OPPOSITION No B 3 095 277

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Rüttenscheider Str. 26, 45128 Essen, Germany (professional representative)

a g a i n s t

Coloana Prod SRL, str 22 decembrie nr 22A, 725700 Vatra Dornei, Romania (applicant), represented by Pruna Cosmin, street 22 December nr 22A, 725700 Vatra Dornei, Romania (employee representative).

On 14/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 095 277 is upheld for all the contested goods.

2. European Union trade mark application No 18 081 418 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 081 418 for the figurative sign . The opposition is based on European Union trade mark registration No 8 659 484 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are, inter alia, 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; figurines (statuettes) of wood, wax, plaster or plastic.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (other than for painting); brushmaking materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware, not included in other classes.

Class 24: Textiles and textile goods, namely household textiles, curtains, drapes, household linens, bed and table covers, except slatted curtains of textile, pleated blinds and roller blinds, roman blinds, panel curtains and decorative fabric products for sun protection; place mats not of paper.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (nontextile).

The contested goods are the following:

Class 20: Furniture; indoor furniture; furniture doors; doors for furniture; sliding doors for furniture; table decorations of plastic; wall decorations of wood; wall decorations of wax; bead curtains; decorative bead curtains; curtains (bead -) for decoration; bead curtains for decoration; decorations of plastic for foodstuffs; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; curtains (bamboo -); kitchen cupboards; kitchen tables; kitchen furniture.

Class 21: Wall decorations of porcelain; wall decorations of terra-cotta; vases; glass vases; floor vases; flower vases; stone floor vases; bowls for floral decorations; kitchen sieves; kitchen utensils; kitchen moulds; kitchen graters; kitchen sponges; kitchen mitts.

Class 24: Wall decorations of textile; curtains; lace curtains; moquettes [curtains]; door curtains; shower curtains; curtains of textile; interior decoration fabrics; lap rugs; travelling rugs [lap robes]; travellers’ rugs; travelling rugs.

Class 27: Rugs; rugs (floor -); bathroom rugs; rugs (door -); rugs [mats]; area rugs; carpets; moquettes [carpets]; carpets [textile].

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 20

Furniture is identically contained in both lists of goods.

The contested indoor furniture; kitchen cupboards; kitchen tables; kitchen furniture are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested table decorations of plastic; decorations of plastic for foodstuffs; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class are included in, or overlap with, the opponent’s figurines (statuettes) of wood, wax, plaster or plastic. Therefore, they are identical.

The contested furniture doors; doors for furniture; sliding doors for furniture are similar to the opponent’s furniture as these usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested bead curtains; decorative bead curtains; curtains (bead -) for decoration; bead curtains for decoration; curtains (bamboo -) are different types of decorative curtains, which are used for inside or outside decoration. Consequently, they are similar to the opponent’s furniture. They have a similar purpose (decoration) and can be found in the same sales outlets, and target the same relevant public.

The contested wall decorations of wood; wall decorations of wax are similar to the opponent’s furniture. It is common for furniture stores to offer all kinds of interior decorations to enable purchasers of furniture to buy them at the same time to achieve an accomplished and harmonious decorative outcome. 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.

Contested goods in Class 21

Kitchen utensils are identically contained in both lists of goods.

The contested wall decorations of porcelain; wall decorations of terra-cotta are included in the broad category of the opponent’s glassware, porcelain and earthenware, not included in other classes. Therefore, they are identical.

The contested vases; glass vases; floor vases; flower vases; stone floor vases; bowls for floral decorations are included in the broad category of the opponent’s household utensils and containers. Therefore, they are identical.

The contested kitchen sieves; kitchen moulds; kitchen graters; kitchen sponges; kitchen mitts are included in the broad category of the opponent’s kitchen utensils. Therefore, they are identical.

Contested goods in Class 24

The contested curtains; lace curtains; moquettes [curtains]; door curtains; shower curtains; curtains of textile; wall decorations of textile overlap with the opponent’s curtains except slatted curtains of textile, pleated blinds and roller blinds, roman blinds, panel curtains and decorative fabric products for sun protection. Therefore, they are identical.

The contested interior decoration fabrics are included in the broad category of the opponent’s household textiles, except slatted curtains of textile, pleated blinds and roller blinds, roman blinds, panel curtains and decorative fabric products for sun protection. Therefore, they are identical.

The contested lap rugs; travelling rugs [lap robes]; travellers’ rugs; travelling rugs are similar to a high degree to the opponent’s rugs in Class 27, as these coincide in purpose, method of use, producer, distribution channels, sales outlets and relevant public.

Contested goods in Class 27

Rugs and carpets are identically contained in both lists of goods.

The contested rugs (floor -); bathroom rugs; rugs (door -); rugs [mats]; area rugs are included in the broad category of the opponent’s rugs. Therefore, they are identical.

The contested moquettes [carpets]; carpets [textile] are included in the broad category of the opponent’s carpets. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to a high degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is composed of two verbal elements, ‘casa’ and ‘deco’, each one in a rectangle, one on top of the other, slightly displaced. The first verbal element ‘casa’ is written in white letters on a grey background, the second verbal element ‘deco’ is written in grey letters on a white background.

The contested sign is composed of three verbal elements, ‘CASA’, ‘DECO’ and ‘ro’. The first verbal element ‘CASA’ is written in bold grey upper-case letters, with a small yellow circle within the ‘C’ (purely decoration). The second verbal element ‘DECO’ is written in regular grey upper-case letters, and the third verbal element ‘ro’ is written in yellow lower-case letters within the yellow outline of a house.

The common elements ‘CASA’ and ‘DECO’ are meaningful in certain territories, for example in those countries where Spanish is understood. It is clearly allusive to home decoration and consequently, it is at most distinctive to a weak degree for the relevant goods.

In other territories, for example where Greek is understood, these verbal elements are not meaningful and would be considered distinctive to a normal degree for the relevant goods.

As for the suffix ‘ro’, the relevant consumers will perceive the dot within the house outline, recognising ‘.ro’ in the contested sign as a country code top level domain. Regardless of whether or not it would be perceived as specifically identifying the country as Romania, it will not be able to identify the origin of the goods as a country code top level domain (11/12/2018, R 797/2018‑2, M MAXBET.RO (fig.) / M BET (fig.) et al. § 34).

The earlier mark is composed of two verbal elements and two figurative elements of a simple rectangular geometric form of a purely decorative nature. Therefore, the verbal elements have a larger impact than the figurative elements. No element is clearly more dominant than other elements.

The contested sign has a small outline of a house at the end of the sign, in which the letters ‘ro’ appear. This figurative element is not distinctive, as it describes the characteristics of the goods, namely goods for the house/home. Moreover, there is no element that is more eye-catching than others.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the verbal elements ‘casa’ and ‘deco’. Although the earlier mark is written as two words and the contested sign as one word, this has a limited impact, as in the contested sign, although one word, these words are visually divided through the use of bold/regular letters. Consequently, it will be perceived by the relevant public as two words. However, they differ in the figurative elements, which have a low impact in the visual comparison due to their less distinctive character. As regards the aural comparison of the figurative elements, as these are not pronounced, they do not influence the aural comparison. Furthermore, the signs also differ in the ‘.ro’ or ‘ro’ element of the contested sign, which being at the end of the sign, has a lower impact than the identical beginning of the signs.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an above-average degree and aurally similar to a high degree.

Conceptually, and based on the above argumentation, there are two scenarios. Either neither of the signs has a meaning for the public in the relevant territory, in which case a conceptual comparison is not possible, as the conceptual aspect does not influence the assessment of the similarity of the signs, or both will be perceived as home decoration, in which case they are conceptually similar to a high degree, differing only in the country top level domain name and the non-distinctive house-figurative element.

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. However, according to the aforementioned, there are two scenarios.

The earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, in case the verbal elements are not understood, despite the presence of some non-distinctive/weak elements in the mark, as stated above in section c) of this decision.

As for the public who understand the verbal elements and considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) 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 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods were found to be identical or similar (to varying degrees) and the general public will have an average degree of attention in relation to these goods. Furthermore, the earlier mark is either distinctive to a weak degree, if the verbal elements are understood, or distinctive to a normal degree, if these are not understood.

The finding of a weak distinctive character for the earlier mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 24), it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak 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 (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

This is applicable to the present case, as although the verbal elements ‘casa’ and ‘deco’ are weak for part of the relevant public, they are identical in both signs. Furthermore, the differences between the signs are confined to non‑distinctive or decorative elements.

For the other part of the relevant public, who do not understand the verbal elements, these are distinctive and consequently, the signs would be considered similar to a high degree based on a distinctive element. As ‘.ro’ is perceived as a country code top level domain name it is not distinctive and, due to its position at the end, it will have less impact on the relevant public.

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 covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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).

The opposition is also successful insofar as the goods that are similar to a low degree are concerned. Based on the interdependence between the relevant factors and the visual above-average degree and aural high degree of similarity between the signs, these offset the low degree of similarity between the goods (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 European Union trade mark registration No 8 659 484. 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

Renata COTTRELL

Astrid Victoria WÄBER

Beatrix STELTER

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.