OPPOSITION Nо B 3 122 618

 

Miniso Hong Kong Limited, D6B Dep., 11th Floor of Blocks A&B, TML Plaza, No. 3 Hoi Shing Road, Tsuen Wan, New Territories, Special Administrative Region of Hong Kong of People’s Republic of China (opponent), represented by GLP S.R.L. (sede di Milano), Via L. Manara, 13, 20122 Milano, Italy (professional representative) 

 

a g a i n s t

 

Mariola Grzesiak, minio.com.pl, ul. Warszawska, nr 135, 98-400 Wieruszów, Poland (applicant), represented by Marcin Staniszewski, Jana Henryka Dąbrowskiego 267, 60-406Poznań, Poland (professional representative).

On 27/04/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 122 618 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 199 706 is rejected in its entirety.

 

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

 

REASONS

 

On 28/05/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 199 706 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 17 961 214 (figurative 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 17 961 214.

a) The goods and services

 

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

 

Class 20: Furniture.

The contested services are the following:

 

Class 35: Retail services connected with the sale of furniture; wholesale services in relation to furniture; retail services in relation to furniture; online retailing relating to furniture; wholesaling relating to furniture sets; retailing relating to furniture sets; wholesaling relating to bathroom furniture; retailing relating to bathroom furniture; wholesaling relating to cabinets; retailing relating to cabinets; wholesaling relating to tables; retailing relating to tables; wholesaling relating to racks; retailing relating to racks; wholesale services in relation to chests of drawers; retail services in relation to chests of drawers; wholesaling relating to showcases; retailing relating to showcases; wholesaling relating to wall units; retailing relating to wall units.

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.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as online retailing and wholesale services in Class 35.

Therefore, the contested retail services connected with the sale of furniture; wholesale services in relation to furniture; retail services in relation to furniture; online retailing relating to furniture; wholesaling relating to furniture sets; retailing relating to furniture sets; wholesaling relating to bathroom furniture; retailing relating to bathroom furniture; wholesaling relating to cabinets; retailing relating to cabinets; wholesaling relating to tables; retailing relating to tables; wholesaling relating to racks; retailing relating to racks; wholesale services in relation to chests of drawers; retail services in relation to chests of drawers; wholesaling relating to showcases; retailing relating to showcases; wholesaling relating to wall units; retailing relating to wall units, all related to the retailing and wholesaling of furniture and different types thereof, are similar to the opponent’s furniture.

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 and services found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise, the latter in relation to the contested wholesale services. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

 

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 verbal elements ‘MINISO’ of the earlier mark and ‘MINIO’ of the contested sign are not meaningful in certain territories, and they are, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the aforesaid elements of the signs are meaningless, such as the German-speaking part of the public.

The figurative element of the contested sign will be perceived as a stylised letter ‘M’. This is due to the fact that it is placed above the verbal element ‘MINIO’, and, therefore, it will be associated with its initial. Since this element has no meaning in relation to the relevant services, it is distinctive.

The elements ‘GO FOR IT’ are English words which will be associated with the indication of going for something. This meaningful expression will be understood by at least part of the public under analysis, since it is formed by basic English words normally known by the relevant public. Bearing in mind that the relevant services are retail and wholesale services, this expression is weak since it merely transmits a message inviting to go for (i.e. buy) the goods subject of these services.

Both marks are figurative. However, the slightly stylised typeface of the verbal elements ‘MINISO’ of the earlier mark and ‘MINIO’ and ‘GO FOR IT’ of the contested sign is not very significant, as it is quite standard and will not draw the consumer’s attention away from the words it embellishes.

The elements ‘M’ and ‘MINIO’ of the contested sign are the dominant elements as they are the most eye-catching.

 

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).

 

Visually, the signs coincide in the letters ‘MINI(*)O’, depicted in green in the contested sign. The marks differ in the fifth letter ‘S’ of the earlier mark and in the additional elements of the contested sign, namely its distinctive and dominant verbal element ‘M’ and the weak (at least for a part of the public under analysis) and non-dominant verbal element ‘GO FOR IT’, as well as in the typeface of both signs.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MINI(*)O’, present identically in both signs. The pronunciation differs in the sound of the fifth letter ‘S’ of the earlier mark and in the sound of the additional elements of the contested sign, being the first letter ‘M’ and the verbal element ‘GO FOR IT’, this latter if pronounced.

Therefore, the signs are aurally similar to an above-average degree or to an average degree, depending on whether the element ‘GO FOR IT’ is pronounced or not.

Conceptually, although the public under analysis will perceive the meaning(s) of some of the elements of the contested sign, namely the letter ‘M’ and at least for a part of the public the expression ‘GO FOR IT’, as explained above, the earlier mark 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.

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 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

A likelihood of confusion (including a likelihood of association) 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.

The contested services are similar to the opponent’s goods. They target the general public, as well as professionals, whose level of attention may vary from average to higher than average. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to a below-average degree, aurally similar to an average degree or to an above-average degree depending on whether the non-dominant verbal element ‘GO FOR IT’ is pronounced or not, and the marks are not conceptually similar. The signs coincide in the majority of letters of the earlier mark and all the letters of the distinctive and co-dominant verbal element ‘MINIO’ of the contested sign. The marks differ in the verbal elements ‘M’ and ‘GO FOR IT’ of the contested sign, as well as, in the green colour of its verbal element ‘MINIO’and the typefaces of both marks. However, the verbal element ‘M’ will be perceived as the initial of the verbal element ‘MINIO’ which is completely included in the earlier mark, the verbal element ‘GO FOR IT’ is secondary in the contested sign and the remaining differences, such as the typefaces and figurative aspects of the signs, have very little impact in the overall impression of the signs.

Bearing in mind all of the above, it is considered that the differences between the signs are not sufficient to counteract their similarities. Furthermore, while it is possible that the public may not directly confuse the signs in question, the Opposition Division deems it likely that indirect confusion in the form of likelihood of association may occur. Indirect confusion results when the relevant public is able to distinguish between the marks, but may still believe that the goods or services they cover originate from the same undertaking or from economically-linked undertakings. The contested sign could be perceived as a line of services of the opponent.

 

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

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 961 214. It follows that the contested trade mark must be rejected for all the contested services.

 

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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As the earlier European Union trade mark registration No 17 961 214 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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).

 

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

 

 

Martin MITURA

Victoria DAFAUCE MENÉNDEZ

Sylvie ALBRECHT

 

 

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.