OPPOSITION No B 2 709 734

Joycare S.r.L., Via Massimo d'Antona 28, 60033 Chiaravalle (AN), Italy (opponent), represented by Benedetta Dolci, Via dei Gabbiani, 50- scala E, interno 6, 60018 Marina di Montemarciano (AN), Italy (professional representative)

a g a i n s t

Shenzhen Jointronic Technology Inc., 7th Building, Guihua Industry Zone, Guanlan Town, Longhua District, Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.r.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 734 is partially upheld, namely for the following contested goods:

Class 9:                 Computer memory devices; computer software applications, downloadable; data processing apparatus; Global Positioning System [GPS] apparatus; covers for smartphones; cases for smartphones; portable media players; cabinets for loudspeakers; selfie sticks [hand-held monopods]; connected bracelets [measuring instruments].

Class 11:         Water heaters; kettles, electric; water purification installations; water filtering apparatus; filters for drinking water; water purifying apparatus and machines; coffee percolators, electric; coffee machines, electric; air purifying apparatus and machines.

Class 21:         Brushes; material for brush-making; hair for brushes; toothbrushes; water apparatus for cleaning teeth and gums; toothbrushes, electric; toilet cases; cosmetic utensils; funnels.

2.        European Union trade mark application No 15 246 648 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 all the goods of European Union trade mark application No 15 246 648 for the figurative mark . The opposition is based on European Union trade mark registrations No 8 956 815 for the figurative mark  and No 10 834 455 for the word mark ‘JOYCARE’. The opponent invoked Articles 8(1)(b) and 8(5) 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:

EUTM registration No 8 956 815

Class 8:         Hand tools and implements (hand operated); cutlery; side arms; razors, shavers; electric and battery-operated hair clippers, manicure and pedicure sets with an anti-irritation self-extinguishing electronic device; cases and containers for the aforesaid goods.

Class 9:         Electric and electronic apparatus, including time-reckoning electrical alarms incorporated in pill boxes, electric and electro-thermic plates for the hair, electric irons, digital weather stations, digital apparatus for measuring and recording time, barometers, thermometers, not for medical purposes, hygrometers, apparatus for measuring and recording distance, multimeters, pedometers for sports purposes; apparatus for recording, transmission and reproduction of sound or images, including MP3 players, USB memories, audio and video players and recorders, digital voice recorders, portable media players, DVD/DVX players, digital videos and cameras, television sets and plasma screens, monitors, video and telephone security apparatus, intercoms; weighing and measuring instruments, including mechanical and digital bathroom scales, scales with body mass indicators, mechanical and digital kitchen scales, scales for measuring nutritional values and mechanical and digital scales for children; alcohol testers; apparatus for children, namely electric anti-mosquito plugs for children.

Class 10:         Sphygmotensiometers; aerosol therapy apparatus, including membrane, piston and ultrasound nebulisers; transcutaneous electrostimulators for the nerves, skin and muscles; digital and infrared thermometers for medical purposes; heart rate meters and pedometers for medical purposes; foot massagers and bath massagers for therapeutic purposes; multifunction rhythmic and infrared massagers; massage chairs; apparatus for infants, namely breast pumps and homogenisers.

Class 11:         Apparatus for saunas and facial saunas; air conditioners and conditioners, humidifiers, dehumidifiers and air purifiers for commercial or domestic use; hair driers; microwave ovens, electric ovens, toasters; portable and non-portable refrigerators and freezers; mechanical and electronic refrigerating cabinets for drinks; apparatus for infants, namely sterilisers and electric bottle warmers, lights for cribs, lights for cots, lights for pushchairs.

EUTM registration No 10 834 455

Class 21:         Combs for animals; portable baby baths; electric toothbrushes; strainers for household purposes; dustbins; plastic bins (rubbish bins), dustbins, bottle openers; heat retaining containers for food; thermally insulated containers for beverages; mops with wringers; clothes pegs; ice cream scoops; dustpans; electric combs; electrical utensils for toilet use, in particular for care of the teeth and gums; perfume sprayers; nail brushes; chamber pots; household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (not included in other classes).

The contested goods are the following:

Class 9:         Computer memory devices; computer software applications, downloadable; data processing apparatus; Global Positioning System [GPS] apparatus; covers for smartphones; cases for smartphones; portable media players; cabinets for loudspeakers; selfie sticks [hand-held monopods]; connected bracelets [measuring instruments].

Class 11:         Water heaters; kettles, electric; water purification installations; water filtering apparatus; filters for drinking water; water purifying apparatus and machines; coffee percolators, electric; coffee machines, electric; air purifying apparatus and machines; ornamental fountains.

Class 21:         Brushes; material for brush-making; hair for brushes; toothbrushes; water apparatus for cleaning teeth and gums; toothbrushes, electric; toilet cases; cosmetic utensils; funnels.

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

The terms ‘including’ and ‘in particular’, 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

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 computer memory devices are included in the broad category of the opponent’s apparatus for recording, transmission and reproduction of sound or images, including USB memories in Class 9 (EUTM 8 956 815). These goods are identical.

The contested data processing apparatus includes, as a broader category, the opponent’s apparatus for recording, transmission and reproduction of sound or images in Class 9 (EUTM 8 956 815). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Global Positioning System [GPS] apparatus are included in the broad category of the opponent’s apparatus for transmission and reproduction of sound or images in Class 9 (EUTM 8 956 815). These goods are identical.

The contested portable media players are identically contained in both lists of goods (including synonyms) as in the opponent’s apparatus for recording, transmission and reproduction of sound or images, including portable media players (EUTM 8 956 815).

The contested cabinets for loudspeakers, of which can be pointed out that the loudspeakers are normally integrated in the cabinets and are sold as one piece, are included in the broad category of the opponent’s apparatus for transmission and reproduction of sound in Class 9 (EUTM 8 956 815). These goods are identical.

The contested connected bracelets [measuring instruments] are included in the broad category of the opponent’s measuring instruments in Class 9 (EUTM 8 956 815). These goods are identical.

When comparing the contested computer software applications, downloadable with the opponent’s apparatus for recording, transmission and reproduction of sound or images in Class 9 (EUTM 8 956 815), the latter being included in the broad category of data processing apparatus, these are similar. These goods are complementary, coincide in distribution channels, target the same public and may be manufactured by the same kinds of undertakings.

When comparing the contested selfie sticks [hand-held monopods]; covers for smartphones; cases for smartphones, which are all accessories for phones, cameras and smart devices, with, for example, the opponent’s apparatus for recording, transmission and reproduction of sound or images, including digital videos and cameras in Class 9 (EUTM 8 956 815), these are at least similar to a low degree. For example, the contested selfie sticks [hand-held monopods] are often used to hold a camera or a video, and these products could be manufactured by the same kinds of undertakings. They target the same public and are offered through the same distribution channels. The same holds true for the covers and cases of smartphones, since the opponent’s apparatus for recording, transmission and reproduction of sound or images forms a very broad category that could also include smartphones, as these nowadays have many functions, such as to record, transmit and reproduce sound or images, the covers could also be produced by the same companies, offered via the same distribution channels and they may target the same public.

Contested goods in Class 11

The contested water purification installations; water filtering apparatus; filters for drinking water; water purifying apparatus and machines form broad categories including the opponent’s conditioners for commercial or domestic use in Class 11 (EUTM 8 956 815). 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 air purifying apparatus and machines overlap with the opponent’s air purifiers for commercial or domestic use in Class 11 (EUTM 8 956 815). Therefore, these goods are identical.

The contested water heaters; kettles, electric; coffee percolators, electric; coffee machines, electric are similar to the opponent’s electric ovens in Class 11 (EUTM 8 956 815). These goods have the same nature, distribution channels, target the same public and may be manufactured by the same kinds of undertakings.

The contested ornamental fountains are pieces of architecture which pour water into a basin or jet it into the air to supply drinking water and/or for a decorative effect. When comparing these with the opponent’s goods in Classes 8, 9, 10, 11 and 21, which include mainly hand-operated implements used as tools in the respective professions (Class 8); all kinds of electric and electronic apparatus; apparatus and instruments for measuring and weighing; apparatus for recording, transmission and reproduction of sound or images, alcohol testers and apparatus for children (Class 9); mainly medical apparatus, instruments and articles (Class 10); apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating (Class 11) and mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain (Class 21), these are dissimilar. They differ in nature, purpose and method of use. These goods are not complementary nor in competition. They have different distribution channels, target a different public and they are normally not manufactured by the same kinds of companies.

Contested goods in Class 21

The contested brushes; material for brush-making; toothbrushes, electric are identically contained in both lists of goods, including synonyms (EUTM 10 834 455).

The contested hair for brushes is included in the broad category of the opponent’s brush-making materials in Class 21 (EUTM 10 834 455). These are identical.

The contested tootbrushes in Class 21 include, as a broader category the opponent’s electric toothbrushes in Class 21 (EUTM 10 834 455). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested water apparatus for cleaning teeth and gums are included in the broad category of the opponent’s articles for cleaning purposes in Class 21 (EUTM 10 834 455). These goods are identical.

The contested cosmetic utensils in Class 21 include, as a broader category the opponent’s nail brushes in Class 21 (EUTM 10 834 455). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested funnels are included in the broad category of the opponent’s kitchen utensils in Class 21 (EUTM 10 834 455). These good are identical.

When comparing the contested toilet cases with the opponent’s electrical utensils for toilet use, in particular for care of the teeth and gums in Class 21 (EUTM 10 834 455), these are similar. These goods are all used for toiletry purposes. Furthermore, it is not unusual that the opponent’s goods are already packed in toilet cases by the manufacturer. These goods are often found in the same outlets, such as drugstores, and it is not unlikely that the same kinds of undertakings are involved in their manufacturing. 

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 various degrees) are partly directed at the public at large, for example cosmetic utensils in Class 21 and some are more specialised goods directed at business customers with specific professional knowledge or expertise, such as material for brush-making in Class 21, as these are used by undertakings manufacturing products in this field.

The public’s degree of attention may vary from average to above average, depending on the price, specialised nature, or terms and conditions of the purchased goods. Some of the goods are not very frequent purchases, their price could also be high and some of the goods also have a very specific purpose.

3. The signs

JOYCARE
Earlier trade marks	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 elements ‘JOYCARE’ of the earlier marks and ‘Joincare’ are not understood in certain territories, for example, in those countries where English is not spoken or understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier mark 1) is a word mark consisting of the word ‘JOYCARE’. In case of word marks, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters. The earlier mark 2) is a figurative mark consisting of the word ‘JOYCARE’, written in a slightly fancy bold blue typeface in capital letters.

The contested sign is a figurative mark consisting of the word ‘Joincare’, written in a fairly standard typeface in title case.

The words ‘JOYCARE’ and ‘Joincare’ as a whole do not have any meaning for the non-English-speaking public and are normally distinctive for the goods at stake.

Visually, the signs coincide in the sequence of letters ‘J-O-*-(*)-C-A-R-E’, the only difference being the slightly fancy typeface in which these letters are written in the earlier mark 2) versus the fairly standard typeface in the contested sign. On the other hand, they differ in the third letter ‘Y’ of the earlier marks versus the third and fourth letters ‘i-n’ of the contested sign.

Regarding the slightly fancy typeface in which the verbal element of the earlier mark 2) is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the verbal element it seems to embellish.

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 /J-O-*-(*)-C-A-R-E/, present identically in both signs. Furthermore, the letters ‘Y’ and ‘I’ are pronounced in an identical way. The marks differ in the sound of the fourth additional letter ‘n’, which is not shared by the earlier marks. Furthermore, all the marks are pronounced in two or three syllables, /JOY-CARE/ or /JOY-CA-RE/ versus /Join-care/ or /Join-ca-re/ (depending on the language in which they are pronounced), and have a similar rhythm and intonation. As the letter ‘n’ of the contested sign is placed in the middle and surrounded by other sounds, its impact is quite limited. The marks are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found partly identical or similar (to various degrees) and partly dissimilar and the level of attention varies from average to above average. The earlier marks have a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-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 No 8 956 815 and No 10 834 455. 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 various degrees) to those of the earlier trade marks.

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of all of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar (to various degrees) goods. The result would be the same even if these earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of these opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if these earlier marks enjoyed an enhanced degree of distinctiveness.

Given that the opposition is not entirely successful under Article 8(1)(b) EUTMR for all the contested goods, it is necessary to further examine the remaining ground of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation for European Union trade mark registrations No 8 956 815 for the figurative mark  for goods in Classes 8, 9, 10 and 11 and No 10 834 455 for the word mark ‘JOYCARE’ for goods in Class 21 in Italy.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist/Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The earlier European Union trade mark registrations No 8 956 815 for the figurative mark  and No 10 834 455 for the word mark ‘JOYCARE’ have already been compared to the contested sign above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

The opponent filed a considerable amount of evidence in order to prove the reputation of the earlier marks. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim will continue on the assumption that the earlier marks have a reputation in the territory claimed, Italy, in connection with the goods in Classes 8, 9, 10, 11 and 21, without going into the analysis of any specific products in those classes.

3. The ‘link’ between the signs

As seen above, the earlier marks are assumed to have a reputation for the goods in Classes 8, 9, 10, 11 and 21, and the signs are similar.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the examination of the opposition under Article 8(5) EUTMR concerns the remaining contested goods for which the contested European Union trade mark application No 15 246 648 has not been rejected, namely:

Class 11:         Ornamental fountains.

The goods in relation to which the earlier marks are assumed to be reputed are the following:

EUTM registration No 8 956 815

Class 8:         Hand tools and implements (hand operated); cutlery; side arms; razors, shavers; electric and battery-operated hair clippers, manicure and pedicure sets with an anti-irritation self-extinguishing electronic device; cases and containers for the aforesaid goods.

Class 9:         Electric and electronic apparatus, including time-reckoning electrical alarms incorporated in pill boxes, electric and electro-thermic plates for the hair, electric irons, digital weather stations, digital apparatus for measuring and recording time, barometers, thermometers, not for medical purposes, hygrometers, apparatus for measuring and recording distance, multimeters, pedometers for sports purposes; apparatus for recording, transmission and reproduction of sound or images, including MP3 players, USB memories, audio and video players and recorders, digital voice recorders, portable media players, DVD/DVX players, digital videos and cameras, television sets and plasma screens, monitors, video and telephone security apparatus, intercoms; weighing and measuring instruments, including mechanical and digital bathroom scales, scales with body mass indicators, mechanical and digital kitchen scales, scales for measuring nutritional values and mechanical and digital scales for children; alcohol testers; apparatus for children, namely electric anti-mosquito plugs for children.

Class 10:         Sphygmotensiometers; aerosol therapy apparatus, including membrane, piston and ultrasound nebulisers; transcutaneous electrostimulators for the nerves, skin and muscles; digitial and infrared thermometers for medical purposes; heart rate meters and pedometers for medical purposes; foot massagers and bath massagers for therapeutic purposes; multifunction rhythmic and infrared massagers; massage chairs; apparatus for infants, namely breast pumps and homogenisers.

Class 11:         Apparatus for saunas and facial saunas; air conditioners and conditioners, humidifiers, dehumidifiers and air purifiers for commercial or domestic use; hair driers; microwave ovens, electric ovens, toasters; portable and non-portable refrigerators and freezers; mechanical and electronic refrigerating cabinets for drinks; apparatus for infants, namely sterilisers and electric bottle warmers, lights for cribs, lights for cots, lights for pushchairs.

EUTM registration No 10 834 455

Class 21:         Combs for animals; portable baby baths; electric toothbrushes; strainers for household purposes; dustbins; plastic bins (rubbish bins), dustbins, bottle openers; heat retaining containers for food; thermally insulated containers for beverages; mops with wringers; clothes pegs; ice cream scoops; dustpans; electric combs; electrical utensils for toilet use, in particular for care of the teeth and gums; perfume sprayers; nail brushes; chamber pots; household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (not included in other classes).

As seen above, the signs were found to be similar. However, the goods for which the opponent claims reputation are completely different from the goods of the contested sign, for which this sign has not been rejected under Article 8(1)(b) EUTMR.

The earlier mark is assumed to be reputed for goods in Classes 8, 9, 10, 11 and 21, which include mainly, as previously mentioned already, hand-operated implements used as tools in the respective professions (Class 8); all kinds of electric and electronic apparatus; apparatus and instruments for measuring and weighing; apparatus for recording, transmission and reproduction of sound or images, alcohol testers and apparatus for children (Class 9); mainly medical apparatus, instruments and articles (Class 10); apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes (Class 11) and mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain (Class 21).

On the other hand, the goods applied for and subject to assessment under Article 8(5) EUTMR are ornamental fountains which are, as already pointed out before, pieces of architecture which pour water into a basin or jet it into the air to supply drinking water and/or for a decorative effect. The contested goods are very specific goods, usually manufactured by very specific companies and sold, for example, through garden centres and the like.

 

These sets of goods belong to totally different and unrelated market sectors. Even if the relevant section of the public for the goods covered by the conflicting marks might be the same or may overlaps to some extent as this is the public at large, those goods are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The differences in nature, purpose and method of use between the contested goods on one hand and the goods for which a reputation has been assumed on the other, as well as the divergent distribution channels, sales outlets and producers, make it highly improbable that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is very unlikely that, when purchasing an ornamental fountain under the contested sign, it would remind the consumer of the earlier marks, reputed for the goods mentioned in more detail before.

At the same time it must be stressed that the issue here cannot be merely that the goods are dissimilar – because Article 8(5) EUTMR specifically covers dissimilar goods/services. The Opposition Division highlights the divergent nature of the goods in order to challenge the plausibility of the claim that the consumer when confronted with the contested sign on the above mentioned goods will make a link with the earlier marks. Since there is no proximity in the economic sectors of the opponent’s goods and the contested goods, but rather a large gap, it is too far-fetched to conclude that the consumer when seeing the contested sign will be reminded of the earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

In view of the cumulative nature of the requirements of this provision there is no need to examine further the remaining factors. It follows that given that reputation was assumed there is no need to assess the evidence submitted in this regard since it would not alter the outcome.

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

Richard BIANCHI

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.