OPPOSITION Nо B 3 086 770

 

Flex Equipos de Descanso, S.A., Calle Río Almanzora, 2 - Área Empresarial Andalucía, Sector 7 y 8, 28906 Getafe (Madrid), Spain (opponent), represented by Isern Patentes y Marcas, S.L., C/ Príncipe de Vergara 43, 6º Planta, 28001 Madrid, Spain (professional representative) 

a g a i n s t

 

Flexhouse Sp. z o.o., Ostródzka 245b /7b, 03-289 Warszawa, Poland (applicant), represented by Małgorzata Agnieszka Zielińska, Conrada 19/18, 01-922 Warsaw, Poland (professional representative).

On 24/08/2020, the Opposition Division takes the following

DECISION:

1.

Opposition No B 3 086 770 is partially upheld, namely for the following contested goods and services: Class 20: All the goods for which protection is sought in this class. Class 35: Wholesaling and retailing and e-commerce relating to the following goods: furniture, other than beds, transformable furniture, other than beds, seating furniture, other than beds, composable furniture, other than beds, indoor furniture, other than beds, cupboards, dressers, racks [furniture], stools, shelves, desks and tables, chests, storage drawers [furniture], stools, mirrors, armchairs, chairs, sofas, divans incorporating storage space, pouffes, internal furnishings being bottles, paintings, candlesticks, clocks, textiles, vases, flower-stands, figurines, statuettes; market research and business analyses; provision of computerised data relating to business; distribution of advertising material; corporate image development consultation; advisory services relating to electronic data processing; business information provided online from a computer database or the internet; arranging and conducting of promotional events; on-line advertising on a computer network; business consultancy relating to the administration of information technology; providing assistance in the management of industrial or commercial enterprises; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; opinion polling; dissemination of advertising for others via an on-line communications network on the internet; providing an online platform for the negotiation of commercial transactions between third parties in the sale and purchase of goods; providing online advertising space for others; price comparison services. Class 42: Design of furniture, armchairs and sofas, interior design.

2.	European Union trade mark application No 17 963 524 is rejected for all the above goods and services. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

 

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 963 524 (figurative mark), namely against all the goods and services in Classes 20, 35 and 42. The opposition is based on the following earlier figurative marks:

• European Union trade mark registration No 16 051 724 ;

• Spanish trade mark registrations No 3 587 065 ; No 3 666 108 ; No 3 666 111 ; No 3 666 114 and No 2 147 672 ;

• European Union trade mark registration No 2 275 220 .

The opponent invoked Article 8(1)(b) in relation to all earlier marks, and Article 8(5) EUTMR in respect of the last two marks listed above, that is, Spanish trade mark registration No 2 147 672 and European Union trade mark registration No 2 275 220.

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 Spanish trade mark registration No 2 147 672 and European Union trade mark registration No 16 051 724 .

a) The goods and services

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

Spanish trade mark registration No 2 147 672

Class 20: Beds, mattresses and pillows made from wool, flock and thatch palm, horsehair and similar, mixed mattresses with metallic springs, rubber pillows and mattresses, foam and all kind of polyurethane foams; cradles, divans; straw mattresses with iron and wood framework; bunk beds, tables, cradles, furniture for country and beach, all kind of furniture, including metallic and tubular furniture; air mattresses not adapted for medical use; mattresses and spring mattresses; wooden bed skeletons; bed items (except bed linen); (non metallic) bed frameworks; small wheels for (non metallic) beds; spring mattresses; hospital beds; hydrostatic beds not adapted for medical use; furniture, mirrors, frames; products non comprised in other classes; of wood, cork, reed, cane, wicker, horn, bone, ivory, whale, shell, amber, nacre, sea foam, substitute for all these materials or plastic materials.

EUTM No 16 051 724

Class 17: Unwrought or semi-wrought rubber, gutta percha, gum, asbestos and mica and substitutes for all those materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 20: Mattresses, pillows and mattress bases.

Class 35: Publicity services; wholesaling and retailing in shops and via global computer networks of all kinds of mattresses, pillows, mattress bases, unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, and flexible pipes, not of metal.

The opposition is directed, after a limitation made by the applicant on 16/02/2020, against the following goods and services:

Class 20: Furniture, other than beds; transformable furniture, other than beds; seating furniture, other than beds; composable furniture, other than beds; indoor furniture, other than beds; cupboards; dressers; racks; racks; cupboards; desks and tables; cupboards; chests; storage drawers [furniture]; step stools; mirrors [looking glasses]; armchairs; seats; sofas; divans incorporating storage space; pouffes.

Class 35: Wholesaling and retailing and e-commerce relating to the following goods: furniture, other than beds, transformable furniture, other than beds, seating furniture, other than beds, composable furniture, other than beds, indoor furniture, other than beds, cupboards, dressers, racks [furniture], stools, shelves, desks and tables, chests, storage drawers [furniture], stools, mirrors, armchairs, chairs, sofas, divans incorporating storage space, pouffes, internal furnishings being bottles, paintings, candlesticks, clocks, textiles, vases, flower-stands, figurines, statuettes; market research and business analyses; transcription of communications [office functions]; provision of computerised data relating to business; distribution of advertising material; corporate image development consultation; advisory services relating to electronic data processing; office functions; business information provided online from a computer database or the internet; registration and transcription of written communications; arranging and conducting of promotional events; data search in computer files for others; on-line advertising on a computer network; document reproduction; business consultancy relating to the administration of information technology; collection and systematisation of information into computer databases; providing assistance in the management of industrial or commercial enterprises; management of telephone call centers for other; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; opinion polling; dissemination of advertising for others via an on-line communications network on the internet; providing on-line auction services; providing an online platform for the negotiation of commercial transactions between third parties in the sale and purchase of goods; providing online advertising space for others; price comparison services.

Class 42: Design of furniture, armchairs and sofas, interior design; design of manufacturing methods; engineering design and consultancy; database design and development; software design and development; hosting computer sites; server administration; designing, creating, hosting, managing and/or maintaining websites for others; design and development of systems for electronic payment and the processing of electronic fund transfers.

An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the aforementioned list, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a further 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.

Contested goods in Class 20

The contested mirrors [looking glasses] are identically included, although with a slightly different wording, in the opponent’s Spanish trade mark No 2 147 672.

The contested furniture, other than beds; transformable furniture, other than beds; seating furniture, other than beds; composable furniture, other than beds; indoor furniture, other than beds; cupboards; dressers; racks; racks; cupboards; desks and tables; cupboards; chests; storage drawers [furniture]; step stools; armchairs; seats; sofas; divans incorporating storage space; pouffes are included in the broader category of the opponent’s furniture of the earlier Spanish mark. Therefore, they are identical.

Contested services in Class 35

The contested services in this class concern wholesaling and retailing of specific products and business support services (advertising, business and administrative management, as well as office functions services).

In relation to retail (and wholesale by analogy) services of specific goods, the similarity, or the lack thereof, between the goods to which the retail services relate and the goods covered by the other mark constitute an essential factor which needs to be taken into account. Retail services of specific goods can be similar to varying degrees, or dissimilar, to specific goods depending on the degree of similarity between the goods themselves, but also taking into account other factors.

Retail services concerning the sale of specific goods are similar to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

In the light of the above, the contested wholesaling and retailing and e-commerce relating to the following goods: furniture, other than beds, transformable furniture, other than beds, seating furniture, other than beds, composable furniture, other than beds, indoor furniture, other than beds, cupboards, dressers, racks [furniture], stools, shelves, desks and tables, chests, storage drawers [furniture], stools, mirrors, armchairs, chairs, sofas, divans incorporating storage space, pouffes, internal furnishings being flower-stands are similar to the opponent’s furniture in Class 20 of the earlier Spanish mark (since the goods that are subject to the wholesale/retail services of the applicant are identical to the opponent’s furniture).

There is a low degree of similarity between retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between these goods on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer. Also a low degree of similarity between the goods sold at retail and other goods may be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops/in the same sections, belong to the same market sector and are, therefore, of interest to the same consumers.

In light of the above, the contested wholesaling and retailing and e-commerce relating to the following goods: internal furnishings being bottles, paintings, candlesticks, clocks, textiles, vases, figurines, statuettes are similar to a low degree to the opponent’s furniture in Class 20 of the earlier Spanish mark (since these goods are commonly sold together in the same furniture and interior design outlets and fulfil the other criteria mentioned above).

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the clients’ position in the market and enabling them to acquire a competitive advantage through publicity. These services are provided by advertising companies, which study their clients’ needs and create a personalised strategy regarding the advertising of their goods and services. In order to fulfil this target, many different means and products might be used (newspapers, websites, videos, mailing, etc). Taking this into account, the contested distribution of advertising material; corporate image development consultation; arranging and conducting of promotional events; on-line advertising on a computer network; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; dissemination of advertising for others via an on-line communications network on the internet; providing online advertising space for others are all of an advertising nature and are, therefore, included in the broader category of the opponent’s publicity services in Class 35 of EUTM No 16 051 724, thus, being identical.

The contested market research and business analyses; provision of computerised data relating to business; advisory services relating to electronic data processing; business information provided online from a computer database or the internet; business consultancy relating to the administration of information technology; providing assistance in the management of industrial or commercial enterprises; opinion polling are all business management services. As such, these services have some relevant points in common with the opponent’s publicity services of the earlier EUTM. When comparing business management with advertising it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to reinforce the [business] position in the market and the purpose of business management services is to help a business in acquiring, developing and expanding market share. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice about how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising and marketing consultancy as a part of their services, and therefore the relevant public may believe that these services have the same professional origin. Consequently, these services are similar to a low degree (22/11/2011, R 2163/2010-1, INNOGAME / INNOGAMES, § 13-17).

The contested providing an online platform for the negotiation of commercial transactions between third parties in the sale and purchase of goods has some points in common with the opponent’s wholesaling and retailing in shops and via global computer networks of all kinds of mattresses, among others, in Class 35 of the earlier EUTM.

Operating an on-line marketplace entails the provision of a platform where the buyer can display and offer its goods for sale, without the intermediary being necessarily concerned about what is being sold, the price, etc. It is like an intermediary service, a passive service of just giving the buyer to show whichever goods they choose to sell, to price them themselves, and just to pay a fee for the use of the space. Retail and wholesale services are more active, as the service provider will be positively engaged in the promotion of the sale of the specific goods assembled for the customer. Therefore, the opponent’s retail (or wholesale) services and the commercial intermediary services to facilitate the sale of the goods of others show a certain degree of similarity, as the relevant public may be the same, whether this is as a prospective buyer or seller, and the purpose of the services, broadly speaking, may be the same, facilitating the sale of goods. It follows that the services under comparison are similar to a low degree.

The contested price comparison services constitute a type of provision of commercial information to consumers. As such, they coincide in purpose, target public and provider with the opponent’s publicity services of the earlier EUTM, and are, thus, similar to a low degree.

Lastly, the contested providing on-line auction services; transcription of communications [office functions]; office functions; registration and transcription of written communications; data search in computer files for others; document reproduction; collection and systematisation of information into computer databases; management of telephone call centers for other are either auctioneering services or office functions/ clerical services, which bear no similarity with the opponent’s goods and services.

In respect of auctioneering, this is usually a public sale of goods, where people make bids for a product, until it is sold to the highest bidder. Even though this type of service may show certain commonalities with retailing, whether or not this is the case depends on the type of goods to be sold and auctioned. In the present case, the contested providing on-line auction services are not considered any similar to the opponent’s wholesaling and retailing in shops and via global computer networks of all kinds of mattresses, pillows, mattress bases, unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, and flexible pipes, not of metal in Class 35 of the earlier EUTM, since these goods are not usually sold through auctions (unlike other goods such as furniture, fish or agricultural products). The contested services are even more distant from the opponent’s goods in Classes 17 (industrial materials) and 20 (furniture, mattresses and other related goods) and the rest of the services in Class 35 (publicity services). They have different nature and/or serve different needs, are not complementary or in competition, do not share distribution channels, do not necessarily target the same public and are generally produced/provided by different undertakings.

When comparing clerical services to the opponent’s publicity services it should be noted that a professional who helps with the internal day-to-day operations of an organisation of a business, including the administration and support services in the ‘back office’ will not offer advertising strategies. These services are even more removed from the opponent’s goods in Classes 17 (industrial materials) and 20 (furniture, mattresses and other related goods) and the rest of the services in Class 35 (wholesale and retail of specific goods) for the same reasons as those pointed out above.

Therefore, the contested services mentioned above are dissimilar to all of the opponent’s goods and services.

Contested services in Class 42

The contested design of furniture, armchairs and sofas; interior design have relevant points in common with the opponent’s furniture in Class 20 of the earlier Spanish mark. Despite being of a different nature, since goods are tangible and services are intangible, these goods and services target the same public and can be produced/provided by the same undertakings. Indeed, the market reality shows that consumers are increasingly interested in customised furniture and interior design solutions that fit their needs and wishes. This means that is not unusual for companies providing the contested design services to also produce customised pieces of furniture, and vice versa. Therefore, they are similar to a low degree.

The rest of contested services in this class, namely design of manufacturing methods; engineering design and consultancy; database design and development; software design and development; hosting computer sites; server administration; designing, creating, hosting, managing and/or maintaining websites for others; design and development of systems for electronic payment and the processing of electronic fund transfers are not sufficiently close to any of the opponent’s goods and services in Classes 17, 20 and 35 as to render them similar. They have different natures and/or purposes. They are not necessarily complementary or in competition, and do not target the same public. The fact that some of the opponent’s goods involve, for instance, design and engineering, is not enough to find these goods and services similar, since it is not common that a manufacturer of a piece of furniture, for example, offers also general design and engineering services or IT services to others. Therefore, the contested services above are found dissimilar to all of the opponent’s goods and services in Classes 17, 20 and 35.

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 identical or similar to varying degrees are partly directed at the public at large (goods in Class 20; retail services in Class 35), at business customers with specific professional knowledge or expertise in various fields (e.g. wholesaling services; market research and business analyses in Class 35) and partly at both (e.g. design of furniture, armchairs and sofas).

The degree of attention 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

(EM1) (EM2)
Earlier trade marks	Contested sign

The relevant territories are Spain in relation to EM1 and the European Union in respect of EM2.

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 earlier marks include the verbal element ‘FLEX’ in rather standard bold capital letters, in italics in EM1. The opponent’s EM1 claims the colours corresponding to the codes Pantone 286, 032 and 1815, which are blue, red and dark red, while this element is depicted in grey in EM2. The verbal element ‘FLEX’ will be associated by the relevant public with the concept of ‘flexible, flexibility’ (elasticity/adaptability). This is because the same or very similar equivalent words exist in the majority of the languages (e.g. ‘flexible’ in Spanish and French, ‘flessible’ in Italian, ‘flexibel’ in Dutch and German, ‘fleksibilen’ in Bulgarian, etc.). Bearing in mind the relevant goods and services, it is considered that this element is of limited distinctiveness in relation to the relevant goods (mirrors, furniture), and the wholesale/retail of mattresses, since may be seen to refer to their characteristics, while it is considered distinctive in relation to the rest of services (publicity services), since it does not convey a clear descriptive or otherwise allusive notion in relation to them.

The earlier marks also include the depiction of a swan against a square background (EM1) and a circular device containing the verbal and numerical elements ‘FLEX BEDDING GROUP – SINCE 1912’ (EM2). Due to the very small size of these verbal elements in EM2 and their subordinate position surrounding the figurative circular device with swirled lines, they are barely perceptible and are therefore considered negligible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration in the present comparison.

Both the depiction of the swan and the circular device are considered distinctive, since they are not commonplace elements and do not refer to the relevant goods and services.

The contested figurative sign consists of the verbal element ‘flexHOUSE’ depicted partly in a slightly stylised typeface (‘flex’) and partly in standard bold capital letters (‘HOUSE’) in black. These two components will be clearly perceived by the relevant consumers due to the use of different typefaces and the fact that consumers tend to break single elements down into components that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In relation to the component ‘flex’, its meaning will be the same as in the earlier marks. Therefore, the same reasoning applies in respect of its degree of distinctive character (i.e. it will be of limited distinctiveness in relation to the goods in Class 20, the wholesale/retail services in Class 35 and the relevant services in Class 42) and distinctive for the rest of services in Class 35 (advertising and business management), in relation to which there is no clear semantic connection.

The component ‘HOUSE’ is a basic English word that will be understood throughout the relevant territories referring to a person’s dwelling, residence or abode. Moreover, this term is used internationally in the names of companies, inter alia, in the publishing and design sectors (see Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/house), so it may be perceived as a reference to the establishment providing the goods/services and not as an indication of the commercial origin. Consequently, its distinctive character would be, at best, low in relation to the relevant goods and services.

It must also be remarked that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is justified by the fact that the public reads from left to right, which makes the left part of the contested sign the initial part, and therefore the one that first catches the attention of the reader (cfr. 15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Furthermore, 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).

Neither sign has any element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the element ‘FLEX’, which is the only (or the only clearly perceptible/non-negligible) verbal element in the earlier marks and the contested sign’s first component. They differ in the earlier marks’ figurative elements, the contested sign’s second component ‘-HOUSE’ and the respective typographies of the coinciding element ‘FLEX’, only slightly stylised in the contested sign, as well as the different colours.

Therefore, and taking into account both that the earlier marks’ only (or only clearly perceptible) verbal element is embedded in the contested sign and also the degree of distinctiveness of the respective components, the signs are found visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules of the different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘FLEX’, which constitute the only (or the only clearly perceptible/non-negligible) verbal element of the earlier trade marks and the first component of the contested sign. The pronunciation differs in the sound of the contested sign’s final component ‘-HOUSE’, which has no equivalent in the earlier marks.

Consequently, and taking into account the distinctive character of the respective elements/components of the signs, they are found aurally highly similar, when ‘FLEX’ is distinctive and similar to an average degree otherwise.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same concept of ‘flexible’, which is distinctive in respect of some services and of limited distinctiveness in respect of some other goods/services. There are other concepts involved, namely the swan in EM1 (which is a distinctive figurative element) and the component ‘HOUSE’ in the contested sign. Taking into account, in particular, that the distinctive character of the contested sign’s additional verbal component ‘HOUSE’ is not any higher than ‘FLEX’, it can be concluded that the signs are conceptually similar to an average degree overall.

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 marks

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 explicitly claimed that its Spanish mark No 2 147 672 is particularly distinctive by virtue of intensive use or reputation, while no claim in that regard was made in relation to EUTM No 16 051 724. However, for reasons of procedural economy, the evidence filed by the opponent to prove that claim does not have to be assessed in the present section (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of both earlier marks will rest on their distinctiveness per se. In the present case, taking into account what has been said in section c) of this decision, the distinctiveness of the earlier marks must be seen as normal, despite the presence of an element of limited distinctiveness in respect of some of the goods and services at issue.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in order to determine the existence of a likelihood of confusion the signs must be compared by the taking an overall assessment of the visual, aural and conceptual similarities of the signs under opposition. The comparison must be based on the overall impression created by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997,- 251/95, Sabèl, EU:C:1997:528, § 22 et seq.). The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the specific case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

In this case, the goods and services are partly identical or similar to varying degrees and partly dissimilar. Those which are identical or similar to varying degrees target the general public and the professional one, whose level of attention may vary from average to higher than average. However, even consumers who pay a high degree of attention must be based on their imperfect recollection of trade marks (21/11/2013, 443/12-, ancotel, EU:T:2013:605, § 54).

The earlier trade marks are deemed to have normal inherent distinctiveness. The signs have been considered to be visually and conceptually similar to an average degree, while they are aurally either highly similar or similar to an average degree, by virtue of the coincidence between the only (or the only clearly perceptible/non-negligible) verbal element of the earlier marks and the initial part of the contested sign, where this element plays an independent role, the differences having less of an impact.

Even though the coinciding element is deemed to have a limited distinctive character in relation to part of the goods and services in question, it must be borne in mind that the fact that a coinciding element has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the earlier marks or of the elements of which they are composed must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving earlier marks or an element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70). In the present case, moreover, the distinctive character of the contested sign’s differing component (‘HOUSE’) is not any higher than that of the earlier marks’ verbal element, which is particularly relevant in the present case.

Furthermore, 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 corresponding goods or services come from the same undertaking or from economically-linked undertakings. It cannot be ruled out that the relevant consumer will perceive the contested sing as sub-brand— a variation of the earlier trade marks — configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 147 672 and European Union trade mark registration No 16 051 724.

It follows from the foregoing that the contested trade mark must be rejected in respect of those goods and services that have been considered identical or similar to those of the earlier trade marks. The opposition is also successful in respect of the contested services found only similar to a low degree to the goods and services of the opponent on account of the interdependence principle mentioned above, since the similarities between the signs compensate the low degree of similarity between these goods and services.

The rest of the contested services are different. Given that the similarity between goods and services is a prerequisite for Article 8(1) EUTMR to apply, the opposition based on that article and directed against those services cannot be successful.

The opponent has also based its opposition on Spanish trade mark registrations No 3 587 065  , No 3 666 108 , No 3 666 111 

and No 3 666 114 in respect of goods in Class 20, as well as on European Union trade mark registration No 2 275 220 for goods in Classes 6, 10, 17 and 20.

Since these trade marks cover either a narrower scope of goods (the Spanish marks) or goods that are as distant from the relevant contested services as the goods and services already compared (the EUTM covers metallic tubes, adornments and wheels for metallic beds in Class 6, beds and stretchers, mattresses and pillows for medical purposes in Class 10, in addition to goods in Classes 17 and 20 that have already been compared, and in relation to which the same considerations already made are applicable), the outcome cannot be any different in respect of the services for which the opposition has already been rejected; there is no likelihood of confusion in connection with the said services.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing Spanish mark in respect of which enhanced distinctiveness was claimed. The result would be the same even if that earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing Spanish mark in relation to the dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if that earlier mark enjoyed an enhanced degree of distinctiveness.

Finally, the opponent’s arguments suggesting that the earlier trade marks constitute a family or series of trade marks are not relevant in so far as the existence of a family or series of trade marks would not give rise to a likelihood of confusion between different goods and services.

REPUTATION — ARTICLE 8(5) EUTMR

According to the opponent, Spanish trade mark registration No 2 147 672 and European Union trade mark registration No 2 275 220 have a reputation in respect of all the goods for which the marks are registered in Spain and the European Union, respectively.

Pursuant to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case, the contested trade mark was filed on 01/10/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based and in relation to which reputation in Spain and the European Union has been claimed, had acquired such a reputation prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Spanish trade mark registration No 2 147 672

Class 20: Beds, mattresses and pillows made from wool, flock and thatch palm, horsehair and similar, mixed mattresses with metallic springs, rubber pillows and mattresses, foam and all kind of polyurethane foams; cradles, divans; straw mattresses with iron and wood framework; bunk beds, tables, cradles, furniture for country and beach, all kind of furniture, including metallic and tubular furniture; air mattresses not adapted for medical use; mattresses and spring mattresses; wooden bed skeletons; bed items (except bed linen); (non metallic) bed frameworks; small wheels for (non metallic) beds; spring mattresses; hospital beds; hydrostatic beds not adapted for medical use; furniture, mirrors, frames; products non comprised in other classes; of wood, cork, reed, cane, wicker, horn, bone, ivory, whale, shell, amber, nacre, sea foam, substitute for all these materials or plastic materials.

EUTM No 2 275 220

Class 6: Metallic tubes, adornments of metallic beds and wheels of metallic beds.

Class 10: Beds especially constructed for medical purposes, stretchers for hospitals; air mattresses, for medical purposes; childbirth mattresses; air pillows for medical purposes; soporific pillows for insomnia; pillows to protect the neck and the vertebrae.

Class 17: Fabric and insulating material.

Class 20: Beds, spring matresses, straw mattress, mattresses, pillows and metal-reinforced pillows.

The remaining contested services are the following:

Class 35: Providing on-line auction services; transcription of communications [office functions]; office functions; registration and transcription of written communications; data search in computer files for others; document reproduction; collection and systematisation of information into computer databases; management of telephone call centers for other.

Class 42: Design of manufacturing methods; engineering design and consultancy; database design and development; software design and development; hosting computer sites; server administration; designing, creating, hosting, managing and/or maintaining websites for others; design and development of systems for electronic payment and the processing of electronic fund transfers.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 14/11/2019, the opponent submitted the following evidence:

• ANNEX 1 – undated screenshots from the opponent’s website (www.flex.es), in Spanish, with some terms handwritten in English (i.e. ‘your bed, the most important place of the world’), showing the sign used in connection with mattresses, mattress bases and pillows. This annex also includes extracts in Spanish from www.dormitia.com, dated 03/03/2014, with an English translation thereof, summarising the history of the opponent since 1912.

• ANNEX 2 – screenshots from www.elcorteingles.es, partially undated and partially dated 27/02/2014, www.colchones.es, dated 27/02/2014, www.directcolchon.es partially dated 27/02/2014, and www.duermex.redflex.es, dated 27/02/2014, in Spanish, showing various mattresses, bed frames and bed legs. The sign appears essentially as a word, ‘FLEX’, and as and . The opponent highlights that ‘El Corte Inglés is one of the most notorious trademarks in Spain where all kind of goods are sold’.

• ANNEX 3 – screenshots in Spanish from what appears to be a catalogue, undated, showing mattresses, pillows and bed frames under the sign (in one of the pages a date ‘MAY 2010’ appears handwritten). Furthermore, undated pictures of labels and mattresses can be seen. The annex includes, as well, extracts from news items about trade fairs in 2013 and 2014 in Turkey and Germany concerning products for babies under the mark ‘Babybol’. No link to the opponent or the trade marks invoked can be identified.

• ANNEX 4 – advertising campaigns and presence in Spanish media, specifically advertisements in Spanish bearing the mark in connection with mattresses, partially dated – also by hand - in 2008, 2010, 2011 - 2013. Some of these photographs show the earlier marks used to sponsor the 2012 Vuelta a España cycling competition. Press advertisements include ‘Contador contará este año con dos equipos de promesas’, www.elperiodicodearagon.com, 17/02/2014, ‘Flex reta a Alberto Contador a subir el Tourmalet’, marketingnews.es, 27/04/2012; ‘Sra. Rushmore apuesta por Alberto Contador en la nueva campaña de Flex’, solomarketing.es, 31/07/2013; ‘Nacer en un colchón Flex’, soitu.es, 15/04/2009; ‘Flex presenta nueva campaña’, controlpublicidad.com, 16/12/2005; ‘Flex muestra un parto natural en su nueva campaña’, bebesymas.com, 16/04/2009; adverts from marketingdirecto.com, programapublicidad.com and publi.es from 2013 about ‘Antistres’, Flex’s campaign featuring Alberto Contador; news from the same source (publi.es) dated 27/02/2013 about the campaign ‘Renueva tus sueños’ and from 2012 ‘Alberto Contador y Flex’; ‘40 días en la cama – Flex’, casosdemarketing.com, 01/04/2011. These materials show images or text featuring references to ‘Flex’ or . The opponent highlights that the fact that these campaigns show the famous Spanish cyclist Alberto Contador gives reputation to the campaign.

• ANNEX 5 – different materials, namely screenshots with information in Spanish from www.themoonmedia.es, the website of Moon Media Advertising S.L., market and media research agency that offers media strategies for each customer, according to information handwritten in English. These are accompanied by a certificate from the same agency dated 04/12/2013, with a translation into English, providing information on the investments in media advertising made by the opponent from 2008 to 2013 for its products under the sign ‘Flex’ in Spain. The trade marks are not depicted on these documents. Copies of nine invoices in Spanish between 07/07/2009 and 06/12/2013 issued by A.C. Nielsen Company, S.L., to the opponent, mainly for ‘retail measurement services’ and ‘retail audit services’; one invoice issued on 30/11/2012 by GfK Retail and Technology España, S.A., to the opponent. None of these invoices refer to the earlier rights invoked. A table without source, date or signature under the heading ‘Venta Neta’, where figures corresponding to the years 2008 - 2013, and the concepts ‘FLEX’, ‘TOTAL’ and ‘%’ can be seen.

• ANNEXES 6 & 7 – copies of decisions issued by the EUIPO, the Spanish Patent and Trade Mark Office (OEPM) and Spanish courts, and translation into English, namely opposition decisions B 1 587 263 of 29/11/2010, B 1 032 863 of 23/07/2009, and B 2 258 591 of 09/04/2015 of the EUIPO, the latter recognising enhanced distinctiveness of earlier Spanish trade mark No 2 147 672; OEPM’s decisions of 04/02/2008 and 05/08/2009, where the well-known character of earlier Spanish and EU trade marks No 2 147 672 and No 2 275 220, respectively, is acknowledged; resolutions from the OEPM against Spanish trade mark applications No 2 746 925 ‘PANALFLEX’ (decision dated 04/02/2008), No 2 862 091 ‘DORMIFLEX’ (decision dated 05/08/2009), No 1 905 186 ‘ASTURFLEX’ (decision dated 15/01/1996), No 1 903 413 ‘DIMAFLEX’ (decision dated 19/10/1995) and No 1 903 414 ‘DIMAFLEX’ and No 1 903 415 ‘DIMAFLEX’ (decision dated 30/11/1995) in which Spanish trade marks No 778 923 ‘FLEX’ and No 1 105 409 ‘FLEX’ are deemed by the OEPM to be well-known trade marks; judgment of the Spanish Supreme Court, Contentious-Administrative Chamber, Section 3, of 13/07/1999, in which it is stated that the refusal to register the trade mark ‘GOLIATFLEX’ to distinguish mattresses was appropriate because ‘the word “FLEX” is identifying notoriously a well-known trade mark for mattresses’; judgment of the High Court of Justice of Madrid, Contentious-Administrative Chamber, Section 6 (appeal 328/93), acknowledging the well-known character of the trade mark ‘FLEX’; certificates from the Chambers of Commerce of Barcelona and Bilbao dated 08/06/1994 and 05/08/1994, respectively, affirming that the trade mark ‘FLEX’ has a reputation in relation to beds, spring mattresses, straw mattresses, mattresses, elastic mattresses and small mattresses; a certificate from RTVE (Radio Televisión Española), dated 14/09/1994, stating that Fábricas Lucía Antonio Beteré S.A. (Grupo Flex) is client of the advertising services provided by RTVE.

The Opposition Division finds that the evidence submitted by the opponent is manifestly insufficient to demonstrate that the earlier trade marks acquired a reputation in the relevant territories.

Despite showing some use of the trade marks, the evidence provides no relevant information on the extent of such use and on the eventual recognition of the marks by the public. In addition, the evidence is either undated or predates to a more or lesser extent, and in many instances, substantially, the relevant point in time, that is the filing date of the contested trade mark. Indeed, a substantial part of the evidence is dated 1994, 1996, 1999, 2008, 2009 and 2010 – 2013, with 2015 being the closest year to the relevant time. Although part of this evidence cannot be completely ignored, it does not demonstrate whether a reputation existed at the time of filing of the contested mark. Specifically, the decisions of the OEPM/Spanish Courts cited largely predate the relevant date. In addition, these national decisions brought forward by the opponent contain a very succinct motivation. It is not explained which criteria were applied in order to assess the reputation of the opponent’s marks. There is no reference to any evidence of reputation brought by the opponent in these proceedings. Therefore, these decisions cannot be used to support the view that the marks at issue were reputed at the relevant date. Regarding the decisions of the Office that are cited, only one of them (i.e. B 2 258 591 of 09/04/2015, Annex 7) is somehow close to the relevant point in time. However, the opponent is well aware that previous decisions of the Office are not binding and that every case has to be decided upon its own circumstances. The 2015 decision considered a different timeframe (the contested sign’s application was dated 2013) and different circumstances, and does not serve, either by itself or with the support of the rest of the evidence submitted, to ascertain reputation of the relevant marks over five years later.

The evidence does not offer any relevant information on the sales volumes or the market share of the trade marks (the document labelled ‘Venta Neta’, for instance, does not bear any source). Neither the copy of a catalogue nor the advertising costs can be considered to show the extent of use of the marks. The scale of distribution of the catalogues has not been indicated. No concrete and actual sales have been demonstrated. The information from third parties concerning advertising costs covers the period 2008-2013, well before the relevant date. As regards the documents signed by the advertising agency and the invoices of the marketing company, they only make a general reference to the total advertising/marketing expenditure made by the opponent and also predate the relevant date. It cannot be established on the basis of these documents what kind of publicity or marketing campaign they refer to, which marks were promoted and to which products they referred, since the opponent is the holder of several trade marks in relation to various kinds of goods and services.

The opponent, finally, did not submit any evidence showing any degree of recognition of the trade marks within the relevant period in the relevant territories (there are no opinion polls or surveys on the level of recognition of the marks, relevant press articles commenting on the relevant marks and their success, invoices issued to clients, turnover figures from official sources, accounting information or an affidavit or declaration stemming from independent sources within the relevant timeframe).

As a result, the evidence does not show the degree of recognition of the trade marks or whether the trade marks are known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

In its submissions of 16/05/2020, after the expiry of the time limit, the opponent submitted additional evidence, namely Annexes 1-9, which partly repeat the evidence already listed above and partly add new items, particularly some new references to ‘Flex’ dated 2011 – 2020 in the Spanish press (untranslated; Annex 5), extracts from social media (Annexes 7 and 8, whereby it is shown that ‘Flex’ has 37 933 followers in Facebook; 13 900 in Instagram and 3 063 followers in Twitter; as well as promotional campaigns in YouTube for the period 2016 - 2020).

According to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings, within the time limit set by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR (the substantiation period), the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the substantiation of the earlier mark concerned is submitted within the time limit set by the Office or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted after expiry of the time limit when the evidence submitted within the time limit is manifestly irrelevant or manifestly insufficient.

The Opposition Division considers that the evidence submitted by the opponent within the set time limit is manifestly insufficient for the proceedings in question, for the reasons provided above.

It follows that no discretionary power is available, if the facts or evidence submitted are manifestly insufficient or manifestly irrelevant as in the present case. Therefore, the evidence submitted on 16/05/2020, after expiry of the time limit, cannot be taken into account.

For the sake of completeness, and even if the Opposition Division does not consider it strictly necessary to enter into this question, it is noted that a few items of the new batch of evidence submitted, in particular several articles published in the Spanish press between 2016 and 2020 (Annex 5), which have not been translated by the opponent, may have offered data on market share and public recognition at least of the opponent as a mattress manufacturer. However, neither the articles nor other documents submitted (supplementary data in relation to the information previously provided by Moon Media Advertising S.L. (Annex 4), more catalogues in relation to mattresses and related products (Annex 6), and data on social networks and YouTube campaigns (Annexes 7 & 8) are conclusive regarding a reputation in respect of the goods for which such reputation is claimed because they mostly refer to mattresses. In the event that a reputation of the earlier marks would have been established on the basis of these items of evidence for mattresses, these products are not closely connected to, but on the contrary substantially differ from, the applicant’s remaining services in Classes 35 and 42 (auction services, administrative and office functions; engineering and IT services) and there seems to be no good reason to assume that use of the contested trade mark in relation to these services will result in the detriments foreseen in Article 8(5) EUTMR occurring. Therefore, even if these pieces of evidence would have been considered admissible, they would have no impact on the outcome of the present proceedings.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

The opposition must, therefore, be rejected as unfounded, as far as it is based on this ground and directed against the remaining services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

The Opposition Division

Eva Inés PÉREZ SANTONJA

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

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.