OPPOSITION No B 2 540 899

Familon Oy, Heikkiläntie 7 A, 00210 Helsinki, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Familings Oy, Energiakuja 3, 00180 Helsinki, Finland (applicant), represented by Jarmo Juhani Talvitie, Rajamãentie 46, 04340 Tuusula, Finland (professional representative).

On 01/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 540 899 is upheld for all the contested goods, namely:

Class 20: Pillows, cushions and mattresses; mattress toppers; mattress toppers; cots for use by children; beds; crib bumpers; crib bumpers; bedding; bed fittings, not of metal; hospital beds; sleeping mats; changing mats; sleeping bags; support pillows for use in baby seating; travel cots; babies’ baskets; furniture; furniture parts; baskets; blinds, and fittings for curtains and blinds; furnishings; mirrors [looking glasses]; picture frames; wickerwork; tanks (non-metallic); plate racks; plate racks; keyboards for hanging keys; screens for fireplaces [furniture]; bulletin boards [other than electronic]; clothes hangers and clothes hooks; hooks for towels (non-metallic -); garment covers [storage]; bath pillows; dressing tables; sauna cushions; displays, stands and signage; corks; caskets; bins of wood or plastic; fasteners; door, gate and window fittings; letter boxes; nesting boxes; plant supports; broom handles; yellow amber; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class.

Class 24: Bedstead bags; bed clothes and blankets; linens; blankets; detachable fabric liners for nappies; net curtains; furnishing fabrics; soft furnishings; kitchen and table linens; handkerchiefs of textile; streamers of textile; household textile articles; towels of textile; bath linen; fabrics; washers of textile; bath mitts; plastic material [substitute for fabrics]; table covers of plastic; wall hangings of textile; mosquito nets; toilet seat covers.

2. European Union trade mark application No 13 594 023 is rejected for all the contested goods. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 594 023, namely against all the goods in Classes 20 and 24. The opposition is based on European Union trade mark registration No 6 336 598. 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.

1. The goods

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

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.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

The contested goods are the following:

Class 20: Pillows, cushions and mattresses; mattress toppers; mattress toppers; cots for use by children; beds; crib bumpers; crib bumpers; bedding; bed fittings, not of metal; hospital beds; sleeping mats; changing mats; sleeping bags; support pillows for use in baby seating; travel cots; babies’ baskets; furniture; furniture parts; baskets; blinds, and fittings for curtains and blinds; furnishings; mirrors [looking glasses]; picture frames; wickerwork; tanks (non-metallic); plate racks; plate racks; keyboards for hanging keys; screens for fireplaces [furniture]; bulletin boards [other than electronic]; clothes hangers and clothes hooks; hooks for towels (non-metallic -); garment covers [storage]; bath pillows; dressing tables; sauna cushions; displays, stands and signage; corks; caskets; bins of wood or plastic; fasteners; door, gate and window fittings; letter boxes; nesting boxes; plant supports; broom handles; yellow amber; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class.

Class 24: Bedstead bags; bed clothes and blankets; linens; blankets; detachable fabric liners for nappies; net curtains; furnishing fabrics; soft furnishings; kitchen and table linens; handkerchiefs of textile; streamers of textile; household textile articles; towels of textile; bath linen; fabrics; washers of textile; bath mitts; plastic material [substitute for fabrics]; table covers of plastic; wall hangings of textile; mosquito nets; toilet seat covers.

Earlier European Union trade mark No 6 336 598 is registered for the entire class headings of Classes 20 and 24 of the Nice Classification. It was filed on 05/10/2007. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

Consequently, in order to take account of the entire alphabetical list of Classes 20 and 24 of the earlier mark, the Opposition Division should compare the goods of the contested mark with both (i) the general indications specified and (ii) the terms in the alphabetical list that do not fall within the natural and usual meaning of these general indications.

The Opposition Division has identified the following goods in the alphabetical list covered by the earlier EUTM that do not fall within the natural and usual meaning of the aforesaid general indications:

Class 20: Stuffed birds; stuffed animals.

Class 24: Curtains of plastic; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of plastic.

The term ‘such as’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods shall not be regarded as being similar or dissimilar to 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 pillows, cushions and mattresses; cots for use by children; beds; bedding; bed fittings, not of metal; hospital beds; sleeping bags; travel cots; babies’ baskets; furniture; furniture parts; baskets; blinds; furnishings; mirrors [looking glasses]; picture frames; wickerwork; tanks (non-metallic); plate racks (repeated twice); keyboards for hanging keys; screens for fireplaces [furniture]; bulletin boards [other than electronic]; clothes hangers and clothes hooks; hooks for towels (non-metallic -); garment covers [storage]; dressing tables; displays, stands and signage; corks; caskets; bins of wood or plastic; fasteners; door, gate and window fittings; letter boxes; nesting boxes; plant supports; broom handles; yellow amber; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class are identical to the opponent’s goods in this class, either because they are listed (including synonyms) in the class heading or the alphabetical list of Class 20, for which the earlier mark is considered registered, or because they fall within the natural and usual meaning of these general indications (e.g. the contested bins of wood or plastic and statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic are included in the broad category of the opponent’s 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).

The contested mattress toppers (repeated twice); crib bumpers; sleeping mats; changing mats; support pillows for use in baby seating; fittings for curtains and blinds; bath pillows; sauna cushions are furniture accessories that may be sold together with various items of the opponent’s furniture. Consequently, they have the same purpose, can be complementary, can be produced by the same manufacturers and can be presented to the public by the same suppliers. Therefore, these goods are considered similar.

Contested goods in Class 24

The contested bedstead bags; bed clothes and blankets; linens; blankets; detachable fabric liners for nappies; net curtains; furnishing fabrics; soft furnishings; kitchen and table linens; handkerchiefs of textile; streamers of textile; household textile articles; towels of textile; bath linen; fabrics; washers of textile; bath mitts; wall hangings of textile; mosquito nets; toilet seat covers are included in the broad category of the contested textiles and textile goods, not included in other classes. Therefore, the contested goods are considered identical to the opponent’s goods.

The contested table covers of plastic are included in the broad category of the opponent’s bed and table covers, and these goods are, therefore, identical.

The contested plastic material [substitute for fabrics] is identically included (including synonyms) in the alphabetical list of Class 24 in the 9th edition of the Nice Classification, for which the earlier mark is considered registered.

2. 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 and similar are directed mostly at the public at large. The degree of attention will vary from average to higher than average, depending on the price of the goods and the frequency with which they are purchased.

3. The signs

FAMILON
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 earlier mark is a word mark, ‘FAMILON’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is in upper or lower case characters.

The contested sign is a figurative mark composed of the verbal element ‘Familings’, written in stylised black letters and, above it, a figurative element depicting a sleeping baby. Bearing in mind, that the relevant goods are, inter alia, beds, pillows, mattresses, bedclothes and other similar goods, this figurative element is considered relatively weak in relation to some of the goods in Classes 20 and 24. Consequently, the verbal element ‘Familings’ is considered more distinctive than the figurative element.

The applicant argues that the distinctive and visually dominant figurative element of the sleeping baby, which appears above the verbal element, will enable the average consumer to safely distinguish between the signs. However, according to established practice, the notion of dominance relates only to the visual impact of the elements of a sign; that is, ‘dominant’ is used exclusively to mean ‘visually outstanding’. Consequently, the dominant element of a sign is mainly determined by its position, size and/or colour. In the present case, both elements of the contested sign (verbal and figurative) are of a similar size and they occupy the same central position in the mark. Since neither of these two components is more visually outstanding than the other, there is no dominant element. Therefore, the Opposition Division does not consider the figurative element the dominant element of the contested sign. Moreover, as explained in the previous paragraph, the figurative element of the contested sign is rather weak for some of the goods, for example cots for use by children; crib bumpers; changing mats; support pillows for use in baby seating. For the remaining goods, for example pillows, cushions and mattresses; bedding; baskets, etc., this figurative element alludes to their intended purpose, namely that they are to be used by babies. Therefore, the impact of this element on the overall impression produced by the contested sign will be limited.

The earlier mark has no elements that could be considered clearly more distinctive than other elements, and nor does it have any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Both parties argue that the letters ‘FAMIL’, included in both signs, closely resemble the word ‘family’ in various languages of the European Union (e.g. the English word ‘family’, the Spanish, Portuguese and Hungarian word ‘familia’, the Dutch, German and Danish word ‘famille’, etc.). However, this connection will not necessary be made by the relevant public, since the sequence of letters at issue does not contain the complete word ‘family’ in any of the languages referred to by the parties and, moreover, it is followed by the sequence of letters ‘ON’ or ‘INGS’, which do not convey any meaning. Although the sequence of letters ‘FAMIL’ might be perceived by part of the public as alluding to the word ‘family’, the Opposition Division considers that, in general, the signs under comparison do not contain elements that will convey clear concepts and the public at large will not artificially split the signs into separate elements, but will perceive them as a whole, namely as invented words.

Visually, the signs coincide in the letters ‘FAMIL’ at the beginning of the earlier mark and the verbal element of the contested sign. The signs differ in their endings, ‘ON’ in the earlier mark versus ‘INGS’ in the verbal element of the contested sign. The signs also differ in the figurative element and the overall graphical depiction of the contested sign.

However, it must be taken into account that, 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. Moreover, the former is, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 45). In the present case, there is no reason to deviate from this principle, especially since the figurative element of the contested sign is rather weak for some of the goods, as explained above.

Moreover, the first parts of the verbal elements of the conflicting marks, ‘FAMIL’, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, each of the marks will be pronounced in three syllables, /FA/MI/LON/ versus /FA/MI/LINGS/, and, therefore, they have the same rhythm and intonation. The pronunciation of the signs coincides in the sound of the first five letters, ‘FAMIL’, present identically in both signs. The pronunciation differs in the sound of the last letters ‘ON’ and ‘INGS’ of the earlier mark and the contested sign, respectively. However, these different endings coincide in the sound of the letter ‘N’, placed in the same position in both marks, which to some extent reduces the difference between the two endings. Consequently, the first two identical syllables of each sign, namely /FA/MI/, and the same letter ‘L’ at the beginning of the third syllable, /LON/ versus /LINGS/, in which the letter ‘N’ is in the same position, will result in similar pronunciations and create similar overall aural impressions.

Therefore, the signs are aurally similar to a high degree.

Conceptually, even though part of the relevant public will not attribute any particular meaning to the earlier mark and the verbal element of the contested sign, the figurative element of the contested sign will be perceived as invoking the concept of a sleeping baby. Therefore, taking into account the fact that the earlier mark is meaningless, the signs are considered 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.

4. 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.

5. 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 8 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As was concluded above, the distinctiveness of the earlier mark is average and the contested goods are identical or similar to the opponent’s goods. The earlier mark and the verbal element of the contested sign have two out of three syllables in common; they differ in their last syllables, which, however, have in common the letters ‘L’ and ‘N’ in the same positions. The signs also differ visually in the relatively weak figurative element and the overall stylisation of the contested sign. Conceptually, the figurative element of the contested sign invokes a sleeping baby, which makes the contested sign conceptually not similar to the earlier mark. Therefore, as explained in section c) of this decision, the marks are visually and aurally similar.

Since the differences between the signs are confined to their endings and the overall stylisation and relatively weak figurative element of the contested sign, it is considered that they are insufficient to enable the average consumer to safely distinguish between the signs, even though the public may have a higher than average degree of attention with regard to the identical or similar goods in question.

Concerning the applicant’s argument that the goods sold under the mark ‘Familings’ are designed solely for babies while the opponent’s goods target the traditional bedding market and that these different kinds of goods are sold in different sales outlets, the Opposition Division refers to settled case law, which states that the comparison of the goods required by Article 8(1)(b) EUTMR must relate to the description of the goods covered by the earlier mark relied on in opposition and not the goods for which the trade mark is actually used, unless, following an application in accordance with Article 43(2) and (3) EUTMR, the proof of use of the earlier mark is only in respect of some of the goods or services for which it is registered (see, to that effect, 22/03/2007, T‑364/05, Pam Pluvial, EU:T:2007:96, § 85). Therefore, whether the opponent is currently using its mark only for traditional bedding products or not is irrelevant, as the specification of goods is not restricted to these products and future use of its mark for products designed for babies cannot be ruled out.

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarities resulting from their coinciding elements, and that, in relation to identical or similar goods, consumers may perceive the contested sign as a modification of the earlier mark and believe that the goods originate from the same undertaking or at least from economically linked undertakings.

Taking into account 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), the Opposition Division finds that 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 European Union trade mark registration No 6 336 598. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Renata COTTRELL

Rasa BARAKAUSKIENE

Julia SCHRADER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.