Acting as an opponent, IP Consulting Ltd., defended the interests of its client Ted – Invest, owner of earlier mark ‘MemoSense’ No.14 778 575 against Herman Miller Ltd, Methuen Park, United Kingdom.
Opposition No 1 371 907 was filed for the word mark ‘MEMO’. It is based on European Union trade mark registration No 14 778 575 for the word mark ‘MemoSense’. The opponent invoked Article 8(1)(b) EUTMR.
List of goods
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive. It restricts the scope of protection only to the goods specifically listed.
The contested furniture, namely desks are included in the broad category of, or overlap with, the opponent’s furniture. Therefore, they are identical.
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 considered average.
The relevant territory is the European Union.
Visually and aurally, the signs coincide in the element ‘MEMO’/‘Memo’ which constitutes the entire contested mark and forms the beginning of the earlier sign. They differ in the element ‘Sense’ of the earlier mark which has no counterpart in the contested sign. The signs are visually and aurally similar to at least an average degree.The relevant territory is the European Union.
Distinctiveness 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 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.
In addition, account should be 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).
In its observations, the holder argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘MEMO’.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive. It does not necessarily reflect the situation in the market. On the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Moreover, a mere indication that certain verbal elements are frequently used in trade marks does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include elements such as ‘MEMO’.
The Opposition Division took the following decision:
- Opposition No B 3 014 035 is upheld for all the contested goods.
- International registration No 1 371 907 is entirely refused protection in respect of the European Union.
- The holder bears the costs, fixed at EUR 620.