SLV | Decision 2742255
Date Published: Oct 1, 2017
OPPOSITION No B 2 742 255
SLV GmbH, Daimlerstr. 23 52531 Übach-Palenberg, Germany (opponent), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative)
a g a i n s t
Slettvoll Møbler AS, Skaffarvegen 105, 6200 Stranda, Norway (holder).
On 25/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 742 255 is upheld for all the contested services, namely
Class 35: Retail of furniture and interior decoration.
2. International registration No 1 296 013 is refused protection in respect of the European Union for all of the contested services. It may proceed for the remaining goods.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the services of international registration designating the European Union No 1 296 013, namely against all the services in Class 35. The opposition is based on, inter alia, German trade mark registration No 302 015 102 461. 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 German trade mark registration No 302 015 102 461.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or imager; data processing equipment; computers; computer software; electric control and regulating apparatus for lamps; lights and lighting installations.
Class 11: Lighting apparatus and installations; parts of lighting apparatus and installations, particularly rails of metal, conductor rails, lights, parts of lights, lamps, all of the aforesaid goods contained in class 11.
Class 35: Wholesale and retail sale services with apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, data processing equipment, computers, computer software, electric control and regulating apparatus for lamps, lights and lighting installations, lighting apparatus and installations parts of lighting apparatus and installations, particularly rails of metal, conductor rails, lights, parts of lights, lamps, all of the aforesaid goods contained in class 11: aforesaid services in retail stores, by catalogue despatch, in online shops and by teleshopping.
Class 41: Education, providing of training, particularly conducting trainings, education and further education for craftsmen, electricians, electronic technicians, designers, referring to the operation, installation, maintenance, projecting and repair of lamps, lights and lighting installation.
The contested services are the following:
Class 35: Retail of furniture and interior decoration.
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 services in Class 35
The contested retail services related to retail of furniture and interior decoration are considered similar to the opponent’s retail sale services with apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, data processing equipment, computers, computer software, electric control and regulating apparatus for lamps, lights and lighting installations, lighting apparatus and installations parts of lighting apparatus and installations, particularly rails of metal, conductor rails, lights, parts of lights, lamps, all of the aforesaid goods contained in class 11: aforesaid services in retail stores, by catalogue despatch, in online shops and by teleshopping.
The services at issue have the same nature, since both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.
- The signs
SLV | SLV |
Earlier trade mark | Contested sign |
The signs are identical.
- 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 higher degree of similarity between signs may be offset by a lower degree of similarity between goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As concluded above, the signs are identical. The contested services are similar to the opponent’s goods and services.
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 German trade mark registration No 302 015 102 461. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right German trade mark registration No 302 015 102 461 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the holder 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
Lynn BURTCHAELL | Frank MANTEY | Martin EBERL |
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.