OPPOSITION No B 2 670 944

NordCap GmbH & Co. KG, Thalenhorststr. 15, 28307 Bremen, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)

a g a i n s t

Nortek Air Solutions LLC, 13200 Pioneer Trail, Suite 150, Eden Prairie, Minnesota 55347, United States of America (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 670 944 is upheld for all the contested goods.

2.        European Union trade mark application No 14 819 148 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 14 819 148. The opposition is based on European trade mark registration No 2 959 690. 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.

1. The goods

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

Class 11: Installations for refrigerating.

The contested goods are the following:

Class 11: Air-conditioning, air cooling and ventilation apparatus and instruments; indirect and direct evaporative air cooling units for commercial or industrial use; air handling units for cooling, heating and ventilating commercial and industrial buildings; HVAC units; computer room air conditioning units; air conditioners for data centers and clean rooms; and component parts thereof.

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 opponent’s installations for refrigerating include units, devices, apparatus and instruments for cooling and refrigeration. The contested goods include installations, units, devices, apparatus and/or instruments used for air-conditioning, cooling, ventilation and heating. Regarding air-conditioning apparatus and instruments, it is important to notice that the term air conditioning can refer to any form of cooling, heating, ventilation, or disinfection that modifies the condition of air in buildings and motor vehicles.

Therefore, it is considered that the contested air-conditioning and air cooling apparatus and instruments; indirect and direct evaporative air cooling units for commercial or industrial use; air handling units for cooling commercial and industrial buildings; HVAC units (heating, ventilation and air conditioning); computer room air conditioning units; air conditioners for data centers and clean rooms are included in, or overlap with, the opponent’s installations for refrigerating. Since the Opposition Division cannot clearly separate these sets of goods and cannot dissect ex officio the categories of the contested or the opponent’s goods, these sets of goods are considered identical.

The contested ventilation apparatus and instruments; air handling units for heating and ventilating commercial and industrial buildings, even if interpreted to cover apparatus and/or units having only a ventilation and/or heating function, are nevertheless similar to the opponent’s installations for refrigerating. This is because these sets of goods can coincide in distribution channels. Furthermore, they can be manufactured by the same producer and be directed at the same relevant public.

The contested component parts thereof (for all the aforesaid contested goods) are similar to the opponent’s installations for refrigerating. These goods generally coincide in distribution channels and sales outlets and may to some extent coincide in relevant public. The public may also expect that the component parts are produced by, or under the control of, the manufacturer of the apparatus and instrument to which the parts belong.

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 are directed both at the public at large and at business customers with specific professional knowledge or expertise.  The degree of attention may vary from average to high, depending on the specialised nature and sophistication of the goods, the frequency of purchase and their price.

3. The signs

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 ‘COOL’ is not meaningful in certain territories, for example, in countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish-, Bulgarian- and Portuguese-speaking part of the public with no knowledge of English. This is also justified by the specific descriptive meaning of the term ‘cool’ in English in relation to the relevant goods. Therefore, the Opposition Division finds it appropriate to examine the opposition in relation to the part of the public for which the word ‘cool’ has no meaning and has a normal degree of distinctiveness.

Both marks are figurative. The earlier sign contains the word element ‘COOL’ written in rather standard uppercase letters, wherein the last three letters are slightly above the initial letter and are underlined with a thick blue line. The contested sign also contains the verbal element ‘Cool’, written in title-case letters in standard italicised font. The word is preceded by arrays of dots around the letter ‘C’ and has the numeral 3 appearing in superscript after the last letter.

As already mentioned above, the word ‘COOL’, included in the signs has no meaning for the examined relevant public and is, therefore, inherently distinctive in relation to the goods. The numeral ‘3’ in the contested sign will be perceived as such, or, for example, as a mathematical indication of exponentiation. It has no straightforward descriptive or weak meaning in relation to the relevant goods and its inherent distinctiveness is normal.

Furthermore, as regards the distinctive elements of the signs, it should be borne in mind that the thick blue line of the earlier mark is less distinctive than the verbal element ‘COOL’, as it is a quite commonplace and simple shape and its role is mostly ornamental.

In addition, as regards the other figurative elements of the signs (slight stylisation of the letters, the array of dots, colour, etc.), account must be taken 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; 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). Therefore, in view of the composition of the signs, the verbal elements are the ones that will be used to refer to them.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘COOL’, present identically in both signs, and represented in rather standard letters in both signs. The differences between the signs are in the numeral 3 of the contested sign and in the figurative elements. However, the numeral ‘3’ has a somehow subordinate role as compared to the main verbal element ‘COOL’ of the contested sign, as it is in superscript. Furthermore, as explained above, as regards the differences in the figurative elements of the signs, they are either due to less distinctive elements or are less important than the verbal elements. Therefore, as the signs coincide in full in their main and distinctive verbal element, it is considered that the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘COOL’ and differs in the sound of the numeral ‘3’ in superscript of the contested sign. Therefore, the signs are aurally similar to an average degree. Nevertheless, in view of the subordinate position of the numeral of the contested sign, it is possible that at least part of the public may not pronounce it when referring to the mark aurally. Consequently, the signs are aurally identical for that part of the relevant public.

Conceptually, as indicated above, the element ‘COOL’ included in the signs has no meaning for the examined relevant public and territory. Therefore, the conceptual impact of these verbal elements in the signs is neutral. As regards the contested sign, however, it will be associated with the concept of the numeral three and/or exponentiation, which would bring about a conceptual difference and the signs are not conceptually similar to that extent.

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, despite the presence of a purely decorative element of limited distinctiveness in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are identical and similar to the opponent’s goods and they are directed at the public at large and at a professional public. The degree of attention varies from average to high.

The earlier trade mark and the contested sign are visually similar to a high degree; they are aurally identical, or aurally similar to an average degree. The signs are not conceptually similar since they differ in the concept of the numeral ‘3’ included in the contested sign.

The similarities between the signs are on account of their normally distinctive verbal element ‘COOL’, which is the only verbal element in the earlier mark and the more important verbal element of the contested sign. Although there are certain visual, aural (for part of the public) and conceptual differences between the signs, these differences are due to figurative, less distinctive and/or subordinate elements and it is considered that the circumstances of the present case are such that there is a risk of likelihood of confusion/association between the marks. This is because the coinciding element in the signs plays an independent distinctive role in both signs. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public, such as the Spanish-, Bulgarian- and Portuguese-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 2 959 690. It follows that the contested trade mark must be rejected for all the contested 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.

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

Gueorgui IVANOV

Liliya YORDANOVA

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.

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.