OPPOSITION Nо B 3 111 399

Walter Knoll AG & Co. KG, Bahnhofstr. 25, 71083 Herrenberg, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Jing Keng International Limited, No. 1, Ln. 160, Sec. 2, Tanfu Rd., Tanzi Dist., 42748 Taichung City, Taiwan, Province of China (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative).

On 18/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 399 is upheld for all the contested goods, namely:

Class 20: Tables; chairs [seats]; dining chairs; beds; filing cabinets; office chairs; conference tables; desks; work benches; furniture of metal; seats of metal.

2. European Union trade mark application No 18 156 000 is rejected for all the contested goods. It may proceed for the remaining uncontested services in Class 35.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 156 000 (figurative mark), namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 10 649 556 ‘Gordon’ (word mark). The opponent invoked Article 8(1)(a) and (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, mirrors, picture frames.

The contested goods are the following:

Class 20: Tables; chairs [seats]; dining chairs; beds; filing cabinets; office chairs; conference tables; desks; work benches; furniture of metal; seats of metal.

The contested tables; chairs [seats]; dining chairs; beds; filing cabinets; office chairs; conference tables; desks; work benches; furniture of metal; seats of metal are all included in the broad category of the opponent’s furniture. Therefore, they are identical.

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 with the exception of at least conference tables, which rather target professionals with specific professional knowledge or expertise.

The degree of attention is considered average.

c) The signs

Gordon
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 the word mark ‘Gordon’. The contested sign is a figurative mark consisting of two verbal elements, ‘Gordon’ and ‘Motion’, written in slightly stylised, black, italic, title-case letters.

The vast majority of the relevant public will perceive the verbal element ‘Gordon’ of the signs as a male given name or surname most likely of an English origin. The Opposition Division is not aware of any other meanings of this element and neither of the parties argued otherwise nor submitted any evidence in that regard.

However, the perception of the verbal element ‘Motion’ of the contested sign differs among the relevant public. Due to the first name placed before it and its title-case letter, this verbal element could be perceived by part of the public as a surname although such a surname is uncommon in any of the relevant territories. This is the case, for example, for part of the relevant public from the English-speaking territories. However, this perception as a surname is not obvious in other parts of the relevant territory where different perceptions of the verbal element ‘Motion’ are possible. In particular, the French-speaking public may perceive this word as referring to a proposal put to a legislature since the same or a similar word exists in that language. Furthermore, a part of the relevant public such as the Czech-, Polish- and Slovak-speaking publics will not attribute any meaning to the word.

For reasons of procedural economy, and in order to avoid different scenarios with respect to the conceptual perception of the signs, the Opposition Division will assess the signs from the perspective of the part of the relevant public that perceives ‘Gordon’ as a male given name (or surname) and does not attribute any meaning to the verbal element ‘Motion’ of the contested sign as would be the case of a significant part of the Czech-, Polish- or Slovak-speaking publics. The reason is that for these parts of the public, the conceptual similarity of the signs is higher than for the part of the public that perceives ‘Motion’ as a meaningful distinctive element, as explained above.

Based on the above, the verbal element ‘Gordon’ is not related to the goods at issue and is distinctive to a normal degree. The verbal element ‘Motion’ of the contested sign is also distinctive to a normal degree for the public under analysis.

The stylisation of the verbal elements of the contested sign will not distract the consumer’s attention from the words themselves. It has only a decorative function within the sign and, therefore, its impact on the assessment of likelihood of confusion is reduced. In addition, when signs consist of both verbal and figurative components, in principle, 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).

Contrary to the opponent’s opinion, the public under analysis will perceive both verbal elements of the contested sign as equally distinctive and neither could be considered clearly more dominant than the other. The earlier mark has no dominant element as it is a word mark.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Gordon’ and its sound. Furthermore, this coinciding element is placed at the beginning of the contested sign, which consumers generally tend to focus on 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.

The signs differ in the additional verbal element ‘Motion’ of the contested sign, and its sound. Visually, they also differ in the figurative aspects of the contested sign, which, however, have less weight in the comparison of the signs, for the reasons explained above.

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

Conceptually, for the public under analysis that perceives only the concept of the coinciding element ‘Gordon’ in both signs, namely that of a male given name, the signs are conceptually similar to a high 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.

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.

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 (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 present assessment of likelihood of confusion addresses the perception of the Czech-, Polish- and Slovak-speaking parts of the public in the relevant territory.

As concluded above, the contested goods are identical to the opponent’s goods. They target the public at large and business customers with an average degree of attention. The earlier mark has a normal degree of inherent distinctiveness for the relevant goods.

The conflicting signs are visually and aurally similar to an average degree and conceptually similar to a high degree, as explained above in section c) of this decision. This is because the earlier mark’s sole verbal element is completely reproduced in the contested sign in which it plays an independent and distinctive role. Moreover, it is the first element of the contested sign, where consumers usually pay more attention.

The differences between the signs lie in the additional distinctive verbal element ‘Motion’ of the contested sign and its decorative stylisation. However, these differing elements of the signs are not sufficient to counteract their similarities and to exclude the likelihood of confusion, especially considering the identity between the goods in question and an average degree of attention that the public will display in relation to these goods.

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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example, by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public may detect certain differences between the conflicting signs, the likelihood that it will associate the signs with each other is very real. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, it is conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, under the ‘Gordon’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the Czech-, Polish- and Slovak-speaking parts of the relevant public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 649 556. 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 sign must be rejected for all the contested goods.

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(1)(a) 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

Catherine MEDINA

Martin MITURA

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.