OPPOSITION No B 2 783 028

ESTA Apparatebau GmbH & Co. KG, Gotenstr. 2-6, 89250 Senden, Germany (opponent), represented by Thorsten Meyer, Pfarrer-Schultes-Weg 14, 89077 Ulm, Germany (professional representative)

a g a i n s t

Flowair Glogowski i Brzezinski sp.j. also trading as Flowair, ul. Amona 84, 81-601 Gdynia, Poland (applicant), represented by Ewelina Pijewska, Porosiuki 54A, 21-500 Biała Podlaska, Poland (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 783 028 is partially upheld, namely for the following contested goods and services:

Class 11:         Heating, cooling and ventilation apparatus; Air curtains; Air heaters; Fan coil units; Heating, refrigerating and ventilating systems and installations; Parts and accessories for all the aforesaid goods.

Class 35:        Retailing and wholesaling of ventilating apparatus, ventilating systems and installations.

2.        European Union trade mark application No 15 375 546 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 375 546. The opposition is based on European Union trade mark registration No 5 980 578. 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 7:        Vacuum cleaners, electric and pneumatic cleaning apparatus; dust aspiration installations and components therefor, for industrial purposes; aspiration installations and components therefor, for industrial purposes, in particular for chips, smoke, vapours, waste water; dust exhaustion equipment, industrial dirt aspiration devices; aspiration devices for offices and cars, and parts and fittings for all the aforesaid goods, namely spare filters.

Class 11:        Drying, ventilating and water supply apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services; weld smoke exhaustion devices and filters, filter installations, namely apparatus for the separation of dust and smoke, exhauster arms, extraction fans, pipelines for dust and smoke extraction and installations comprised thereof; air-purifying apparatus.

The contested goods and services are the following:

Class 11:        Heating, cooling and ventilation apparatus; Air curtains; Air heaters; Fan coil units; Heating, refrigerating and ventilating systems and installations; Parts and accessories for all the aforesaid goods.

Class 35:        Retailing and wholesaling of heating, refrigerating and ventilating apparatus, air curtains, air heaters, fan coil units, heating, refrigerating and ventilating systems and installations, and parts and fittings for all the aforesaid goods.

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

The term ‘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 (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.

In addition the expression ‘not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services’ in the opponent’s list of goods in Class 11 has also a restrictive character as it defines the goods for which protection was not sought.

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 11

The contested ventilation apparatus includes, as a broader category, the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services. 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 ventilating systems and installations overlap with the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services. Therefore, they are identical.

The contested heating and cooling apparatus; air curtains; air heaters; fan coil units; heating and refrigerating systems and installations are similar to the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services. They have the same distribution channels, the same consumers, the same sales outlets and the same producers. They can be also complementary to each other.

The contested parts and accessories for all the aforesaid goods concern all of the goods listed in Class 11 of the contested sign, that is, heating, cooling and ventilation apparatus; air curtains; air heaters; fan coil units; heating, refrigerating and ventilating systems and installations. According to established case-law the mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity are fulfilled. In the present case, in view of the Opposition Division, the contested parts and accessories for all the aforesaid goods are similar the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services. They have the same distribution channels, the same consumers, the same sales outlets and the same producers. They can be also complementary to each other.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to their particular goods (05/05/2015, T-715/13, Castello, EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

In the above, the contested retailing and wholesaling of ventilating apparatus, ventilating systems and installations are similar to a low degree to the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services.

Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

As a consequence, the contested retailing and wholesaling of heating and refrigerating apparatus, air curtains, air heaters, fan coil units, heating and refrigerating systems and installations, and parts and fittings for all the aforesaid goods are dissimilar to the opponent’s ventilating apparatus, not for use in connection with the administration of heating, water and household utility costs, water management maintenance or data processing for these services and the remaining goods of the earlier mark.

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 both at the public at large and at professionals with specific knowledge or expertise.

The degree of attention may vary from average to above average as these are rather expensive and specialised goods purchased infrequently.

3. The signs

	besta
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 earlier mark is a figurative mark composed of a single verbal element ‘ESTA’ which is written in bold upper-case slightly stylised characters.

The contested sign is a word mark composed of the single word ‘besta’. As a word mark, it is the word ‘besta’ itself that is protected and not the way it is presented. In fact it can be written in all types of characters. Therefore, its representation in capital characters has no impact on the visual comparison.

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 ‘ESTA’ of the earlier mark and ‘besta’ of the contested sign are not meaningful in certain territories, for example, in those countries where Hungarian, Lithuanian and Polish are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-, Lithuanian- and Polish-speaking part of the public for which the word ‘ESTA’ of the earlier mark and the word ‘besta’ of the contested sign are meaningless and, therefore, are distinctive to an average degree.

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

Visually, the signs coincide in the letters ‘ESTA’ present in both signs. The signs differ in the first letter of the contested sign, namely ‘b’ and in a slight stylisation of the earlier mark. However, considering the fact that the earlier mark is fully included in the contested sign and that the stylisation of the earlier mark is not of such a nature as to create significant visual differences between the marks, the signs are considered visually similar to a higher than 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 /ESTA/, present identically in both signs. The pronunciation differs in the sound of the first letter /b/ of the contested mark, which has no counterpart in the earlier sign.  However, this additional letter will not create significant aural differences between the signs, since both the contested sign and the earlier mark will be pronounced in two syllables, namely /ES-TA/ and /BES-TA/ respectively (in Hungarian /ESZ-TA/ and /BESZ-TA/) and will have the same rhythm and intonation. Therefore, the signs 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 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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical and partly similar to various degrees. The remaining services of the contested sign are dissimilar to the goods of the earlier mark. They target the public at large and professionals, whose degree of attention may vary from average to above average. The signs are visually similar to the degree higher than average and aurally similar to a high degree. The conceptual comparison is not possible. Furthermore, the earlier mark has a normal degree of distinctiveness.

Considering the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54), the abovementioned visual and aural similarities and the fact that the earlier mark is fully incorporated in the contested sign result in a likelihood of confusion between the signs. Since neither of the marks under comparison conveys any concept that could differentiate them from each other, it cannot be safely excluded that the relevant public, displaying an average or higher than average degree of attention, is likely to believe that the relevant goods or services, even those similar to a low degree, originate from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian-, Lithuanian- and Polish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 5 980 578. 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.

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).

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar (to various degrees) to the goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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

Rasa BARAKAUSKIENE

Michal KRUK

Judit NÉMETH

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.