JOINT | Decision 2720616
Date Published: Sep 22, 2017
OPPOSITION No B 2 720 616
Αφροδίτη Τζίτζη, Ευτέρπης 60, 14574 Διόνυσος, Greece (opponent)
a g a i n s t
Engelbrechts Furniture A/S, Skindergade 38, 1159 København K, Denmark (applicant), represented by Accura Advokatpartnerselskab, Tuborg Boulevard 1, 2900 Hellerup, Denmark (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 616 is upheld for all the contested goods.
2. European Union trade mark application No 15 414 469 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 414 469 ‘JOINT’ (word mark). The opposition is based on European Union trade mark registration No 14 981 799 (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 goods
The goods on which the opposition is based are the following:
Class 19: Frames.
Class 20: Furniture; Furniture for kitchens; Kitchen cabinets; Office desks; Mirrors (silvered glass).
The contested goods are the following:
Class 20: Furniture.
Furniture is identically contained in both lists of goods.
- 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 directed at the public at large. The degree of attention is deemed to be average.
- The signs
JOINT | |
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 words ‘JOINT’ and ‘JOIN’ are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Greek-speaking parts of the public. Therefore, the applicant’s claim, namely that the words ‘JOINT’ and ‘JOIN’ are suggestive and do not enjoy an enhanced degree of distinctiveness in relation to goods in Class 20, must be set aside.
The earlier mark is a figurative mark consisting of the letter ‘J’ followed by a dot written in a stylised way, in black, placed inside a square frame with a white background. Under this, in standard white letters placed on a black background, the word ‘JOIN’ is written. Next to this, the ® symbol is placed, which merely indicates that the mark is registered and it is therefore not considered a material part of the mark. Therefore, it will not be taken into account in the assessment of the signs.
The contested sign is a word mark composed of the string of the letters ‘JOINT’. As already explained above, for the Spanish and the Greek publics, both words are fanciful and enjoy an average degree of inherent distinctiveness in the context of the relevant goods. The contested mark has no element that could be considered more distinctive or more dominant (visually eye-catching) than other elements. The single stylised letter in the earlier sign also has no meaning in relation to the relevant goods and is distinctive. Furthermore, it is the dominant element, as it is the most eye-catching due to its larger size. Nevertheless, the public would see this dominant part of the earlier mark as a reference to the word ‘JOIN’. The figurative elements of the earlier mark (a square frame with a white background, etc.) are of a rather decorative nature and, consequently, are less distinctive than the verbal elements of the earlier mark.
Visually, the signs coincide in ‘JOIN’, distinctive in both signs. The signs differ in the stylised letter ‘J’ and in the less distinctive figurative elements of the earlier mark. The signs also differ in the additional letter, ‘T’, at the end of the contested sign.
Therefore, the signs are visually 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 ‛JOIN’, present identically in both signs. The pronunciation differs in the sound of the letter ‛T’ of the contested mark, which has no counterpart in the earlier sign, and in the stylised letter ‘J’ of the earlier mark. Taking into account that the signs coincide in four out of five sounds in the same order and that these sounds are included in the only element of the contested sign and constitute a distinctive element of the earlier mark, it is considered that the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the letter ‘J’ in the earlier mark, as explained above, the other sign has no meaning in that 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.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical. They target the public at large. The degree of attention is average.
The earlier mark has a normal degree of distinctiveness.
The signs are visually similar to an average degree and aurally highly similar considering that the four letters ‘JOIN’ that constitute a distinctive element in the earlier mark are repeated in the same positions in the only element of the contested mark.
Account is 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).
Although the earlier mark also contains a differing distinctive and dominant component, it will not significantly contribute to the public’s ability to differentiate between the signs, considering that the letter ‘J’ is also the first letter of the verbal element ‘JOIN’. Consequently, the Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities in relation to identical goods.
In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include ‘JOIN’ and ‘JOINT’ registered for goods in Class 20. In support of its argument, the applicant refers to several international and European Union trade mark registrations.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘JOIN’ or ‘JOINT’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Greek-speaking parts of the public. 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’s trade mark registration No 14 981 799. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Denitza STOYANOVA-VALCHANOVA | Anna POLITI | Vít MAHELKA |
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.