Urteile

Verwechslungsgefahr bei Wort-/Bildzeichen (Das Haus ./. Polihouse)

Entscheidungsgründe

On 25/10/2007 the applicant filed application No 6 425 953 to register the trade mark shown on the cover page for goods and services in classes 16, 36 and 43.

The opposition is directed against some of the goods and services covered by the contested trade mark.

The opposition is based on German trade mark registration No 2 072 055 of the trade mark shown on the cover page, filed on 25/10/1993 and registered on 20/07/1994 for goods and services in classes 16 and 41.

The opposition is based on all the goods and services covered by the earlier mark.

The grounds of the opposition are those laid down in Article 8(1)(b) of the Community Trade Mark Regulation (CTMR).

The opponent argues that there is a likelihood of confusion because of the similarity of the marks and because the goods and services covered by the marks are identical.

In reply the applicant argues that the opposition should be rejected since the signs at issue are not sufficiently similar to give rise to a likelihood of confusion.

In its final submissions, the opponent reiterates its arguments.

II. DECISION

Likelihood of Confusion - Article 8(1)(b) CTMR

a) Identity of the goods

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

Class 16: Printed matter, published material, especially magazines; periodicals, newspaper and brochures, books; photographic products, photographers (included in class 16);

Class 41: Publication of printed matter, especially of magazines; periodicals, newspaper, brochures and books, as well as of teaching and instructional material, including stored sound and image information, production of sound and image recordings on sound and image carriers.

The contested goods are the following:

Class 16: Publications, newspapers and periodicals.

The goods newspapers and periodicals equally appear on the list of goods of both the applicant and the opponent: there is identity between the goods. The applicant's publications are synonyms of the opponent's published material: the goods are identical. This finding holds true regardless of the opponent's further specification especially magazines. Following a grammatical interpretation of the wording of the opponent's specification regarding the term especially, it is found that this term indicates that the specific goods magazines are only examples of items included in the category published material, and that protection is not restricted to them.

b) Comparison of the signs

The signs to be compared are the following:

Earlier trade mark

Contested trade mark

The relevant territory is Germany.

Visually, the earlier mark consists of the expression "Das Haus" in standard black title case letters, alongside a red pentagon placed on the left hand side. The contested sign is composed of the word "Polihouse" written in standard title case letters, which are green as for the part "Poli" and yellow as for "house", alongside a yellow pentagon containing a white standard lower case letter "h". The marks coincide in the letter sequence "us" and to some extent in the layout and representation of a pentagon, albeit it is depicted in different colours in the two signs, and they differ in all the other elements. Bearing in mind the foregoing the Office considers that there is a remote degree of visual similarity.

Aurally, the earlier sign is pronounced as "DAS-HAUS" and the contested mark "H-PO-LI-HOUSE" in German.

The relevant public will identically pronounce the syllables "HAUS" of the earlier sign and "HOUSE" of the contested sign, while the signs differ in "DAS" of the earlier sign and "H-PO-LI" of the contested sign. The signs share four sounds in the same position (of which two are vowels) and differ in three and five sounds respectively.

Bearing in mind the foregoing, the Office considers that there is a medium degree of aural similarity.

Conceptually, it has to be first noted that the contested sign can be dissected to separate components, "Poli" and "House", because of the different colours of the elements. The earlier sign, "Das Haus", means the house in German; this concept, without the definite article, will also be perceived in the element "house" of the contested sign, due to the relevant public's knowledge of basic English Words. Neither the additional word element "Poli" of the contested sign, nor the basic figurative elements contained in both signs have a concept in the relevant territory.

Signs are conceptually identical or similar when the two signs are perceived as having the same or a similar semantic content. In the present case, it has been found that the signs contain elements which refer to the same semantic term in different languages, namely the concept of a "house", nonetheless both of which are understood by the relevant public. Consequently, the concepts of the two marks are similar.

It follows from the above that the signs are visually similar to a remote and aurally similar to a medium degree and they are conceptually similar.

c) Global assessment

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, phonetic 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" (see Judgment of 11 November 1997, Case C-251/95, Sabel, ECR. I-6191)

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see Judgment of 29 September 1998, Case C-39/97, Canon, ECR I-5507).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see Judgment of 22 June 1999, Case C-342/97, Lloyd Schuhfabrik Meyer, ECR. I-3819).

The goods have been found to be identical. In the present case, the goods covered by the mark applied for, publications, newspapers and periodicals are mainly aimed at the public at large. In light of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking. and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken of all relevant factors and, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered (see Judgment of 22 June 1999, Case C-342/97, Lloyd Schuhfabrik Meyer, ECR. I-3819).

As to the distinctive character of the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. In the present case the German meaning of the expression "Das Haus", the house, has no relation to the goods at hand; therefore the distinctiveness of the earlier mark must be seen as normal.

Considering all the foregoing and especially that the goods have been found to be identical, that the signs aurally and conceptually coincide in a separately identifiable element which is distinctive, while there are no additional elements which are dissimilar enough to counteract the similarities, the Office is of the opinion that the public could believe that the goods come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Office finds that 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. It follows that the application must be rejected for all the contested goods.

III. COSTS

According to Article 85(1) CTMR, 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)(6) and (7)(d)(i) of Community Trade Mark Implementing Regulation (CTMIR), the costs to be paid to the opponent are the opposition fees and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)

DECIDES TO:

1. Uphold opposition number B 1 343 062 for all the contested goods, namely publications, newspapers and periodicals in class 16.

2. Reject application number 6 425 953 for all the contested goods. It may proceed for the remaining services of the application.

3. Order the applicant to bear the costs, which are fixed as follows:

Costs of representation EUR 300
Opposition fee EUR 350
Total amount EUR 650

The Opposition Division

Katarzyna DOMANSKA
Marianna KONDAS
Ardiel CABRERA RUIZ

Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 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. Under Rule 94(4) CTMIR such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) of the Community Trade Mark Fees Regulation (CTMFR)) has been paid.

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