Beds, mattresses and pillows will be perceived as belonging to same family of goods

In Ted-Invest EOOD v Office for Harmonisation in the Internal Market (OHIM) (Case T-516/12, September 25 2014), the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had found that the figurative mark SENSI SCANDIA was invalid.

Ted-Invest EOOD filed an application for registration of the following figurative mark as a Community trademark for, among other things, beds and mattresses in Class 20 of the Nice Classification:

Scandia Down LLC then filed a request for a declaration of invalidity of the mark based on its earlier Community word mark SCANDIA HOME, registered for pillows in Class 20, among other things.

In order to decide on the validity of the contested figurative trademark, the General Court compared the goods and the signs, and assessed the likelihood of confusion.

As to the comparison of the goods, the General Court stated that beds, being items of furniture that are generally made of wood or metal, are different in nature from the goods covered by the earlier trademark (pillows), which are of textile origin. Additionally, mattresses also differ from pillows because of their more complex internal structure. The court, however, claimed that there were particularly close connections between the goods at issue due to their complementary nature. This was due to the fact that the goods :

• were directed at the same consumers, who used them mostly in conjunction and simultaneously;
• have the same primary purpose, which is to enhance the rest and sleep of the user; and
• are frequently sold through the same outlets.

Accordingly, the General Court found that the relevant public was likely to perceive the parties' goods as belonging to the same family of goods.

Regarding the comparison of the signs, the General Court first found that the marks had a low degree of visual similarity. Second, the court found that the marks had an average degree of phonetic similarity, as they both contained the word 'scandia'. Third, the court found that the marks were conceptually similar, as 'home' in the earlier trademark conveys the idea of comfort, in the same way as the word 'sensi' in the contested trademark. As both trademarks contained the word 'scandia', the signs taken as a whole were thus likely to evoke Scandinavian comfort.

Turning to the assessment of the likelihood of confusion, the General Court initially stated that the likelihood of confusion implies some interdependence between various factors, including those already taken into account and the distinctiveness of the earlier trademark.

In relation to the distinctiveness of the earlier trademark, the court held that, as regards the English word 'home', a substantial section of the relevant public would understand it as 'house' or 'place where one lives'. In that regard, it was probable that the relevant public would associate the word 'home' included in the earlier trademark with the contested goods, which are undeniably goods intended for indoors. Consequently, the word 'home' had a low distinctive character.

Further, the General Court found that the word 'scandia' was the dominant element of the signs at issue. The court dismissed Ted-Invest's argument that 'scandia' referred to a geographical area (ie, Scandinavia) and thus had a low distinctive character. Instead, the court stated that 'scandia' conveys a far more evocative representation of that geographical area. The word was found to be perceived by the relevant public as a reference to a style of goods. Accordingly, the term was regarded as having normal distinctiveness and, therefore, the earlier mark taken as a whole had normal inherent distinctiveness.

Based on the above, the General Court concluded that confusion between the marks at issue could not be ruled out. Consequently, the contested mark was invalid. 

Mette-Marie Henrichsen, Plesner, Copenhagen