that can be applied to the goods or, more in general, to the undertakings dealing with them.

This is due to the fact that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The relevant public often regards one-word signs as being composed of different components, in particular, where one part has a clear and evident meaning while the rest is meaningless or has a different meaning.

As regards the first part of the earlier mark, ‘FURNI’, it will be perceived as meaningless and, therefore, it can be considered normally distinctive.

This latter reasoning can be also applied to the element ‘Furny’ of the contested sign, which is also meaningless. However, as regards the element ‘.com’ of the contested sign, it refers to a generic top-level domain, and therefore it only indicates that ‘Furny’ is the name of the website and thus the means of provision (the platform) through which the goods are offered and/or delivered. It follows that this element is non-distinctive for the relevant goods.

Furthermore, account must be taken of the fact that the element ‘Furny’ in the contested sign is the dominant element as it is the most eye-catching.

Also, it must be kept in mind that 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.

Visually, the signs coincide in the letters ‘FURN-‘, although in the case of the contested sign reproduced in a fanciful manner. These letters are placed at the beginning of both of them and bear a normal degree of distinctiveness. In the case of the contested sign they also form the majority of the dominant element. The signs differ in the last letters of the earlier mark ‘-INOVA’, of which the letters ‘NOVA’ will be regarded as a weak element, clearly perceptible, in the last letter ‘y’ of ‘Furny’ of the contested sign and in the additional element ‘.com’ of the contested sign, which not only is non-distinctive but also secondary from a visual perspective.

Therefore, the signs are, at least, visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FURN’, which are present identically in both signs, as well as in their fifth letters ‘I’ and ‘Y’, which will be pronounced identically. The pronunciation differs in the second part of the earlier mark, namely the letters ‘NOVA’, which constitute an element of weak character. The pronunciation also differs in the element ‘.com’, the impact of which is very limited due to the fact that it is secondary and non-distinctive.

Therefore, the signs are, at least, aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, although only as regards a weak part of the earlier mark namely ‘NOVA’ or a secondary and non-distinctive element in the case of the contested sign (‘.com’), the signs are conceptually not 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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

The contested goods and services in Classes 20 and 35 have been found partly similar and partly dissimilar.

The goods found to be similar in Class 20 target the public at large whose level of attention is considered to be average. The earlier mark as a whole has a normal degree of distinctiveness. However, account must be taken of the fact that the Portuguese-speaking part of the public will recognise within the earlier mark ‘FURNINOVA’ a meaningful element, namely ‘NOVA’, which possesses a weak character. It is then likely to expect that the consumers will tend to focus on the first letters ‘FURNI’, which are visually almost identical, and aurally identical, to the dominant and most distinctive element of the contested sign, namely ‘Furny’.

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).

It must be also kept in mind that 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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, at least but not necessarily only, on the Portuguese-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 similar to those of the earlier trade mark.

The rest of the contested good and services, namely the services in Class 35, 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 services cannot be successful.

The opponent has also originally based its opposition on the following earlier trade mark:

 European Union trade mark registration No 4 040 796 for the word mark ‘FURNINOVA’ covering the following goods in 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; air cushions, not for medical purposes; air mattresses, not for medical purposes; air pillows, not for medical purposes; animal horns; bamboo; bead curtains for decoration; bed casters, not of metal; bedding, except linen; bins, not of metal; birds (stuffed -); bolsters; bottle caps, not of metal; bottle closures, not of metal; busts of wood, wax, plaster or plastic; cabinet work; clothes hooks, not of metal; coat hangers; coathooks, not of metal; coffins; coral; corozo; costume stands; covers for clothing [wardrobe]; curtain holders, not of textile material; curtain hooks; curtain rails; curtain rings; curtain rods; curtain rollers; curtain tie-backs; cushions; door fittings, not of metal; doors for furniture; fans for personal use, non-electric; fireguards; floating containers, not of metal; flower-pot pedestals; foundations for beehives; funerary urns; furniture casters, not of metal; furniture fittings, not of metal; garment covers [storage]; honeycombs; horn, unworked or semi-worked; house numbers, not of metal, non-luminous; indoor window blinds [shades] [furniture]; inflatable publicity objects; ivory, unworked or semi-worked; kennels for household pets; mats, removable, for sinks; mattresses; mobiles [decoration]; moldings for picture frames; mother-of-pearl, unworked or semi-worked; pet cushions; picture frame brackets; pillows; plaited straw, except matting; rattan; reeds [plaiting materials]; shells; slatted indoor blinds; spring mattresses; stag antlers; stair rods; statues of wood, wax, plaster or plastic; stoppers, not of metal; straw edgings; straw plaits; stuffed animals; table tops; tool handles, not of metal; tortoiseshell; tortoiseshell imitation; vice benches, not of metal; wax figures; whalebone, unworked or semi-worked; wind chimes [decoration]; works of art, of wood, wax, plaster or plastic; yellow amber.

This earlier right covers goods in Class 20, which are clearly different to the remaining services in Class 35 applied for in the contested trade mark for the same reasons already explained above in section a) of the present decision. Even in the best case scenario for the opponent and without entering into what has been argued by the applicant in relation to the restriction of the basis of the opposition, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent in relation to European Union trade mark registration No 4 040 796.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Andrea VALISA

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.