Newsletter No. 53

I Oppositions

Decision No. 2122-o

Earlier trademarks

INTUIT DOME

INTUIT

Opposed trademark

Opposition to registration of the trademark “intuit + device“.

The opposed trademark has been applied for protection in respect of goods in Classes 19 and 20. Of the earlier trademarks, only the trade mark “INTUIT DOME” is protected in these classes, namely in Class 20. The applicant has defined its goods as furniture in the specification of the list of the application for Class 20. Since the chairs, tables and cushions mentioned in Class 20 of the earlier trademark can also be defined as furniture, the goods in Class 20 of the comparable trademarks are, in the Board’s opinion, identical or similar.

The earlier trademarks are not protected in Class 19. However, the opponent has found that the goods in Class 19, which relate to the products “telephone booths”, are also related to products used in offices, since the use of separate modules/boxes is common in modern, especially open office solutions. The applicant’s goods are intended for use in office premises and the applicant has confirmed that its trademark is one specialised in office furniture and office interior design. The opponent concluded that the purpose and nature of the applicant’s goods are essentially the same for both Class 19 and Class 20 goods – all of them are intended for use or furnishing in an office.

The Board finds the opponent’s arguments convincing. The goods in Class 20, office partitions, screens and the goods in Class 19, partitions, room dividers, compartments, sections, panels are essentially identical. The difference between partitions and Class 19 (mobile, foldable or transportable) enclosed spaces (meeting rooms, telephone booths, etc.) is only in the number of walls they have; they can perform the same function. The Board therefore finds that the goods in Class 19 of the opposed trademark are of the same type as the goods in Class 20 of the earlier mark “INTUIT DOME” chairs [seats]; upholstered armchairs; portable tables.

The Board agrees with the applicant that the goods of the opposed trade mark are not identical or similar to the goods or services of other classes of the trademark “INTUIT DOME” or to the goods and services of other opposing trademarks.

The average consumer of the goods in Classes 19 and 20 is sufficiently informed and reasonably observant and circumspect. However, even when ordering a more expensive set of furniture, it is not expected that the customer will directly compare the trademarks or examine in detail the identity of the supplier of the goods and their connections with other undertakings.

The Board considers that the comparable trademarks as a whole are visually and phonetically averagely similar, conceptually incomparable or potentially slightly similar and, overall, averagely similar. It is important that the only verbal element of the opposed trademark is identical as a word to the more dominant element “INTUIT” in the first position of the earlier trademark.

The opponent has taken pains to describe its history and economic activities, but this mainly concerns activities in the business software market and is not directly related to the trade mark “INTUIT DOME”. There is no evidence that the distinctive character of the opponent’s mark would be high as a result of use in the furniture sector; this is also unlikely, given that the earlier mark was registered only recently. The opponent has used the mark “INTUIT” in a market other than Class 20, but predominantly in conjunction with elements designating specific goods (e.g. QuickBooks), which do not include “DOME”. Therefore, there is no basis to consider the distinctive character of the mark to be high.

Given the visual and phonetic similarity between the contested trademark and the relevant opposing trademark “INTUIT DOME” and in particular the verbal identity of the most dominant element “INTUIT” of the latter trademark with the sole verbal element “intuit” of the opposed mark, as well as the identity and similarity of the goods in Class 20 of the contested mark and the similarity of the goods in Class 19 with the goods in Class 20 of the earlier mark, the Board finds that there is a likelihood of confusion, including association, between the trademarks in question.

The opposition was sustained.

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