OPPOSITION No B 2 628 702

Zehnder Group International AG, Moortalstraße 1, 5722 Gränichen, Switzerland (opponent), represented by Stenger Watzke Ring Intellectual Property, Am Seestern 8, 40547 Düsseldorf, Germany (professional representative)

a g a i n s t

Axes System J. Raczyński i Wspólnicy Spółka Jawna, Raciborskiego 35, 80-215 Gdańsk, Poland (applicant), represented by Kancelaria ‘Patent’ Jan Prościński, ul. Oliwkowa 14D/35, 81-589 Gdynia, Poland (professional representative).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 628 702 is partially upheld, namely for the following contested goods and services:

Class 9: Heat regulating apparatus.

Class 11: Refrigerating appliances and installations, Heating apparatus, Humidifiers for central heating radiators; Coolers for furnaces, Refrigerating appliances and installations; Refrigerating chambers, containers and cabinets, heat regenerators, heat accumulators, blowers, electric radiators, regulating and safety accessories for gas apparatus, gas boilers, burners, apparatus and installations for cooking, grills, immersion heaters, hot plates, radiators (heating), central heating radiators, electric radiators, coffee roasters, warmers, air-conditioning apparatus and installations, solar heating installations, refrigerating chambers, heating boilers, cookers, microwave ovens, refrigerating display cabinets (display cases), refrigerators, portable Turkish bath cabinets, bed warmers, drinks coolers, electric heaters, boiler heaters, water heaters; burners, acetylene burners, germicidal burners, gas burners, alcohol burners, petrol burners, oil burners, incandescent burners; Evaporators, solar furnaces, microwave ovens, air reheaters, water heaters, plate warmers; Refrigerating containers, heat pumps, Air conditioners, heating installations, drying and cooling installations; regulating accessories for water or gas apparatus and pipes, drying apparatus, drying apparatus and installations, drying apparatus, coffee roasters, bread baking machines; Feeding apparatus for heating boilers, heating frames for bathrooms, air-conditioning apparatus, cooling and heating apparatus and installations for water, heat exchangers, freezers, steam heat accumulators; heating units, hot air ovens, incandescent burners.

Class 37: Installation and repair of stoves, installation and repair of heating installations.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 980 561, namely against all the goods in Class 11 and some of the goods and services in Classes 9 and 37. The opposition is based on European Union trade mark registration No 10 358 547. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DECISION ON THE REVOCATION – Article 80 EUTMR

Where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 15/12/2016, the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 02/11/2016 taken in the opposition proceedings number B 2 628 702.

The reason was that the decision of 02/11/2016 contained an obvious procedural error attributable to the Office, namely that the dictum did not include the correct list of goods in Class 11 in respect of which the opposition was effectively upheld, but wrongly listed the dissimilar goods in Class 11 whereas the opposition was rejected for the identical and similar goods in the same class. Moreover some of the contested goods had not been compared.

In accordance with Article 80 EUTMR, the Office gave the parties one month to submit observations. On 02/01/2017 the opponent agreed to the revocation of the aforementioned decision. Although on 09/01/2017 the applicant requested an extension of the time limit to respond, which was granted and confirmed by the Office, it did not submit any observations.

Therefore, the decision adopted by the Opposition Division on 02/11/2016 in the opposition No B 2 628 702 is herewith revoked and is replaced by the present decision.

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.

1. The goods and services

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

Class 9: Temperature controlling apparatus.

Class 11: Electric radiators and regulating and safety accessories therefor.

The contested goods and services are the following:

Class 9: Heat regulating apparatus.

Class 11: Refrigerating appliances and installations, framework of metal for ovens, heating apparatus, humidifiers for central heating radiators, chlorinating units for swimming pools, coolers for furnaces, refrigerating appliances and installations; refrigerating chambers, containers and cabinets, heat regenerators, heat accumulators, disinfectant apparatus, blowers, disinfectant dispensers for toilets, irrigation fittings, water distribution installations, electric radiators, electric lamps, filters, filters for drinking water, filters for air-conditioning, fountains, regulating and safety accessories for gas apparatus, gas boilers, gas lighters, lamps, burners, scrubbers, acetylene generators, gas generators, apparatus and installations for cooking, grills, immersion heaters, hot plates, radiators (heating), central heating radiators, electric radiators, lighting installations for air vehicles, water conduits installations, electric coffee machines, coffee roasters, warmers, bath fittings and installations, air-conditioning apparatus and installations, solar heating installations, refrigerating chambers, heating boilers, taps, cookers, microwave ovens, refrigerating display cabinets (display cases), covers, casings, lamp casings, burners for lamps; electric lamps, gas lamps, arc lamps, oil lamps, lamps, standard lamps, blow torches (lighting), luminous tubes for lighting, laboratory lamps, safety lamps, electric discharge tubes, pocket searchlights, lanterns, refrigerators, portable Turkish bath cabinets, bed warmers, drinks coolers, showers, shower cubicles, shower cubicles, watering machines for agricultural purposes, gas scrubbing apparatus and equipment, oil purifying apparatus and equipment, air purifying apparatus and equipment, sewage purifying apparatus and equipment, defrosters for vehicles, electric heaters, boiler heaters, water heaters; lighting apparatus and installations, burners, acetylene burners, germicidal burners, gas burners, alcohol burners, petrol burners, oil burners, incandescent burners; evaporators, pasteurisers, solar furnaces, microwave ovens, air reheaters, water heaters, plate warmers; refrigerating containers, heat pumps, apparatus and equipment for purification, ionisation and treatment of air; air conditioners, heating installations, air sterilisation, drying and cooling installations; gas pipes, water pipes, regulating accessories for water or gas apparatus and pipes, anti-splash tap nozzles, roasting jacks, sanitary apparatus and installations, drying apparatus, drying apparatus and installations, purification installations for sewage, water filtering apparatus, bath fittings, drying apparatus, coffee roasters, bread baking machines; feeding apparatus for heating boilers, heating frames for bathrooms, ventilation hoods, ventilating and air-conditioning apparatus, water softening and water conditioning apparatus and installations, cooling and heating apparatus and installations for water, water conduits installations, extractor hoods for kitchens, heat exchangers, shaped fittings for ovens, freezers, steam heat accumulators; pipe line cocks (spigots), pressure water tanks, heating units, hot air ovens, electric filaments for lamps and heating, incandescent burners, light bulbs.

Class 37: Installation and repair of stoves, installation and repair of heating installations.

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 9

The contested heat regulating apparatus is included in the broad category of the opponent’s temperature controlling apparatus. Therefore, they are identical

Contested goods in Class 11

Electric radiators (listed twice in the applicant’s specification) are identically contained in both lists of goods (including synonyms).

The contested central heating radiators; heat exchangers; heating units; radiators (heating) include, as broader categories, the opponent’s electric radiators. 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 humidifiers for central heating radiators; regulating and safety accessories for gas apparatus, regulating accessories for water or gas apparatus and pipes are included in, or overlap with, the broad categories of the opponent’s regulating and safety accessories therefor [electric radiators]. Therefore, they are identical.

The opponent’s electric radiators and regulating and safety accessories therefor and the contested gas boilers, burners (listed twice in the applicant’s specification), heating boilers, boiler heaters, acetylene burners, germicidal burners, gas burners, alcohol burners, petrol burners, oil burners, feeding apparatus for heating boilers, heating frames for bathrooms, incandescent burners (listed twice in the applicant’s specification) are different kinds of heating apparatus. Therefore, these sets of goods have the same purpose and they are also offered to the same consumers. Moreover, it is likely that the goods under comparison would be sold through the same distribution channels. Consequently, they are considered similar.

The contested heating apparatus, blowers, immersion heaters, warmers, bed warmers; air-conditioning apparatus and installations, electric heaters, water heaters (listed twice in the applicant’s specification); air reheaters, heat pumps, air conditioners, heating installations, air-conditioning apparatus; heating apparatus and installations for water; solar heating installations have some points in common with the opponent’s electric radiators and regulating and safety accessories therefor, which are heat exchangers used to transfer thermal energy from one medium to another for the purpose of, inter alia, heating. These goods can have the same purpose, distribution channels and producers. Furthermore, it is considered that the contested solar heating installations can be part of the same installation as the opponent’s goods to the extent that radiators can function together with a solar heating installation as parts of the same heating complex. Therefore, these goods are similar.

The opponent’s temperature controlling apparatus in Class 9 is a specific type of apparatus to be used in close connection with the contested refrigerating appliances and installations (listed twice in the applicant’s specification), coolers for furnaces,; refrigerating chambers, containers and cabinets, heat regenerators, heat accumulators, apparatus and installations for cooking, grills, hot plates, refrigerating chambers, cookers, microwave ovens (listed twice in the applicant’s specification), refrigerating display cabinets (display cases), refrigerators, portable Turkish bath cabinets, drinks coolers, evaporators, solar furnaces, microwave ovens, plate warmers; refrigerating containers, drying and cooling installations; drying apparatus (listed twice in the applicant’s specification), drying apparatus and installations, bread baking machines; cooling apparatus and installations for water, freezers, steam heat accumulators; hot air ovens. The opponent’s goods, when sold separately from the contested apparatus for refrigerating, heating, drying or water supply, will be placed in the same area of stores. These goods are considered complementary and also can have the same manufacturers, distribution channels and consumers. Therefore, they are deemed to be similar, at least to a low degree.

Finally, the contested framework of metal for ovens, chlorinating units for swimming pools, disinfectant apparatus, disinfectant dispensers for toilets, irrigation fittings, water distribution installations, electric lamps, filters, filters for drinking water, filters for air-conditioning, fountains, gas lighters, lamps, scrubbers, acetylene generators, gas generators, water conduits installations, electric coffee machines, coffee roasters, bath fittings and installations, taps, covers, casings, lamp casings, burners for lamps; electric lamps, gas lamps, arc lamps, oil lamps, lamps, standard lamps, blow torches (lighting), luminous tubes for lighting, laboratory lamps, safety lamps, electric discharge tubes, pocket searchlights, lanterns, showers, shower cubicles (listed twice in the applicant’s specification), watering machines for agricultural purposes, gas scrubbing apparatus and equipment, oil purifying apparatus and equipment, air purifying apparatus and equipment, sewage purifying apparatus and equipment, defrosters for vehicles, lighting apparatus and installations, pasteurisers, apparatus and equipment for purification, ionisation and treatment of air; air sterilisation installation, gas pipes, water pipes, anti-splash tap nozzles, roasting jacks, sanitary apparatus and installations, purification installations for sewage, water filtering apparatus, bath fittings, ventilation hoods, ventilating apparatus, water softening and water conditioning apparatus and installations, lighting installations for air vehicles, water conduits installations, extractor hoods for kitchens, shaped fittings for ovens, pipe line cocks (spigots), pressure water tanks, electric filaments for lamps and heating, light bulbs are specialised goods that are normally produced by different companies from those that manufacture the opponent’s goods in Classes 9 and 11. The contested goods are considered to differ in nature, intended purpose and distribution channels from the opponent’s goods. Therefore, these goods are dissimilar.

Contested services in Class 37

The contested installation and repair of stoves, installation and repair of heating installations are considered similar to the opponent’s electric radiators and regulating and safety accessories therefor, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary. It is common in the relevant market sector for the manufacturer of the goods to also provide installation, maintenance and repair services.

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 and services found to be identical or similar to various degrees are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention is expected to vary from average to higher than average because of the specialised nature of some of those goods and services and their potentially high costs.

3. The signs

Domus
Earlier trade mark	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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Estonian- and Lithuanian-speaking parts of the relevant public, for which the verbal elements of the marks are meaningless.

The earlier mark is a word mark consisting of a single word, ‘DOMUS’.

The contested sign is a figurative mark, consisting of a large stylised letter ‘A’ in blue and black, next to which is a stylised depiction of a light bulb, in green and black, with what might be perceived as a white leaf within the bulb. Below these elements is the word ‘Aidomus’, in title case letters.

The relevant public will not attribute any clear meaning to the earlier mark.

In the contested sign, the figurative element depicting a light bulb will evoke the idea of electricity. Bearing in mind that the relevant goods and services are electric apparatus and devices and related installation and repair services, this element is considered weak for these goods and services.

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘*DOMUS’. The marks differ in the first two letters, ‘AI’, of the word ‘AIDOMUS’ and in the stylised letter ‘A’, the colours and the figurative element in the contested mark. However, the figurative element is weak in relation to the relevant goods and services.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). It follows that consumers will identify and refer to the contested mark by its verbal elements rather than its figurative element, which, in any event, is weak in relation to the goods and services at issue.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘DOMUS’, present identically in both signs. The pronunciation differs in the sound of the letters ‛AI’ of the word ‘Aidomus’ in the contested mark, which have no counterpart(s) in the earlier sign. Furthermore, the contested mark also includes a letter ‘A’ at the top. However, given that the following verbal element also starts with an ‘A’, ‘AIDOMUS’, it is deemed that consumers will most likely pronounce the vowel ‘A’ only once when saying the word ‘AIDOMUS’.

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

Conceptually, the public in the relevant territory will perceive the words ‘DOMUS’ and ‘AIDOMUS’ as meaningless. The figurative element in the contested mark will be perceived as a stylised light bulb containing a leaf. The earlier sign, however, lacks any meaning in the relevant territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to different degrees and partly dissimilar. The degree of attention varies between average and higher than average.

The signs are visually and aurally similar to an average degree. Furthermore, the relevant public will not associate the verbal elements in the signs with any meaning, so no conceptual difference exists that could help consumers to distinguish between the marks. Moreover, the contested sign’s figurative element, which introduces some conceptual difference between the signs, is weak in relation to the relevant goods and services.

The visual and aural similarities between the marks are that they both include the letters ‘*DOMUS’, although the contested sign has the additional first letters ‘AI’. The contested mark also includes a large letter ‘A’ at the top of the mark. However, as already explained in the aural comparison, to avoid the repetition of the same vowel the latter is not likely to be pronounced.

It is considered that the differences resulting from the letters ‘A’ and ‘AI’ at the beginning of the contested sign and from the figurative element are not sufficient to counteract the similarities deriving from the identical sequence of letters ‘*DOMUS’, which forms the whole of the earlier mark.

It must be borne in mind that consumers rarely have the chance to examine marks side by side but must rely on their imperfect recollection of them.

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (for a definition of likelihood of association, see 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case it cannot be ruled out that consumers will associate the contested mark with the earlier mark and conclude that the abovementioned goods and services found to be identical and similar, and even those found to be similar to a low degree, come from the same undertaking or economically linked undertakings.

This finding still holds true when consumers pay a higher degree of attention when purchasing the goods and services in question. The similarities between the marks are considered to outweigh the dissimilarities even when a high degree of attention is exercised.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Estonian- and Lithuanian-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 and services found to be identical or similar, including those found to be similar to a low degree, to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra KASPERIŪNAITĖ

Isabel DE ALFONSETI HARTMANN

Dorothée SCHLIEPHAKE

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.