OPPOSITION Nо B 3 118 344

 

Roset SAS., 1, route du Pont, 01470 Briord, France (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative) 

 

a g a i n s t

 

Himolla Polstermöbel GmbH, Landshuter Str. 38, 84416 Taufkirchen/vils, Germany (applicant), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative).

On 10/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 344 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 04/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 139 314 ‘signa’ (word mark). The opposition is based on European Union trade mark registration No 516 633 ‘CINNA’ (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 20: Furniture; seats; armchairs; settees; sofas; tables; bedding; desks; bookcases; cupboards; wall cupboards; racks [furniture]; shelving.

 

The contested goods are the following:

 

Class 20: Furniture.

Contested goods in Class 20

 

Furniture are identically contained in both lists of goods.

 

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 are directed at the public at large. The degree of attention may vary from average to high, depending on the price, frequency of purchase and sophistication of the goods purchased.

  

c) The signs

CINNA	signa
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).

Both marks are word marks and as such have no element(s) that could be considered clearly more dominant than other elements. Furthermore, in the case of word marks, it is the word as such that is protected and not its written form. Therefore, in general, in principle it is irrelevant whether word marks are in upper- or lower-case letters, unless they deviate from the usual way of writing (e.g. irregular capitalization), which is not the case here.

The element ‘CINNA’ of the earlier mark may be associated with a meaning by the Slovak-speaking part of the public (e.g. as činná means ‘active, operational’). The word ‘signa’ of the contested sign is the 3^rd person singular form of the verb ‘signar’ in Spanish (meaning ‘to sign’ in English) and the past tense 3^rd person singular of the verb ‘signer’ in French (il/elle SIGNA, meaning ‘to sign’). In addition, ‘signa’ of the contested sign is fairly close to the French word ‘signe’ (meaning ‘a sign’). However, for the majority of the remaining relevant public in the relevant territory the elements ‘CINNA’ and ‘signa’ of the marks have no particular meaning. Whether understood or not, neither of these words has any descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods. Therefore, the inherent distinctiveness of the earlier mark is normal.

Visually, the earlier mark and the contested sign both consist of five letters and coincide in the letters ‘*I*NA’ and differ in their initial letters ‘C’ vs. ‘S’ and in their third letters ‘N’ vs. ‘G’. Indeed, the third letter of the earlier mark is another ‘N’ and corresponds to the fourth letter of the contested mark. However, this does not constitute a very relevant visual coincidence, since the repetition of the two ‘NN’ letters in earlier mark is quite noticeable and has its own different visual weight. Although the marks coincide in three letters in the same position and in their overall length, the coinciding letters do not occupy an independent distinctive role therein and do not stand out as particularly noticeable similarities. In fact, as mentioned, the doubling of the ‘NN’ letters in the earlier mark is quite noticeable and is not found in the contested sign. Furthermore, in spite of the coincidence in the final two letters of the signs, the beginning/initial letters of the marks are different and this marks an important visual distance between them. This is because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as 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.

Also, in the present case, it is relevant to mention, as the General Court has held, that the same number of letters in two marks is not, as such, of any particular significance for the relevant public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). Consequently, bearing in mind all the above, including the different beginnings of the signs, the visual impact of the double ‘NN’ in the earlier mark, as well as the fact that the coinciding letters do not have an independent distinctive role in the signs, it is considered that the signs are visually similar to a very low degree, at most.

Aurally, the pronunciation of the signs is closest when the initial letters ‘s’ and ‘c’ of the signs are pronounced with the same or a very close sound (e.g. by the French- and Spanish-speaking part of the public), the double ‘NN’ of the earlier mark is uttered as a single ‘N’ sound (e.g. in French and Spanish) and the letters ‘gn’ of the contested sign are pronounced with the phoneme /ɲ/ (e.g. in French), as this renders a sound very similar to that of an ‘N’. Therefore, for those consumers, in particular, the French- speaking part of the public, the signs are aurally similar to a high degree. In other territories, the signs are aurally similar to an above average degree (e.g. the Spanish- and Portuguese- speaking part of the public), which will pronounce the signs similarly to the French, the but the ‘g’ of the contested sign is a clearly audible consonant sound. As for the remaining territories, the degree of aural similarity will be diminishing to an average and even to a fairly low degree (e.g. in Polish), as the signs will present further differences in pronunciation (e.g. in the sound of their initial letters and/or in the double/single ‘N’).

Conceptually, as mentioned above, a part of the relevant public will associate only one of the signs with a meaning, whereas the other sign lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public. As for the remaining part of the public, for which neither of the signs has a meaning, a conceptual comparison is not possible and 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 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, as mentioned above, 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

 

A likelihood of confusion on the part of the public must be assessed globally which implies some interdependence between the relevant factors, and, in particular, a similarity between the marks and between the goods and/or services. Accordingly, a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are identical to the opponent’s goods. The relevant public is the public at large and the degree of attention may vary from average to high. The inherent distinctiveness of the earlier mark is normal.

The earlier trade mark and the contested sign are visually similar to a very low degree, at best. The aural similarity between the signs can be high, above average, average or even fairly low, depending on the respective language. Also, depending on the understanding of the relevant public, the signs are not conceptually similar, or they are conceptually neutral.

In the present case, the Opposition Division considers that the degree of similarity between the signs is not sufficient for the relevant public to confuse the marks, even in relation to identical goods. The coincidences between the signs do not have an independent distinctive role therein and the differences identified between the signs, especially the visual impact of their different beginning, place a sufficient distance between them. Furthermore, as regards part of the public, such as the French-speaking public, in spite of the high degree of aural similarity, the signs are sufficiently different to safely avoid a likelihood of confusion. As pointed out above, this part of the public will associate the contested sign with some meaning, whereas the earlier mark is entirely meaningless. This, combined with the very low visual similarity, at best, are sufficient to offset the high degree of aural similarity between the signs.

The opponent argues that the aural aspect in the present case is at least as important as the visual one, because aural discussion of the characteristics of the goods and their mark is also likely to take place at the time of purchase and as those goods can be advertised orally, e.g. on radio or by word of mouth. However, even if the goods are discussed or advertised aurally, the nature of the goods is such that consumers are guided by the visual impact of the mark they are looking for. In addition, the aesthetic and outward appearance of the goods is usually an important selection factor during purchase. In view of this, the visual impact is of particular importance in relation to the goods at issue. Accordingly, in such cases, it is appropriate to attach particular importance to the degree of visual similarity between the signs at issue, which is very low at best in the present case.

In view of the foregoing, it is considered that the differences between the earlier mark and the contested sign are sufficient to exclude any likelihood of confusion, including likelihood of association, even taking into account the abovementioned principle of interdependence and even in relation to identical goods.

Consequently, it can be concluded that the differences between the signs are striking enough to rule out any likelihood of confusion between the signs. Therefore, a likelihood of confusion, including a likelihood of association, on the part of the relevant public can be safely excluded in spite of the identity of the goods.

The opponent refers to previous decisions of the Office to support its arguments in relation to the degree of aural similarity between the signs. Even though previous decisions of the Office are not binding, as each case has to be dealt with separately and with regard to its particularities, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, some of the previous cases referred to by the opponent are to some extent comparable, and as seen in the aural comparison above, the Opposition Division has come to similar findings in relation to the aural particularities in the relevant examined territory/ies. However, as the signs compared in the present case and the signs in those previous cases are not the same, the outcome of the present proceedings is different in view of the different findings as regards their visual and/or conceptual level of similarity, the nature of the relevant goods, etc.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Lars HELBERT

Liliya YORDANOVA

Anna PĘKAŁA

 

 

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.