OPPOSITION No B 2 528 597
Calor Gas Limited, Athena House, Athena Drive, Tachbrook Park, Leamington Spa, Warwick CV34 6RL, United Kingdom (opponent), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative)
a g a i n s t
Coswell S.p.A., Via P. Gobetti, 4, 40050 Funo di Argelato, Italy (applicant), represented by Porta, Checcacci & Associati S.p.A., Via Trebbia 20, 20135 Milano, Italy (professional representative).
On 19/06/2017, the Opposition Division takes the following
1. Opposition No B 2 528 597 is upheld for all the contested goods.
2. European Union trade mark application No 13 629 662 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 629 662. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 606 617. The opponent invoked Article 8(1)(b), Article 8(4) and Article 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 606 617.
PROOF OF USE
The applicant requested that the opponent provide proof of use of, inter alia, United Kingdom trade mark registration No 2 606 617; however, the request for proof of use concerning this mark cannot be taken into account because this trade mark, at the date of publication of the contested trade mark, had not been registered for at least five years. The parties were informed of this by the Office on 09/03/2016.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 1: Gases and gas mixtures; liquefied gases; aerosol propellants.
Class 4: Fuels; fuel gases; liquefied fuel gases; gases and gas mixtures; biogenic and renewable fuels; pellets; briquettes, biogas; wood-based fuels, firewood, kiln dried logs, seasoned logs, wood briquettes, straw briquettes, wood pellets, straw pellets, woodchip, kindling, firelighters, charcoal, biodiesel; fuels made from other biomasses.
Class 6: Containers for gas; valves; parts and fittings therefore.
Class 11: Apparatus for lighting, heating, steam generating, cooling, refrigerating, drying, ventilating, water supply and sanitary purposes; apparatus and installations for the supply of gas; gas powered and gas utilising apparatus, equipment and installations; apparatus and installations for heating, cooking, lighting, refrigerating, cooling and air conditioning, all being gas operated; apparatus for heating (including central heating) and cooking; gas stoves and cookers; wood burning stoves and cookers; solid fuel stoves; multi fuel stoves; solar heating apparatus; energy storage apparatus; biomass and biofuel powered heating and cooking apparatus; boilers; domestic boilers; boilers for heating systems; hot water boilers; gas pressure regulators and gas valves; parts and fittings for all the aforesaid goods.
Class 35: Business administration; advertising and marketing services; retail services connected with the sale of gases and gas mixtures, liquefied gases, aerosol propellants, fuels, fuel gases, liquefied fuel gases, gases and gas mixtures, biogenic and renewable fuels, pellets, briquettes, biogas, wood-based fuels, firewood, kiln dried logs, seasoned logs, wood briquettes, straw briquettes, wood pellets, straw pellets, woodchip, kindling, firelighters, charcoal, biodiesel, fuels made from other biomasses, containers for gas, valves, apparatus for lighting, heating, steam generating, cooling, refrigerating, drying, ventilating, water supply and sanitary purposes, apparatus and installations for the supply of gas, gas powered and gas utilising apparatus, equipment and installations, apparatus and installations for heating, cooking, lighting, refrigerating, cooling and air conditioning, all being gas operated, apparatus for heating (including central heating) and cooking, gas stoves and cookers, wood burning stoves and cookers, solid fuel stoves, multi fuel stoves, solar heating apparatus, energy storage apparatus, biomass and biofuel powered heating and cooking apparatus, boilers, domestic boilers, boilers for heating systems, hot water boilers; gas pressure regulators and gas valves, parts and fittings for all the aforesaid goods; advisory, consultancy and information services relating to all the aforesaid.
Class 36: Insurance services.
Class 37: Installation, maintenance, servicing and repair of gas containers and of gas supply, gas powered, gas operated and gas utilising apparatus and equipment; installation, maintenance, servicing and repair of apparatus and installations for heating, lighting, refrigerating, cooling, air conditioning and cooking; installation, maintenance, servicing and repair of boilers and parts and fittings therefore.
Class 39: Transportation and distribution of gas.
Class 42: Safety testing of gas containers and of gas powered, gas operated and gas utilizing apparatus, installations equipment and parts and fittings therefore; safety testing of apparatus and installations for heating, lighting, refrigerating, cooling, air conditioning and cooking and boilers and parts and fittings therefore.
The contested goods, after a limitation by the applicant on 29/09/2016, are the following:
Class 11: Pocket warmers.
The contested pocket warmers are included in or, depending on the meaning attributed to the concept of ‘apparatus’, overlap with the broader category of the opponent’s apparatus for heating. Therefore, they are identical.
The applicant argues that the opponent uses its trade mark in relation to goods that are different from those manufactured by the applicant. However, this argument is irrelevant for the comparison of the goods and it must be noted that, in order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b) EUTMR, the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s argument is rejected.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods.
- The signs
Earlier trade mark
The relevant territory is the United Kingdom.
The United Kingdom is the Member State where the earlier mark was registered; therefore, contrary to the applicant’s argument, the relevant territory cannot be Italy.
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 the word mark ‘CALOR’. Contrary to the applicant’s argument, this word has no meaning in English and the Opposition Division finds that a substantial part of the English-speaking part of the public will not understand the Latin meaning of this word. Therefore, this element has an average degree of distinctiveness in relation to the goods in question.
The contested sign is a figurative mark consisting of the verbal elements ‘CALOR’ and ‘POCKET’ and a figurative element. The verbal elements are written over two offset lines in bold upper case letters in a slightly stylised font. The word ‘CALOR’ is on the first line, placed slightly to the left and in blue, and the word ‘POCKET’ is below it, placed slightly to the right and in red. The device is made up of red concentric circles, with the inner circle being thicker than the outer circles, which consist of progressively thinner lines.
The verbal element ‘CALOR’ of the contested sign, as in the earlier mark, has an average degree of distinctiveness, as described above. The element ‘POCKET’ will be understood as, inter alia, describing something that is small enough to fit into a pocket, often something that is a smaller version of a larger item (Collins Dictionaries). This element will therefore be non-distinctive in relation to the goods in question, as it merely indicates that the goods are intended to be used in pockets. The figurative element is weak in relation to the goods in question, as the use of red and the idea of movement created by the concentric circles convey the concept of heat spreading, and it therefore merely reinforces the concept of something that warms. The contested sign has no elements that could be considered clearly more dominant than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Furthermore, consumers generally tend to focus on the initial verbal component of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the verbal element ‘CALOR’, which constitutes the entire earlier mark and the first and most distinctive verbal element of the contested sign. They differ in the verbal element ‘POCKET’ and the figurative element of the contested sign, which, however, are considered respectively non-distinctive and weak. They also differ in the colours and the stylisation of the contested sign.
Therefore, and taking into consideration the stronger impact of verbal elements and the importance of the initial verbal elements of the signs, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CALOR’, which make up the entire earlier mark and the first and most distinctive element of the contested sign. The pronunciation differs in the sound of the letters ‛POCKET’ in the contested sign, which have no counterparts in the earlier mark and which constitutes a non-distinctive element.
Therefore, and taking into consideration the importance of the beginning of the signs, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘POCKET’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys 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 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.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but 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). This is also true for consumers with a high degree of attention, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In the present case, the goods are identical. The earlier mark is assumed to have a normal distinctiveness and the relevant consumers’ degree of attention varies from average to high.
As regards the verbal elements of the signs, they differ in only a non-distinctive element, as explained above under section c) of this decision. The average consumer normally pays less attention to those elements in a trade mark that are non-distinctive and, consequently, consumers will focus on the coinciding element ‘CALOR’. As the figurative element of the contested sign is weak and its verbal elements have a stronger impact, the differences between the signs are clearly not sufficient to outweigh the high degree of visual and aural similarity between them and to exclude a likelihood of confusion. Considering consumers’ imperfect recollection, this is also the case for consumers with a high degree of attention.
In that regard, it has to be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant public, which rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have in common the element ‘CALOR’, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are identical.
The applicant submits that it has a prior Italian registration of an earlier version of the contested sign, which has expired. This prior registration is, however, irrelevant for the assessment of the likelihood of confusion between the signs in question.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘CALOR’. In support of its argument, the applicant refers to several trade mark registrations in Spain, Italy, Portugal, the European Union and Denmark.
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 ‘CALOR’. Under these circumstances, the applicant’s claims must be set aside. In addition, the relevant territory is the United Kingdom and therefore the registrations in Spain, Italy, Portugal and Denmark are irrelevant.
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 2 606 617. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier United Kingdom trade mark registration No 2 606 617 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.
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
Cecilie Leth BOCKHOFF
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.