OPPOSITION Nо B 3 097 493

Maria Angeles Arrufat Manonelles, C/ del Duc, 12, 2º 1era, 08002 Barcelona, Spain (opponent), represented by Vanessa Peris Lull, C/ Marqués de Campo, 66, 10A, 03700 Dénia, Spain (professional representative)

a g a i n s t

Shenzhen Zhongxingxinchuang Technology Co., Ltd., 519-520 Room, Baijiarun Business Centre, Qianjing Rd, Bao’an, Shenzhen, People’s Republic of China (applicant), represented by Stefano Merico, Via Eschilo, 190 Int. 7, 00125 Roma, Italy (professional representative).

On 20/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 493 is upheld for all the contested goods, namely:

Class 20: Furniture; household furniture; tea tables; shelves for storage; office furniture; clothes hangers; chests of drawers; storage racks; furniture shelves; dressing tables; shelf units [furniture]; shelving; trolleys [furniture]; clothes stands; mattresses; divans; food racks; chaise longues; wardrobes; cushions; pillows; bamboo furniture; bamboo curtains; bamboo canes; standing desks; umbrella stands; furniture of metal.

2. European Union trade mark application No 18 089 507 is rejected for all the contested goods. It may proceed for the non-contested goods in Class 20, namely:

Class 20: Beds for household pets; kennels for household pets.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 089 507 for the word mark ‘ROMOON’, namely against some of the goods in Class 20. The opposition is based on, inter alia, European Union trade mark registration No 16 781 511 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 781 511.

a) The goods

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

Class 14: Clocks; clocks; pendant watches; floor clocks; table clocks; watches and clocks for decoration; expressly not including wristwatches.

Class 20: Furniture; tables; sideboards; side tables; bedside cabinets; coffee tables; desks; console tables; washstands [furniture]; showcases; chests of drawers; valet stands; shelving units; coatstands; hallway furniture; decorative wooden panels [furniture]; mirrors (silvered glass); stools; book stands; magazine racks.

The contested goods are the following:

Class 20: Furniture; household furniture; tea tables; shelves for storage; office furniture; clothes hangers; chests of drawers; storage racks; furniture shelves; dressing tables; shelf units [furniture]; shelving; trolleys [furniture]; clothes stands; mattresses; divans; food racks; chaise longues; wardrobes; cushions; pillows; bamboo furniture; bamboo curtains; bamboo canes; standing desks; umbrella stands; furniture of metal.

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 furniture, chests of drawers, furniture shelves, shelf units [furniture], shelving are identically contained in both lists of goods (including synonyms).

The contested household furniture, tea tables, shelves for storage, office furniture, storage racks, dressing tables, trolleys [furniture], divans, food racks, chaise longues, wardrobes, bamboo furniture, standing desks, furniture of metal are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested clothes stands overlap with the opponent’s coat stands. Therefore, they are identical.

The contested clothes hangers are similar to the opponent’s furniture, valet stands because they have the same purpose. They also coincide in distribution channels such as furniture and decoration shops, and in the relevant public. Clothes hangers are devices designed to facilitate the hanging of clothes in a manner that prevents wrinkles, similarly to valet stands. Although no strict complementarity between the goods in question exists, coat hangers are frequently used together with furniture, such as wardrobes, as they help people to organise their clothing in the designated parts of their homes.

The contested mattresses are similar to the opponent’s furniture because they are complementary to furniture, such as beds or sofa beds, and share a similar purpose. It is clear that mattresses and beds are indispensable for the use of each other, as it is not usual to use a bed without a mattress, and vice versa. Consequently, they can be found in the same retail outlets and they target the same end user. Furthermore, they are often produced by the same companies.

The contested cushions are similar to the opponent’s furniture because they coincide in the following criteria: purpose, complementarity, distribution channels and relevant public. Cushions are normally used for the decoration and comfortableness of furniture, such as sofas and beds.

The contested pillows are similar to the opponent’s furniture because they are sold in the same specialised shops, are often complementary, have the same producer and target the same public. The same reasoning mentioned above in relation to cushions applies mutatis mutandis in the case of pillows.

The contested bamboo curtains, bamboo canes are similar to the opponent’s furniture as both categories are used for furnishing and/or decorating homes or other living/working areas to fulfil the same needs to make these spaces more pleasant and comfortable. Therefore, they are sold through the same distribution channels and target the same public.

The contested umbrella stands are similar to the opponent’s furniture because they have a similar purpose, are offered to identical consumers in the same specialised shops. Umbrella stands are storage devices for umbrellas and walking sticks. They are usually located inside the entrance of a home, shop or public building, and are often complemented by a hanger or mirror, combined with a coat rack or designed in the same style as other pieces of furniture.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

	ROMOON
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam,EU:C:2008:511, § 57).Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element of the contested sign, ‘ROMOON’, will be pronounced specifically due to the repetition of the letter ‘O’ in certain territories, for example in territories where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, French-, Slovak- and/or Spanish-speaking part of the public in the EU, as the pronunciation rules of these languages do not interfere in this respect and therefore potentially increase the similarity between the signs.

The earlier mark is a figurative mark that depicts the easily recognisable verbal element ‘nomon’ in lower case. The relevant public will not attribute any major significance to the typeface used in the earlier mark due to its purely decorative nature.

The contested sign is a word mark composed of the single verbal element ‘ROMOON’. 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 they appear in upper- or lower-case letters or in a combination thereof.

Both signs are meaningless for the relevant public. Therefore, as they convey no information or allusion as regards the relevant goods or their characteristics, they have an average degree of inherent distinctiveness.

Visually, the signs coincide in the string of letters ‘*OMO*N’. They differ in their initial letters, ‘N’ versus ‘R’, and in the appearance of the second letter ‘O’ in the contested sign. However, this second difference is not particularly striking (as it merely repeats the previous letter in the sign) and therefore the relevant public may not notice it. Despite these differences, the coincidence in all their remaining letters will certainly have a considerable impact on the public, also bearing in mind the similar lengths of the signs (five versus six letters) and the fact that the coinciding letters are in the same order (with the exception of the not particularly striking double letter ‘O’).

The stylisation of the earlier mark does not significantly influence the relevant public, as the verbal element is immediately recognisable and legible.

Although it is acknowledged that the beginnings of marks have a strong impact on the public, in the present case the rest of the signs (i.e. the majority of their letters) coincide and therefore the earlier mark is almost entirely included in the contested sign. Consequently, the overall impression created by those visual resemblances is that the signs are similar and the differing single letters at the beginnings of the signs is not capable of overriding that impression.

Therefore, the signs are considered visually similar to a higher-than-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters [OMON], since the double ‘O’ in the contested sign does not significantly change its pronunciation, as compared to a single ‘O’ in the earlier mark, for the relevant Czech-, French-, Slovak- and/or Spanish-speaking public. Hence, the middle parts and endings of both signs will be pronounced identically. These parts comprise the majority of the sounds in the signs. The only aural difference between them is their initial sound, ‘N’ versus ‘R’. Overall, the signs have a highly similar rhythm and intonation.

Therefore, even taking into consideration the difference established by their initial letters, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the general public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. 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, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are either identical or similar to the opponent’s goods. The earlier mark has an average degree of inherent distinctiveness.

The signs are visually similar to a higher-than-average degree and aurally highly similar, as they coincide in the majority of their letters (‘*OMO*N’).

While it is true that the initial part of verbal elements may be liable to attract the consumer’s attention more than the following parts, the difference in some of the first letters of each sign is not enough to counteract the similarity between them in respect of all the other letters, when they are identically displayed and make up the majority of the signs in issue (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 67).

The abovementioned principle is fully applicable to the present case, as the difference established by the initial letters of the signs is not enough to counteract the visual and aural similarities between them.

Furthermore, as previously established, the repetition of the letter ‘O’ in the contested sign is not clearly noticeable phonetically, especially for the Czech-, French-, Slovak- and Spanish-speaking part of the public. Therefore, phonetically, the only difference will be in the first letters of both signs. The rest of the sounds in the signs will be pronounced in the same manner. As a result, both signs, when pronounced, will have the same emphasis.

Both signs are meaningless for the relevant public and, consequently, do not convey any semantic content that could assist consumers in better distinguishing them, in particular in relation to identical or similar goods.

The average consumer rarely has the chance to directly compare different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Czech-, French-, Slovak- and Spanish-speaking part of the public, as it may believe that the identical and similar goods at issue come from the same undertaking or from economically linked undertakings. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 781 511. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 16 781 511 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, she 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

Gueorgui IVANOV

Jiri JIRSA

Dorothée SCHLIEPHAKE

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.