OPPOSITION No B 2 711 243

Prodemo SA, Clos Donzel, 2114 Fleurier. Switzerland (opponent), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Pphu Logo Sc Piotr Legutko Marcin Bartoszewicz, ul. Kraszowicka 81, 58-100 Świdnica, Poland (applicant), represented by Dawid Bugajski, Grochowe Łąki 7a/10, 61-752 Poznań, Poland (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 711 243 is upheld for all the contested goods.

2.        European Union trade mark application No 15 264 484 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 264 484. The opposition is based on international trade mark registration No 926 899 designating the European Union. 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 7:        Electrical machines and appliances for household and kitchen use.

Class 11:        Fruit roasters, ice-making machines and apparatus, electric deep fat friers, coffee machines, electric pressure cooking saucepans.

The contested goods are the following:

Class 7:        Electrical squeezers for fruit and vegetable; electric fruit squeezers; juice extracting machines; extrusion moulding machines; noodle making machines; machines for making pasta; pasta cutters [machines]; electric pasta makers for domestic use; butter machines; churns [machines] for use in making butter; mills [machines]; mills and crushing machines; crushers for kitchen use, electric; power-operated coffee grinders; fruit grinders (electric -); spice grinders (electric -); electric pepper mills; electric salt mills; flour mill machines; pepper mills other than hand-operated; grinders (electric -) for food preparation; mills for household purposes, other than hand-operated; coffee grinders, other than hand-operated; electric food processors; liquidizers [kitchen machines]; electric kitchen tools; electric kitchen mixers; kitchen tools [electric utensils]; food processors (electric -) for domestic use; slicing machines (electric -) for kitchen use; machines for slicing food [electric, kitchen]; electric kitchen appliances for chopping, mixing, pressing; kitchen machines (electric -) for food preparation [other than cooking]; beverage preparation machines, electromechanical; food preparation machines, electromechanical; fruit squeezing machines [electric]; orange squeezing machines [electric]; electric fruit presses for household use; orange juice extracting machines [electric].

The contested electrical squeezers for fruit and vegetable; electric fruit squeezers; juice extracting machines; extrusion moulding machines; noodle making machines; machines for making pasta; pasta cutters [machines]; electric pasta makers for domestic use; butter machines; churns [machines] for use in making butter; mills [machines]; mills and crushing machines; crushers for kitchen use, electric; power-operated coffee grinders; fruit grinders (electric -); spice grinders (electric -); electric pepper mills; electric salt mills; flour mill machines; pepper mills other than hand-operated; grinders (electric -) for food preparation; mills for household purposes, other than hand-operated; coffee grinders, other than hand-operated; electric food processors; liquidizers [kitchen machines]; electric kitchen tools; electric kitchen mixers; kitchen tools [electric utensils]; food processors (electric -) for domestic use; slicing machines (electric -) for kitchen use; machines for slicing food [electric, kitchen]; electric kitchen appliances for chopping, mixing, pressing; kitchen machines (electric -) for food preparation [other than cooking]; beverage preparation machines, electromechanical; food preparation machines, electromechanical; fruit squeezing machines [electric]; orange squeezing machines [electric]; electric fruit presses for household use; orange juice extracting machines [electric] are all identical to the opponent’s goods in Class 7, either because they are included in, or overlap with, the broad category of the opponent’s electrical machines and appliances for household and kitchen use.

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 in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

OSKAR	Oscar Pro
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 word mark and consists of the verbal element ‘OSKAR’. Throughout the European Union, it will be widely associated with a male forename. Its inherent distinctiveness is normal in relation to the relevant goods.

The contested sign is a word mark, consisting of the verbal elements ‘Oscar Pro’. It must be noted that it is irrelevant that a word mark is depicted using a mixture of lower and upper case letters. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Consequently, the protection offered by the registration of a word mark applies to the word(s) stated in the application for registration, i.e. in the present case ‘OSCAR PRO’, not to the individual graphic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

As the signs are both word marks, none of them contain elements which are clearly more eye-catching than others. There is a distinction though, between the distinctive character of the verbal elements in the contested sign.

While ‘OSCAR’ in the contested sign (as ‘OSKAR’ in the earlier mark) will be associated with a male forename throughout the European Union (and its inherent distinctiveness is normal in relation to the relevant goods), the term ‘PRO’ will be understood by a significant part of the relevant public throughout the European Union as relating to ‘professional’ (in this context, see also 11/09/14, T-127/13, Pro outdoor, EU:T:2014:767, § 58). In this sense, the element ‘PRO’ is descriptive of the quality of the relevant goods.

This means that both visually and aurally, the signs are highly similar since the relevant consumer will rather notice the coincidences in the signs’ common and distinctive elements ‘OSCAR’/’OSKAR’ (referring to the same male first name) than the non-distinctive differentiating element ‘PRO’ of the contested sign, which it will not perceive as an indication as to the origin of the goods. The difference in the letters ‘K/C’ in the aforementioned distinctive elements may be go unnoticed.

Conceptually, both signs will be perceived as the same male first name by the public in the relevant territory (albeit written with a middle letter ‘K’ in the earlier mark and ‘C’ in the contested sign); although the second word of the contested sign, ‘PRO’ will evoke a concept, it does not serve to distinguish the marks from a conceptual point of view, as it will be understood as indicating that the goods offered under this mark are of ‘professional’ quality or ‘for professionals’. Therefore, the signs are conceptually similar to a very high degree.

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 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

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

In the present case, it is indeed 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

As has been concluded above, the contested goods in Class 7 were found identical and are directed at the public at large whose level of attention is average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually, aurally and conceptually similar to a high degree.

Account must be taken of 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). ). 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).

Although the contested sign differs in its second verbal element ‘PRO’, this element lacks distinctiveness for a significant part of the relevant public. Consumers will reasonably assume that this element distinguishes a different or more ‘professional’ line of products originating from the same undertaking or from connected entities. It is usual for the same mark to be configured in various different ways according to the type of product which it designates. Furthermore, it is also common for the same manufacturer or provider to use sub-brands, that is to say, signs that derive from a principal mark and which share with it a common element, in order to distinguish its various lines from one another.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, the Opposition Division concludes that the mere difference of the middle letter (‘C’/’K’) in the distinctive element of both signs in question is not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could believe, for instance, that the goods designated by the conflicting signs distinguish different product lines coming from the same or related undertakings, and this even where the attention will be high.

In its observations, the applicant claims that there are several trade marks in Class 7 that consist of the term ‘OSCAR’ or ‘OSKAR’. In support of its argument the applicant attaches an extract from the WIPO database. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘OSCAR’ or ‘OSKAR’. In addition, the applicant argues that the marks under comparison are ‘different in the area of actual activities and presence on the market’. However, for the comparison of the signs, an assessment is made on the basis of the signs as registered rather than how they are actually used in the course of trade (9 June 2010, T-138/09, ‘Riojavina’, § 50). Under these circumstances, the applicant’s claims must be set aside.

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 earlier international trade mark registration No 926 899 designating the European Union. 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

Edith Elisabeth VAN DEN EEDE

María Clara IBÁNEZ FIORILLO

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.