DEMOSE | Decision 2662297

Date Published: Sep 25, 2017

OPPOSITION No B 2 662 297

Démos trade, a.s. Škrobálkova 630/13, 718 00 Ostrava, Kunčičky, Czech Republic (opponent), represented by Pavel Nádvorník, Sokola Tůmy 1, 709 00 Ostrava-Hulváky, Czech Republic (professional representative)

a g a i n s t

Foshan Demose Hardware Products Co. Ltd, No.3 Factory Building, Fengxiugang Industrial Zone, Bichong, Huangqi, Dali Town, Nanhai District, Foshan, Guangdong, People’s Republic of China (applicant), represented by Kaie Puur, World Trade Center, Tallinn Ahtri 8, 10151 Tallinn, Estonia (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 662 297 is upheld for all the contested goods, namely 

Class 6:         Alloys of common metal; doors of metal; bars for metal railings; staircases of metal; fences of metal; palings of metal; stringers [parts of staircases] of metal; wall plugs of metal; door fittings of metal; locks of metal, other than electric.

2.        European Union trade mark application No 14 804 694 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 804 694, namely against all the goods in Class 6. The opposition is based on the following marks:

• European Union trade mark registration No 9 972 861, Démos,
• European Union trade mark registration No 9 973 471,
• Czech trade mark registration No 238 286, DÉMOS.

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 9 972 861.

1. The goods and services

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

Class 6:         Common metals and their alloys; Metal building materials; Transportable buildings of metal; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Goods of common metal not included in other classes; Chicken wire; Furniture (Fittings of metal for–).

Class 19:         Building materials (non-metallic); Non-metallic rigid pipes for building; Non-metallic transportable buildings.

Class 20:         Furniture, mirrors, picture frames; Goods, not included in other classes, of wood, cork, reed and substitutes for these materials, or of plastics; Non-metallic furniture casters; Door fittings, not of metal; Fittings, not of metal (window -); Trays, not of metal; Curtain rails; Bedding (not including linen); Mobiles (decoration); Nuts, not of metal; Non-metallic wall plugs; Bolts, not of metal.

Class 39:         Carting; Packaging and storage of goods; Travel arrangement; Transport of furniture; Delivery of goods; Courrier services (messages or merchandise); Furniture removal.

Class 40:         Treatment of materials; Custom assembling of materials; Custom assembling of materials for others.

The contested goods are the following:

Class 6:         Alloys of common metal; doors of metal; bars for metal railings; staircases of metal; fences of metal; palings of metal; stringers [parts of staircases] of metal; wall plugs of metal; door fittings of metal; locks of metal, other than electric.

Contested goods in Class 6

Alloys of common metal are identically contained in both lists of goods (despite differences in the wording).

The contested doors of metal; bars for metal railings; staircases of metal; fences of metal; palings of metal; stringers [parts of staircases] of metal are included in the broad category of the opponent’s transportable buildings of metal. Therefore, they are identical.

The contested wall plugs of metal; door fittings of metal; locks of metal, other than electric are included in the broad category of, or overlap with, the opponent’s ironmongery, small items of metal hardware. Therefore, they are also identical.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical are specialised goods that are directed at the public at large and at business customers with expertise in the building sector. The degree of attention may very form average to higher than average depending on the characteristics of the goods, e.g. the price of the goods purchased, or safety considerations related thereto.

3. The signs

Démos
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark, consisting of the sole element ‘démos’. For a part of the relevant public such as the English- or German-speaking public, the word means demonstration - a political march - in its plural form. On the other hand it may also suggest an old Greek term meaning the populace of a democracy as a political unit. For the remaining part of the relevant public, it has no clear and evident meaning. In any case, it is distinctive in relation to the goods in question.

The contested sign is a figurative mark consisting of the element ‘demose’, written in stylised upper case letters. The letter stylisation is of a decorative character. The public will perceive it as a mere carrier of the word element. The word element will not be associated with any meaning by the relevant public and is distinctive.

Visually, the signs coincide in the sequence of five letters ‘demos’. They differ in the last letter ‘e’ and the letter stylization of the contested mark which have no counterparts in the earlier mark. The accent on ‘e’ in the earlier mark visually has a minor impact and does not change the perception of the signs as having the common second letter ‘e’.

Considering the above identified commonalities, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛demos’, present identically in both signs. The pronunciation differs in the sound of the final letter ‛e’ of the contested mark, which has no counterpart in the earlier sign. For a significant part of the public, for example the Bulgarian-, Dutch-, English-, German-, Italian-, Lithuanian-, Polish- and Spanish-speaking public, the accent on ‘e’ in the earlier mark will not have an impact that could result in any relevant phonetic difference. Additionally, in some languages, e.g. in French, the final ‘e’ will hardly be perceivable.  Consequently, the signs are considered highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark. For the part of the relevant public for which neither of the signs has a meaning, the conceptual aspect does not influence the assessment of the similarity of the signs. For the remaining part of the public which may perceive the meaning of the earlier sign as described above, the other sign lacks any meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

The appreciation of 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, 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).

This 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).

The goods in question were found to be identical. They are directed at the public in large as well as business consumers whose degree of attention may vary from average to higher than average. The signs are visually similar to an average degree and aurally to a high degree. The conceptual comparison either does not influence the assessment of the similarity of the signs or the signs are not similar, conceptually. Furthermore, account has to be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26); and even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). When encountering the conflicting signs, it is likely that consumers will perceive the contested sign as a variation of the earlier mark. It is a common practice nowadays for companies to make certain variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.

In its observations, the applicant argues that it owns several registrations with the word ‘demose’ in China, Australia, Japan, Korea and New Zealand. The applicant also submitted some evidence in support of its claim, that the contested sign has been put to an active use over the last 12 years including international exhibitions in the EU; and is a well-known trade mark in several countries all over the world.

In this regards, the Opposition Division notes, that the right to an European Union trade mark begins on the date when the European Union trade mark application is filed and not before, and from that date on the European Union trade mark has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the European Union trade mark falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the European Union trade mark application are irrelevant because the rights of the opponent, insofar as they predate the European Union trade mark, are earlier than the applicant’s European Union trade mark. Furthermore, the examination of the opposition is in principle limited to the signs at issue, and any other rights obtained outside of the relevant territory do not have an impact on the assessment of the similarity between the conflicting signs.

In the light of the foregoing, also taking into account the principle of interdependence mentioned 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 9 972 861. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 9 972 861 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). Likewise, it is unnecessary to assess the evidence of use submitted by the opponent in relation to earlier Czech trade mark registration No 238 286.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Arkadiusz GORNY

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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