OXYGEN HOUSE | Decision 2727637

Date Published: Sep 25, 2017

OPPOSITION No B 2 727 637

Ferrocarrils De La Generalitat De Catalunya (Organismo Oficial perteneciente a la Generalitat de Catalunya), Diputación, 239, 3°, 08007 Barcelona, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Oxygen House Limited, Oxygen House, Grenadier Road, Exeter Business Park, Exeter EX1 3LH, United Kingdom (applicant), represented by Foot Anstey LLP, Senate Court Southernhay Gardens, Exeter, Devon EX1 1NT, United Kingdom (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 637 is upheld for all the contested goods, namely 

Class 16:        Paper, cardboard; printed matter; photographs; drawings; surveys; charts; stationery; artists' materials; typewriters and office requisites; instructional and teaching material; promotional and advertising materials; printers' type; printing blocks; educational publications and materials; printed publications; books; booklets; manuals; guides; reports; data sheets; brochures; periodical publications; newspapers; newsletters; magazines; comics; journals; advertisement billboards; banner advertisements; packaging materials; parts and fittings for all the aforesaid goods.

2.        European Union trade mark application No 15 097 091 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 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 097 091 ‘OXYGEN HOUSE’ (word), namely, against the goods in Class 16. The opposition is based on Spanish trade mark registration No 3 090 751  (figurative). 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.

1. The goods

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

Class 16: Magazines, publications, paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

The contested goods are the following:

Class 16: Paper, cardboard; printed matter; photographs; drawings; surveys; charts; stationery; artists' materials; typewriters and office requisites; instructional and teaching material; promotional and advertising materials; printers' type; printing blocks; educational publications and materials; printed publications; books; booklets; manuals; guides; reports; data sheets; brochures; periodical publications; newspapers; newsletters; magazines; comics; journals; advertisement billboards; banner advertisements; packaging materials; parts and fittings for all the aforesaid goods.

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 16

The following goods are identically included in both lists of goods: paper, cardboard, printed matter, photographs, stationary, artists’ materials, printer’s type, printing blocks, magazines.

Typewriters and office requisites (except furniture) and instructional and teaching material (except apparatus) of the earlier sign are identical to the applicant’s typewriters and office requisites and instructional and teaching material, respectively. In view of the scope of Class 16, the clarifications in brackets as contained in the list of goods of the applicant, do not affect the scope of these goods.

Publications of the earlier sign include as a broader category educational publications, printed publications and periodical publications of the contested mark. Hence these goods are identical. The same applies to teaching materials of the earlier sign and educational materials of the contested one, hence they are identical.  

Plastic materials for packaging (not included in other classes) of the opponent’s sign fall under the broader category of the contested packaging materials. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Surveys, charts, promotional and advertising materials, books, booklets, manuals, guides, reports, data sheets, brochures, newspapers, newsletter, comics, journals, drawings, advertisement billboards, banner advertisements of the contested sign fall under the general category printed matter of the opponent’s sign. Therefore they are identical.

The contested parts and fittings for all the aforesaid goods which were found to be identical to the opponent’s goods are similar to these earlier goods. These goods usually have the same commercial origin. They may target the same consumers and are often distributed through the same channels. Furthermore, these goods are complementary.

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 and similar are directed at the public at large and at business customers with specific professional knowledge and expertise (e.g. typewriters and office requisites). The degree of attention may vary from average to high depending on the price, specialised nature and frequency of purchase of the specific goods.

3. The signs

	OXYGEN HOUSE
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is a complex mark, comprising the word element ‘OXIGEN’ in upper case, stylised font and white colour, positioned in a fuchsia rectangular form. The expression ‘A LES ESTACIONS D'FGC’ in small white letters is positioned below ‘OXIGEN’. ‘OXIGEN’ is the Catalan word for oxygen. In view of the fact that Catalan is one of the official languages in one of the Spanish provinces and given its closeness to the Spanish word ‘OXÍGENO’, even the relevant public who does not know Catalan, will perceive the word as meaning oxygen. Upon taking into account the goods at issue, this term is neither descriptive nor allusive and therefore has a normal degree of distinctiveness.

The Spanish phrase ‘A LES ESTACIONS D'FGC’ means ‘in the stations of FGC’. ‘FGC’ is a railway company in the Spanish province Catalonia. The phrase appears at the bottom of the mark in very small letters. Despite the fact that its white letters contrast with the fuchsia background, it may not be reasonably expected that consumers read this phrase. If they notice it at all, it is likely that it is perceived as some vague element or a white line underlying the eye-catching word ‘OXIGEN’. In this respect, the applicant is right to observe that two signs are compared as a whole. However, the applicant has disregarded the principle that the comparison should take into account their dominant and distinctive elements. In this respect, it is settled case-law that negligible elements of complex signs, such as the phrase ‘A LES ESTACIONS D'FGC’, which due to their size and position are not noticeable at first sight and are likely to be disregarded by the relevant public, are as a rule not taken into account in the comparison of the signs. Therefore this expression will not be taken into account in the comparison of signs below.

Accordingly, it is the word ‘OXIGEN’ that is the distinctive element of the sign. In view of its position, size and the contrast of white and fuchsia, it is also its dominant element.

The contested sign consists of the English words ‘OXYGEN HOUSE’. Given the closeness of the first word of the expression to the Spanish word for oxygen, it is likely that the consumers perceive it as a misspelling of ‘oxígeno’ and hence, as meaning oxygen. ‘HOUSE’ will be meaningless for the relevant public. Accordingly, the two word components taken separately and as a whole are not descriptive or allusive of the goods in question and have a normal degree of distinctive character.

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. Since the earlier mark is composed of two words, the first of which would most likely be recognised by the public as standing for ‘oxygen’, while the second one is a foreign word that does not evoke any meaning, it is likely that the consumers focus on and remember the first word of the word expression.

Visually, the signs coincide in the letters sequence ‘OX*GEN’ in the distinctive and dominant element of the earlier sign and the first word element of the contested mark. Even though the third letter of the respective words in both signs is different, this difference is likely to be blurred by the likely perception by consumers of ‘Y’ in ‘OXYGEN’ as misspelling. The signs also differ in their remaining elements, which however have a secondary influence on the overall visual impression created by the signs. Accordingly, the marks are considered to be similar to an average degree.  

Aurally, the pronunciation of the signs coincides in the sound of ‘OXIGEN’ and ‘OXYGEN’, since ‘Y’ and ‘I’ will be pronounced identically as [i]. The pronunciation differs in the additional element ‘HOUSE’ of the contested sign, which has no counterpart in the earlier one. Given the identical pronunciation of the dominant and distinctive element of the earlier sign and of the first word element of the contested one, they are phonetically similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as meaning ‘oxygen’. Since consumers will also notice the additional element contained in the contested mark, even though it will not be understood, this prevents the marks from being regarded as conceptually identical. Hence, they are conceptually highly similar.

Since 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 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

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).

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).

The dominant and distinctive element of the earlier mark ‘OXIGEN’ was found to be visually perceived by the consumers at least as similar to an average degree to the first element ‘OXYGEN’ of the contested sign, and as aurally and conceptually identical to it. The signs taken as a whole were found to be visually and aurally similar to an average degree and conceptually highly similar. The relevant goods are identical and similar and the degree of attention of the public, which in the case at hand is the general public and professional public – varies from average to high. The earlier sign has a normal degree of distinctiveness.

Accordingly, a finding is reached that a likelihood of confusion may exist on the part of the public if the two signs are used for identical and similar goods.

In view of the foregoing, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 090 751. 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.

The Opposition Division

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.