true clic | Decision 2755000
Date Published: Sep 22, 2017
OPPOSITION No B 2 755 000
Clic A/S, Anbækvej 111 Anbæk, 8450 Hammel, Denmark (opponent), represented by Patrade A/S, Fredens Torv 3ª, 8000 Aarhus C, Denmark (professional representative)
a g a i n s t
Nijpels Meubelen B.V., Ringersweg 9, 4612 PR Bergen op Zoom, Netherlands (applicant), represented by Inaday, Hengelosestraat 141, 7521 AA Enschede, Netherlands (professional representative).
On 18/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 755 000 is upheld for all the contested goods, namely:
Class 20: Cupboards; Beds; Tables; Seats; Coatstands; Mattresses; Mattresses; Furniture; Mirrors (silvered glass); Desks; Coatstands; Cupboards.
2. European Union trade mark application No 15 209 232 is rejected for all the contested goods. It may proceed for the remaining goods.
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 15 209 232 , namely against all the goods in Class 20. The opposition is based on European Union trade mark registration No 11 815 347 ‘CLIC’. 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 20: Furniture.
The contested goods are the following:
Class 20: Cupboards; Beds; Tables; Seats; Coatstands; Mattresses; Mattresses; Furniture; Mirrors (silvered glass); Desks; Coatstands; Cupboards.
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.
Furniture is identically contained in both lists of goods.
The contested cupboards (listed twice); beds; tables; seats; coatstands (listed twice) and desks are included in the broad category of the opponent’s furniture. Therefore, they are identical.
The contested mirrors (silvered glass) are similar to the opponent’s furniture because these goods have the same purpose, distribution channels and relevant public.
The contested mattresses (listed twice) are similar to the opponent’s furniture. This is because mattresses, being used together with or as a substitute for beds, have the same purpose as furniture, namely to furnish the house and create comfortable spaces for humans to rest in. Mattresses are also complementary to furniture (beds). Furthermore, they have the same distribution channels and relevant public.
- 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 and at customers with specific professional knowledge or expertise. The degree of attention is considered to range from average to above average depending on the type and price of the goods.
- The signs
CLIC | |
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 element ‘true’ has no meaning 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 non-English-speaking part of the public, such as the French-speaking part of the public.
The earlier mark is a word mark consisting of the word ‘clic’. The contested mark is a figurative sign consisting of the word ‘true’ in white letters on an orange parallelogram and the word ‘clic’ in orange letters on a white background.
The coinciding word ‘clic’ exists in French and will be perceived by the French public as a very short sound that usually refers to the act of pressing a button on a computer mouse, but it is also used in relation to the assembling or fitting of furniture. This element is distinctive for the goods at issue found to be identical or similar. In the applicant’s argument about the distinctive character of the word ‘CLIC’, it cites as an example a decision concerning the trade mark ‘CLIC-IT FURNITURE’, which was rejected on absolute grounds because the goods at issue were ‘do-it your self’ furniture goods that are tailor made and fit together with a click. This is not the same as the present case, considering that in this previous case the absolute ground for refusal was based on the perception of the English-speaking part of the public.
The element ‘true’ of the contested sign is meaningless from the perspective of the French-speaking part of the public in the relevant territory. Setting aside the comments made by the opponent with regards to the word ‘true’, as this word is meaningless for the relevant public, it has a normal degree of distinctiveness. The figurative element (orange parallelogram) is of a rather decorative nature and, consequently, is less distinctive than the verbal elements of the mark.
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the distinctive element ‘clic’. The fact that the earlier mark is in upper case letters is not relevant for the comparison, as the protection of word marks is granted for the word as such, and not for its written form. However, the signs differ in the additional and also distinctive verbal element, ‘true’, and in the colour, the stylisation and the figurative elements of the contested mark, which will, however, have less impact on the relevant public than the verbal elements.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛clic’, present identically in both signs. The pronunciation differs in the sound of the letters ‛true’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘true’ will not be understood by the relevant public. It follows that, as both signs contain the element ‘CLIC’, they are conceptually similar to an average degree.
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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods are identical or similar and target the public at large and professionals. The signs are visually, aurally and conceptually similar to an average degree on account of the coinciding word ‘clic’. Account should be taken of the facts that the word ‘clic’ of the earlier mark is fully incorporated in the contested sign and that the element ‘clic’ plays an independent distinctive role.
The differences between the signs are confined to the additional word element, ‘true’, and the stylisation and figurative elements of the contested sign. This stylisation and the word element ‘true’ – although not negligible or non-distinctive, and in spite of the facts that the additional word element is the first element of the sign and that the consumer normally attaches more importance to the beginning of a sign – do not create a significant degree of visual or aural dissimilarity between the signs, and the differences are not capable of counteracting the similarities.
In spite of the differences arising from the word ‘true’ and the figurative elements of the contested sign, the relevant consumers might be led, by the visual and aural commonalities in the word ‘clic’, which is the only element of the earlier mark and a distinctive element of the contested sign, to believe that the identical or similar goods come from the same undertaking or economically linked undertakings.
In addition, although, as seen above and in accordance with the applicant’s claims, the goods found to be similar or identical can target consumers with an elevated degree of attention, account should be taken of the fact that average consumers, even if highly attentive, rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.
Consequently, the Opposition Division deems that the dissimilarities between the signs are not sufficient to counteract the visual and aural similarities between them.
As mentioned above, the comparison of the signs is focused on the French-speaking part of the relevant public. Considering all the above, there is a likelihood of confusion on the part of the French-speaking part 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.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. EUTM application No 12 203 667 was refused as ‘CLIC-IT FURNITURE’ for goods related to furniture and not as ‘clic’. Therefore, the signs are not comparable, since they are not identical or similar.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 815 347.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
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
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.