OPPOSITION No B 2 666 629

Airmaster A/S, Industrivej 59, 9600 Aars, Denmark (opponent), represented by Budde Schou A/S, Hausergade 3, 1128  Copenhagen K, Denmark (professional representative)

a g a i n s t

Force Manner Co. Ltd., 44 Wyndham St, 27 F/L, Unit C, D Central, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Guy Delhaye, 2 rue Gustave de Clausade, 81800 Rabastens, France (professional representative).

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

DECISION:

1.        Opposition No B 2 666 629 is upheld for all the contested goods.

2.        European Union trade mark application No 14 718 688 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 718 688. The opposition is based on, inter alia, European Union trade mark registration No 9 698 986. 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 registration No 9 698 986.

1. The goods and services

The goods on which the opposition is based are, inter alia, the following:

Class 11:         Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, all aforementioned goods with the exception of hairdryers and other apparatus and instruments especially destined to hairdressers' saloons.

The contested goods are the following:

Class 11:         Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning fans, for household use.

Contested goods 11

The contested apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes include as  broader categories the opponent’s apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, all aforementioned goods with the exception of hairdryers and other apparatus and instruments especially destined to hairdressers'saloons in Class 11. The Opposition Division cannot dissect ex officio de broad category of the contested goods, and, therefore, these goods are considered identical.

The contested air conditioning fans, for household use are included in the broad category of the opponent’s apparatus for ventilating in Class 11. Therefore, these goods are identical.

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 are directed at the public at large. The degree of attention will vary from average to higher than average, depending on the particular products in question, their complexity and price.

For the sake of completeness, it should be stressed that the applicant’s arguments alleging that based on the catalogues of the parties the goods are directed at different consumers should be dismissed since the Opposition Division looks at the list of goods and services as such and not to the market reality.

3. The signs

AIRMASTER
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘AIR’ of the marks is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the EU public speaking Baltic, Slavic or Finno-Ugric languages, such as in Poland, Slovakia, Latvia, Hungary or Estonia, and who, at the same time, do not speak English as a foreign language.

The earlier mark is a word mark consisting of the word ‘AIRMASTER’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial.

The contested sign is a figurative mark composed of the words ‘AIR’ and ‘MONSTER’, written in a slightly fancy black uppercase typeface. Moreover, there is a figurative element made up of black curved lines surrounding the letter ‘O’.

The earlier mark and the contested sign have no elements which could be considered clearly more dominant (visually eye-catching) than others.

Neither of the two signs has a meaning for a part of the public in the relevant territory. Therefore, the marks have no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘A-I-R-M-*-*-S-T-E-R’, whereas they differ only in the middle part of the marks, namely the letters ‘A’ vs ‘ON’ respectively and the space between the two verbal elements of the contested sign and its graphic device. Nonetheless, to this extent it should be stressed 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). This is also applicable in the case at hand with respect to the device in the contested sign.

Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the element it seems to embellish.

Furthermore, the first parts of the verbal elements of the conflicting marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to a high 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 /A-I-R-M-*-*-S-T-E-R/, present identically in both signs. The pronunciation differs in the sound of the middle letters, namely /A/ vs /ON/ respectively, where the consumer usually focuses less. The marks are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public, as defined above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods at issue have been found to be identical and the level of attention varies from average to higher than average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually and aurally similar to a high degree, without this impression being altered by any conceptual perception. The difference in the figurative element of the contested sign has less impact, as the consumer focuses more on the verbal element, and the difference in the letters of the verbal elements falls in the middle of the marks under comparison, where the consumer also focuses less.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In light of the foregoing and, in particular the identity between the goods and the high similarities between the signs, there is a likelihood of confusion on the part of the public, this even taking into account the higher degree of attention.

For the sake of completeness, it should be noticed that in its observations, the applicant argues that the signs AIRMASTER and AIR MONSTER already coexisted on the European market as the applicant owned European Union trade mark registration No 2 045 805 with the word elements AIR MONSTER that expired in 2011 which had coexisted with a Serbian trade mark registration. Although under special circumstances the Opposition Division may consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark, in the present case this argument should be dismissed as unfounded since Serbia neither in 2011 nor now is a part of the European Union.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 9 698 986. It follows that the contested trade mark must be rejected for all the contested goods.

For the sake of completeness, it should be noted that as the earlier right, i.e. European Union trade mark registration No 9 698 986, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.