OPPOSITION No B 2 602 558

Omega Plc, Omega Boulevard, Capitol Park, Thorne, Doncaster DN 8 5TX, United Kingdom (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

E-Innova B2B Tecnologies Solutions S.L. Unipersonal, Calle Milanos 8 nave 43, 28320 Pinto, Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 602 558 is upheld for all the contested goods and services, namely 

Class 11:        Electric rice cookers; steam cookers; multicookers; stockpots (electric -); electric pressure cooking saucepans; domestic autoclave pressure cookers [electric]; stew-pots (electric -); electric cooking pots [for household purposes]; electric cooking pots for industrial purposes; electric ranges; cookers; electric ranges; gas and electric ranges; glass plates [parts of stoves]; electric cooking stoves [for household purposes]; halogen lamps for incorporation into electric cookers; steam cookers; multicookers; stockpots (electric -); electric pressure cooking saucepans; electrical serving pots; stew-pots (electric -); domestic autoclave pressure cookers [electric]; electric cooking pots [for household purposes]; electric rice cookers; cooking appliances; kitchen machines (electric -) for cooking; electric egg cookers; steaming apparatus (electric -) for cooking; electric panini makers; apparatus for cooking out of doors; egg cookers; electric cooking utensils; kitchen machines (electric -) for cooking; convection ovens; electric cooking ovens; induction ovens; microwave ovens; microwave ovens; electric deep fryers; domestic frying pans [electric]; chip pans (electric -); domestic deep fryers [electric]; rice cookers.

Class 35:        Retailing in shops, wholesaling and sale via the global computer network of household electric machines; all the aforesaid goods relating exclusively to small household electrical appliances and household articles for the home.

2.        European Union trade mark application No 14 393 433 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 393 433 namely against all the goods in Class 11 and some services in Class 35. The opposition is based on United Kingdom trade mark registration No 2 601 521. 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 and services

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

Class 11:        Cooking apparatus; gas and electric cookers and grills; cooker hoods; parts and fittings for all the aforesaid goods; installations and apparatus for cooking, ovens, hobs, grills, microwave ovens; installations and apparatus for refrigerating, ventilation and drying, refrigerators, freezers and tumble dryers; installations and apparatus for ventilating, hoods and cookers; installations for water supply, sinks and basins; waste disposal units; waste fittings for sinks and basins; parts and fittings for all the aforesaid goods; lighting apparatus for kitchens; surface lights, recessed lights, cupboard lights, plinth lights, spotlights, all incorporated in or an integral part of kitchen furniture; taps; baths; toilets, showers, bidets; parts and fittings for the aforesaid goods; lighting apparatus for bathrooms; surface lights, recessed lights, cupboard lights, plinth lights, spotlights, all incorporated in or an integral part of bathroom furniture; parts and fittings for all the aforesaid goods.

After a limitation filed by the applicant on 03/03/2016, the contested goods and services are the following:

Class 11:        Electric rice cookers; steam cookers; multicookers; stockpots (electric -); electric pressure cooking saucepans; domestic autoclave pressure cookers [electric]; stew-pots (electric -); electric cooking pots [for household purposes]; electric cooking pots for industrial purposes; electric ranges; cookers; electric ranges; gas and electric ranges; glass plates[parts of stoves]; electric cooking stoves [for household purposes]; halogen lamps for incorporation into electric cookers; steam cookers; multicookers; stockpots (electric -); electric pressure cooking saucepans; electrical serving pots; stew-pots (electric -); domestic autoclave pressure cookers [electric]; electric cooking pots [for household purposes]; electric rice cookers; cooking appliances; kitchen machines (electric -) for cooking; electric egg cookers; steaming apparatus (electric -) for cooking; electric panini makers; apparatus for cooking out of doors; egg cookers; electric cooking utensils; kitchen machines (electric -) for cooking; convection ovens; electric cooking ovens; induction ovens; microwave ovens; microwave ovens; electric deep fryers; domestic frying pans [electric]; chip pans (electric -); domestic deep fryers [electric]; rice cookers.

Class 35:        Retailing in shops, wholesaling and sale via the global computer network of household electric machines; all the aforesaid goods relating exclusively to small household electrical appliances and household articles for the home.

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 electric rice cookers (listed twice); multicookers (listed twice); domestic autoclave pressure cookers [electric] (listed twice); electric egg cookers; egg cookers; rice cookers; steam cookers (listed twice) are included in the broad category of the opponent’s cookers. Therefore, they are identical.

The contested cookers; microwave ovens (listed twice) are identically contained in both lists of goods.

The contested stockpots (electric -) (listed twice); electric pressure cooking saucepans (listed twice); stew-pots (electric -) (listed twice); electric cooking pots [for household purposes] (listed twice); electrical serving pots; electric deep fryers; domestic frying pans [electric]; chip pans (electric -); domestic deep fryers [electric]; steaming apparatus (electric -) for cooking; electric panini makers; apparatus for cooking out of doors; convection ovens; electric cooking ovens; induction ovens; kitchen machines (electric -) for cooking (listed twice); electric cooking pots for industrial purposes;  electric ranges (listed three times); gas ranges; electric cooking stoves [for household purposes]; cooking appliances are included in the broad category of the opponent’s cooking apparatus. Therefore, they are identical.

The contested electric cooking utensils are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested glass plates [parts of stoves]; halogen lamps for incorporation into electric cookers are included in the broad category of the opponent’s parts and fittings for cookers, ovens. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. This principle applies fully to all forms of activities which consist of the actual sale of goods, such as wholesale services, internet shopping, sales via global computer networks, catalogue services or mail order services.

Therefore, the contested retailing in shops, wholesaling and sale via the global computer network of household electric machines; all the aforesaid goods relating exclusively to small household electrical appliances and household articles for the home are similar to a low degree to the opponent’s cooking apparatus; installations and apparatus for cooking, ovens, hobs, grills, microwave ovens in Class 11.

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 a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. Since some of the goods at issue are intended for mass consumption (e.g. electric cooking utensils), whereas others are technically sophisticated and expensive products that are purchased infrequently and are expected to last for a long time (e.g. electric cooking pots for industrial purposes), the degree of attention may vary from average to high.

3. The signs

OMEGA	GM4u Omega
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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). 

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof. Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

The word ‘OMEGA’, consisting the sole element of the earlier mark and the second word of the contested sign, will be perceived by the majority of the public in the relevant territory as, inter alia, ‘the last letter of the Greek alphabet (Ω, ω)’, or as ‘the last of a series’ (information extracted from Oxford English Dictionary on 22/03/2017 at http://www.oed.com/view/Entry/131185?redirectedFrom=omega#eid). Contrary to the applicant’s argument that the word ‘OMEGA’ is fully descriptive in relation to the goods and services concerned, the Opposition Division finds that the word ‘OMEGA’ is of average distinctiveness.

The element ‘GM4u’, contained in the contested sign, has no meaning for the relevant public and it is considered to have a normal degree of distinctiveness for the relevant goods and services.

Visually, the signs coincide in the word ‘OMEGA’, which forms the sole element of the earlier mark and the second word of the contested sign. They only differ in the additional first element of the contested sign, ‘GM4u’, which has no counterpart in the earlier mark. Therefore, bearing in mind that the earlier mark is entirely incorporated in the contested sign, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the sound of the word ‘OMEGA’, present identically in both signs. The pronunciation differs in the sound of the additional element of the contested sign, ‘GM4u’, which has no counterpart in the earlier mark. Likewise, taking into account that the earlier mark’s sole element is entirely incorporated in the contested sign, – albeit at the second part of the sign –, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the contested sign as a whole does not have any meaning for the public in the relevant territory, the element ‘OMEGA’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually highly 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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 (recital 8 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).

The goods or services under comparison are identical or similar to low degree. The degree of attention of the relevant public is expected to vary from average to high. The signs are visually and aurally similar to an average degree and conceptually highly similar to the extent that they have the word ‘OMEGA’ in common. In particular, the earlier mark is fully included in the contested sign and has an independent distinctive role within it.

Although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

It is common for undertakings active on the market to use sub-brands – that is to say, signs that derive from a principal mark and have an element in common – to distinguish the scope of one product or service from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical or similar goods and services designated by the conflicting signs as product lines or services that come from the same undertaking or economically linked undertakings. In the present case, consumers may legitimately believe that the contested sign, ‘GM4u Omega’, is a new brand line or a recent development under the opponent’s mark, ‘OMEGA’. In other words, consumers may confuse the origins of the goods or services found to be identical or similar, assuming that they come from the same undertaking or from economically linked undertakings.

As regards the contested services found to be similar to a low degree to the opponent’s goods, account must be taken of the well-established principle that 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 strong similarity between the signs outweighs the low similarity between the opponent’s goods and the contested services in Class 35, and a risk of confusion exists also in relation to those.

Considering all the above and emphasising, in particular, the fact that the earlier trade mark, which has an average degree of distinctiveness, is included in its entirety in the contested sign and that consumers only rarely have the opportunity to compare signs side by side but must instead rely on their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the public. This is equally true in relation to the goods and services for which a higher degree of attentiveness can be expected on behalf of the relevant consumers, as the visual, aural and conceptual similarities between the signs nonetheless prevail.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 601 521. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Andrea VALISA

José Antonio GARRIDO OTAOLA

Michele M. BENEDETTI-ALOISI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.