OPPOSITION No B 2 653 817

Igloo Products Corp., 777 Igloo Road, Katy, Texas 77494, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Iglooz Limited, Unit 541, 5/F., Sino Industrial Plaza, 9 Kai Cheung Road, Kowloon Bay, Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft mbB, Herrnstr. 44, 80539 München, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 653 817 is partially upheld, namely for the following contested goods:

Class 11:        Arc lamps; Ceiling lights; Chinese lanterns; Electric lamps; Fairy lights for festive decoration; Lamp casings; Lamps; Lamps (Electric -); Lanterns for lighting; Projector lamps; Standard lamps; Apparatus for lighting.

Class 21:        Candlesticks; Cocktail stirrers; Ice cube molds; Molds [kitchen utensils]; Napkin holders; Household utensils; Household containers; Kitchen utensils; Kitchen containers; Porcelain not included in other classes; Glassware not included in other classes; Earthenware not included in other classes.

2.        European Union trade mark application No 14 650 857 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 650 857, namely against all the goods in Classes 11 and 21. The opposition is based on, inter alia, European Union trade mark registrations No 8 679 771 and No 9 204 686. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 8 679 771 and No 9 204 686.

1. The goods

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

European Union trade mark registration No 8 679 771

Class 9:        Alternating/direct electrical current converters.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; thermoelectric coolers and warmers for food and beverages.

Class 25:        Shoes and boots.

European Union trade mark registration No 9 204 686

Class 9:        Alternating/direct electrical current converters.

Class 11:        Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; thermoelectric coolers and warmers for food and beverages.

Class 21:        Portable containers for ice, beverages, food and other uses, and accessories therefor including ice chests, beverage holders, water coolers, ice chests for cars; domestic utility containers including water containers, fuel containers and waste containers; ice substitutes including sealed plastic containers containing refreezable gels and freeze bottle freezable containers.

Class 25:        Shoes and boots.

The contested goods are the following:

Class 11:        Arc lamps; Ceiling lights; Chinese lanterns; Electric lamps; Fairy lights for festive decoration; Lamp casings; Lamps; Lamps (Electric -); Lanterns for lighting; Projector lamps; Standard lamps; Apparatus for lighting.

Class 21:        Candlesticks; Clothes-pegs; Cocktail stirrers; Ice cube molds; Molds [kitchen utensils]; Napkin holders; Rails and rings for towels; Household utensils; Household containers; Kitchen utensils; Kitchen containers; Combs; Sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Porcelain not included in other classes; Glassware not included in other classes; Earthenware not included in other classes.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods in Class 11

The contested arc lamps; ceiling lights; Chinese lanterns; electric lamps; fairy lights for festive decoration; lamps; lamps (electric -); lanterns for lighting; projector lamps; standard lamps are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

Apparatus for lighting are identically contained in both lists of goods.

The contested lamp casings and the opponent’s apparatus for lighting are complementary. They have the same distribution channels and target the same public. Moreover, they could originate from the same undertakings. Therefore, they are similar to at least an average degree.

Contested goods in Class 21

The contested cocktail stirrers; ice cube molds; molds [kitchen utensils]; napkin holders are identical to the opponent’s portable containers for ice, beverages, food and other uses, and accessories therefor including ice chests, beverage holders, water coolers, ice chests for cars because the opponent’s goods include the contested goods.

The contested household utensils; kitchen utensils overlap with the opponent’s portable containers for ice, beverages, food and other uses, and accessories therefor including ice chests, beverage holders, water coolers, ice chests for cars. Consequently, they are identical.

The contested household containers; kitchen containers overlap with the opponent’s portable containers for ice, beverages, food and other uses, and accessories therefor including ice chests, beverage holders, water coolers, ice chests for cars. Therefore, they are identical.

The contested porcelain not included in other classes; glassware not included in other classes; earthenware not included in other classes overlap with the opponent’s domestic utility containers including water containers, fuel containers and waste containers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested candlesticks are supports or holders for one or more candles, typically ones that are tall and thin (information extracted from English Oxford Living Dictionaries on 03/04/2017 at https://en.oxforddictionaries.com/definition/candlestick). They are commonly purchased as decorative items in the same home design and décor shops as some of the accessories for the opponent’s goods in Class 21. They are household goods and target the same public. They may also have the same producers and distribution channels. Consequently, the contested candlesticks and the opponent’s portable containers for ice, beverages, food and other uses, and accessories therefor including ice chests, beverage holders, water coolers, ice chests for cars are similar to at least a low degree.

The opponent argues that the contested goods in Classes 11 and 21 are ‘quite similar in nature’ to the opponent’s goods. The Opposition Division does not agree with this argument as regards the goods described below.

The contested clothes-pegs are wooden or plastic clips for securing clothes to a clothes line (information extracted from English Oxford Living Dictionaries on 03/04/2017 at https://en.oxforddictionaries.com/definition/clothes_peg). Their nature, purpose, origins and method of use differ from those of the opponent’s goods in Classes 9, 11, 21 and 25. Furthermore, they are neither interchangeable nor complementary. Therefore, they are dissimilar.

The contested rails and rings for towels are rails or rings, especially those that can be attached to a bathroom wall, from which to hang towels. Their nature, origins and method of use differ from those of the opponent’s goods in Classes 9, 11, 21 and 25. Moreover, they normally have different distribution channels. Consequently, they are dissimilar.

The contested combs are goods for personal use (toiletries). They are dissimilar to all the opponent’s goods in Classes 9, 11, 21 and 25. The natures and purposes of these goods are dissimilar. They are neither interchangeable nor complementary. Their methods of use also differ and they normally do not have the same commercial origin.

The contested sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool are dissimilar to the opponent’s goods in Class 21. The goods belong to different categories: brushes and other articles for cleaning and brush-making materials versus portable and domestic containers and accessories therefor. Moreover, contrary to the opponent’s argument, they have different natures, methods of use and intended purposes, namely cleaning as opposed to holding or transporting something. Furthermore, the goods are not complementary or in competition with each other and are unlikely to originate from the same undertakings. The same reasoning could be applied for the opponent’s remaining goods in Classes 9, 11 and 25. Moreover, these goods and the abovementioned contested goods do not have the same distribution channels or methods of use.

The contested unworked or semi-worked glass (except glass used in building) consists of raw materials, namely glass, in an unrefined or unfinished state. The mere fact that one product is used for the manufacture of another (e.g. portable containers for ice, beverages, food and other uses could be made of this material) is not sufficient in itself to conclude that the goods are similar, as their natures, purposes and consumers are quite distinct. Raw materials are intended for use in industry rather than for direct purchase by the final consumer. Furthermore, the opponent’s goods in Classes 9, 11, 21 and 25 and the applicant’s unworked or semi-worked glass are manufactured by different undertakings. Therefore, these goods are dissimilar.

2. 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 (to varying degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

IGLOO
Earlier trade marks No 8 679 771 and No 9 204 686	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 word ‘IGLOO’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier marks are word marks composed of the letters ‘IGLOO’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or a combination thereof.

The word ‘IGLOO’ will be perceived as ‘a circular house made of blocks of hard snow, especially as built by the Inuit people of northern North America’ (information extracted from Cambridge Dictionary on 03/04/2017 at http://dictionary.cambridge.org/dictionary/english/igloo). This word is considered to have a normal degree of distinctiveness for the goods in question.

The contested sign is a figurative mark composed of the verbal element ‘iGLOOZ’ in black standard typeface, the letters ‘i’ and ‘o’ being slightly stylised, and, before them, a figurative element depicting a stylized silhouette of an Inuit man wearing winter clothing. The relevant public will have no difficulties in perceiving the verbal element of the contested mark as the plural of the word ‘IGLOO’, despite the misspelling in the last letter. Igloos are houses built of blocks of solid snow by the Inuit people. Thus, the figurative element of the contested sign reinforces the concept of Igloo(s). As the elements of the contested mark are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

As such, the contested sign has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs share the word ‘IGLOO’ which constitutes the entirety of the earlier marks. However, they differ in the last letter ‘Z’, which is present only in the contested sign, in final position. The signs also differ in the stylisation and the figurative element of the contested sign, as described above.

It is important to note that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛I-GLU’, present identically in all signs. The pronunciation differs in the last phoneme of the last letter ‛Z’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the above conclusions regarding the semantic content of the conflicting signs. As the signs will be associated with the same meaning on the account of the distinctive element ‘IGLOO’ and which is reinforced by the depiction of the Inuit in the contested sign, the signs are considered similar to an above 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.

4. 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

Account is 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, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are identical, similar (to varying degrees) or dissimilar to the opponent’s goods. The similarity between the signs (being visually average, highly aurally and conceptually above average) results from the words ‘IGLOO’ in the earlier marks and ‘IGLOOZ’ in the contested sign. While the differences between the signs are not imperceptible, they are not sufficient to rule out any likelihood of confusion, and more specifically the likelihood of association, on the part of the relevant public who, although aware of differences between the signs, nevertheless assumes that owing to their similarities they derive from the same undertaking or an economically linked undertaking.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, 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).

Based on the average degree of inherent distinctiveness of the earlier marks, it is considered that the differences between the signs do not, in the present case, have sufficient impact to enable the relevant public to safely distinguish between the signs in the context of identical and similar (to varying degrees) goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations. 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. 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the European Union trade mark registration No 12 875 514 for the figurative mark . The other earlier right invoked by the opponent covers a narrower scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna MAKOWSKA

Carlos MATEO PÉREZ

Denitza STOYANOVA-VALCHANOVA

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.