OPPOSITION No B 3 129 796

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

Shenzhen Yutong Packaging Technology Co., Ltd., 3/F Office Building 1, Shihuan Road, Shilong Community, Shiyan Street, Bao’an District, Shenzhen, People’s Republic of China (applicant), represented by Raffaele Tamborrino, Via Capitano Pirrelli, n. 24, 70043 Monopoli (BA), Italy (professional representative).

On 18/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 129 796 is upheld for all the contested goods, namely:

Class 20: Cots; cradles; high chairs for babies; infant walkers; moses baskets; baby changing mats; head positioning pillows for babies; pillows; pet cushions; furniture; works of art of wood, wax, plaster or plastic.

2. European Union trade mark application No 18 246 303 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

On 28/08/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 246 303 (figurative mark), namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 11 466 455 ‘Yuuto’. 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

The contested goods are the following:

Class 20: Cots; cradles; high chairs for babies; infant walkers; moses baskets; baby changing mats; head positioning pillows for babies; pillows; pet cushions; furniture; works of art of wood, wax, plaster or plastic.

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

Furniture is identically contained in both lists of goods.

The contested cots; cradles; high chairs for babies and moses baskets – which are also a type of cradle – ‘a portable cradle for a baby, often made of straw or wicker’ (information extracted from Collins Dictionary on 06/08/2021 at https://www.collinsdictionary.com/dictionary/english/moses-basket) are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested infant walkers and baby changing mats are sold in the same commercial outlets where the furniture for babies is sold. They target the same public and could be manufactured by the same producers. Therefore, they are similar to the opponent’s furniture.

The contested pet cushions are similar to the opponent’s furniture. Although the contested goods are specifically elaborated for pets, it cannot be excluded that the goods have the same relevant public, distribution channels or producers as the opponent’s furniture, which also includes pet furniture.

The contested head positioning pillows for babies and pillows are similar to the opponent’s furniture. Furniture includes beds, which are pieces of furniture that are designed for sleep or rest. Pillows are cloth cases stuffed with feathers, foam rubber or other materials, used to support the head in bed, especially during sleep. These goods have the same purpose (i.e. to enhance the rest and sleep of the user), distribution channels and end users. Furthermore, beds need complements to fulfil their function, such as pillows, which play a fundamental role in the sleeping experience and are complementary to the opponent’s goods.

The contested works of art of wood, wax, plaster or plastic are similar to the opponent’s furniture. It is common for furniture stores to offer for sale various types of works of art, such as statues, figurines, and ornaments, to enable purchasers of furniture to buy them at the same time to achieve an accomplished and harmonious decorative outfit. In addition, these goods are commonly advertised together in the same catalogues and specialist interior design magazines. Therefore, consumers may believe that the responsibility for the production of these goods lies with the same undertaking. Moreover, they target the same public and often share the same distribution channels.

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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The relevant public’s degree of attention may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the goods.

c) The signs

Yuuto
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 signs are meaningless for the relevant public and therefore distinctive for the respective goods. Consequently, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, when figurative marks with verbal elements and word marks are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the verbal element in the figurative sign is highly stylised. In the present case, the verbal element ‘YUTO’ of the contested sign is depicted in stylised black upper-case letters. However, the stylisation does not prevent the consumer from clearly and immediately perceiving this verbal element. Apart from the said stylisation, the difference between the verbal elements of the signs is only in the third letter ‘u’ of the earlier mark, placed in the middle of the sign, where consumers pay less attention. Although relatively short, the signs have a very similar length. Therefore, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘YU*TO’. The pronunciation differs in the sound of the third letter ‘U’ of the earlier mark, which has no counterpart in the contested mark. It is likely that the double ‘u’ in the middle of the earlier mark will be pronounced as a single sound or as a long ‘u’. Therefore, the signs are aurally highly 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

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.

The goods are partly identical and partly similar. The degree of attention of the relevant public varies from average to higher than average. The signs are visually similar to at least an average degree and are aurally highly similar. The conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

The signs differ in only one letter, placed in the middle of the earlier mark, where consumers pay less attention and this difference could remain unnoticed. They also differ in the figurative aspects of the contested sign. These differences are not sufficient to overcome the heightened visual and aural similarity of the signs, especially in the context of identical and similar goods. Indeed, it is highly conceivable that when encountering the conflicting signs on identical or similar goods, the relevant consumers (even if professionals displaying a higher than average degree of attention) will not be able to safely differentiate between them.

Account is taken of the fact that even consumers who pay 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).

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

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 11 466 455. It follows that the contested trade mark must be rejected for all the contested goods.

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

Rasa BARAKAUSKIENÉ

Inés GARCÍA LLEDÓ

Michele M. BENEDETTI-ALOISI

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.