OPPOSITION No B 2 749 292

Arçelik Anonim Sirketi, E5 Ankara Asfalti Uzeri, Tuzla, Istanbul 34950, Turkey (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

TradingUnity UG, Marie-Curie-Straße 23, 91052 Erlangen, Germany (applicant), represented by Wilde Beuger Solmecke, Kaiser-Wilhelm-Ring 27-29, 50672 Köln, Germany (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 292 is upheld for all the contested goods.

2.        European Union trade mark application No 15 421 829 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 15 421 829. The opposition is based on European Union trade mark registration No 14 530 604. 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:        Machines, looms and industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); Heavy machinery, robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines, their parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); Bearings, ball-bearings or roller bearings; Tire mounting and dismounting machines; Alternators, generators, generators of electricity, generators working with solar energy; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, spiral machines, compressed air pumps, compressors, vehicle washing installations, and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Printing machines; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Vending machines; Power supply apparatus [generators]; Laundry dryers, namely machines not drying with heating method; Waste management installations.

Class 8:        Forks, spoons, knives and non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals; Cutting and jabbing/stabbing arms; Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric and non-electric irons.

Class 9:        Measuring apparatus and instruments, indicators and laboratory materials including those for scientific research in laboratories other than for medical use; Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication and reproduction); Magnetic and optical data carriers and software recorded in these; downloadable electronic publications, recorded to magnetic and optical media; magnetic/optical cards; Antennas, satellite dishes, amplifiers and their parts; Ticket dispensers, automated teller machines; Electronic components used in machines and apparatus; Counters measuring amount of consumption in unit time and time clocks; Protective suits and life saving apparatus and equipment (including ear plugs for divers); Glasses, sunglasses, contact lenses and their boxes, covers, parts and accessories; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], electric bells; Signaling devices and apparatus used in traffic; Fire extinguishing apparatus including fire engines (including fire hoses and fire hose nozzles); Radar apparatus, sonars, apparatus and devices providing night vision; Magnets, decorative magnets.

Class 11:        Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.

The contested goods are the following:

Class 8:        Table cutlery [knives, forks and spoons]; Cutlery.

Class 9:        Kitchen weighing scales; Weighing apparatus and instruments for standard unit; Electrical scales; Electronic scales; Electronic weighing scales for kitchen use; Weights for use with weighing scales.

Class 21:        Tableware, cookware and containers; Aluminium moulds [kitchen utensils]; Ramekins; Baking containers made of glass; Baking utensils; Bakeware; Baking dishes; Household containers; Frying pans; Roasting dishes; Double boilers; Food steamers, non-electric; Steamers [cookware]; Molds [kitchen utensils]; Plates; Glassware for household purposes; Non-electric griddles; Household or kitchen utensils; Utensils for household purposes; Stew-pans; Ceramics for kitchen use; Ceramics for household purposes; Cooking pots; Cooking pot sets; Cooking utensils, non-electric; Kitchen containers; Kitchen utensils; Skillets; Dutch ovens; Pressure cookers; Dishes; Serving pots; Pots; Pot lids.

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

The term ‘including’, 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.

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 8

Table cutlery [knives, forks and spoons] are identically contained in both lists of goods (including synonyms).

The contested cutlery includes, as a broader category the opponent’s non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 9

The contested kitchen weighing scales, weighing apparatus and instruments for standard unit, electrical scales, electronic scales, electronic weighing scales for kitchen use, weights for use with weighing scales are included in the broad categories the opponent’s measuring apparatus and instruments. Therefore, they are identical. 

Contested goods in Class 21

The contested tableware, cookware, aluminium moulds [kitchen utensils]; ramekins; baking containers made of glass; baking utensils; bakeware; baking dishes; frying pans; roasting dishes; double boilers; food steamers, non-electric; steamers [cookware]; molds [kitchen utensils]; plates; glassware for household purposes; non-electric griddles; household or kitchen utensils; utensils for household purposes; stew-pans; ceramics for kitchen use; ceramics for household purposes; cooking pots; cooking pot sets; cooking utensils, non-electric; kitchen utensils; skillets; dutch ovens; pressure cookers; dishes; serving pots; pots; pot lids and the opponent’s non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals in Class 8 have the same purpose of domestic use in relation to the preparation and consumption of food. They usually coincide in producer, end user and distribution channels, since goods may be sold in the same area of department stores and in the same type of outlets. Considering all the above, the goods are considered similar.

The contested containers, household containers; kitchen containers are similar to a low degree to the opponent’s non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals in Class 8 as they usually coincide in producer, distribution channel, end user and, in the broadest sense, overall purpose of domestic use in relation to food.

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, similar to a high degree and similar to a low degree are directed at the public at large and business customers such as restaurant owners. 

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

3. The signs

Kitchenist	KitchenHit
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).

In the present case, the Opposition Division finds it appropriate, in order to remove the need to examine the specific meaning (or lack thereof) and the distinctive elements of the marks (and their elements/components) for different parts of the relevant public, to focus the comparison of the signs on the Bulgarian-speaking part of the relevant public, who will perceive the signs as meaningless.

The earlier sign is a word mark consisting of the single element ‘Kitchenist’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. The element ‘Kitchenist’ is distinctive as it does not have a meaning in relation to the relevant goods.

The contested sign is a word mark consisting of the single element ‘KitchenHit’. The element ‘KitchenHit’ is distinctive as it does not have a meaning in relation to the relevant goods.

Visually and aurally, the signs coincide letters (and sound of) ‘Kitchen**t’. The signs differ merely in the letters ‘*******is*’ (earlier sign) versus ‘*******Hi*’ (contested sign).

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 relevant part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical, similar and similar to a low degree to the opponent’s goods. The signs have been found visually and aurally highly similar. The coincidences between the signs are found in the letters ‘Kitchen**t’ with the difference being somewhat hidden in the said shared sequence of letters. The differences are not sufficient to offset the similarity between the signs.

Furthermore, account is 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 530 604. This applies even in regards to the goods that were found to be similar to a low degree due to the overwhelming similarities between the signs. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 530 604. It follows that the contested trade mark must be rejected in its entirety.

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

Irina SOTIROVA

André Gerd Günther BOSSE

Judit NEMETH

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.