OPPOSITION No B 2 689 845

EOS Saunatechnik GmbH, Schneiderstriesch 1, 35759 Driedorf, Germany (opponent), represented by Advotec. Patent- Und Rechtsanwälte, Georg-Schlosser-Str. 6, 35390 Giessen, Germany (professional representative)

a g a i n s t

Christophe Fiève, 55 bis allée Guy Mocquet, 94170 Le Perreux Sur Marne, France and Morgan Adeneuer, 3 Rue du General de Gaulle, 95220 Herblay, France (applicants), represented by Yannick Normand, 74 rue de Rome, 75008 Paris, France (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 845 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 058 605. The opposition is based on European Union trade mark registration No 5 432 075. 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 and services on which the opposition is based are the following:

Class 7: Machines and machine tools, other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; pumps for heating installations.

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors; buckets, scoops.

Class 9: Nautical, surveying, weighing, signalling, life-saving and teaching apparatus and instruments; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, computers; fire-extinguishing apparatus; dimmers (light regulators) for saunas, infrared cabins and wellness installations; light conducting filaments (optical fibres); hydrometers; sauna control apparatus; thermometers; sauna thermometers; hygrometers; sauna hygrometers; all the aforesaid goods other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening.

Class 10: Dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; electric blankets for medical purposes; heating pads for medical purposes; air cushions for medical purposes; thermometers for medical use; massage apparatus; esthetic massage apparatus; gloves for massage; vibro massage apparatus.

Class 11: Apparatus for lighting for saunas, infrared cabins and wellness installations, apparatus for steam generating, cooking, refrigerating, drying, ventilating and water supply, the aforesaid goods other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening, and sauna installations; ovens; heaters for baths; loading apparatus for furnaces; kiln furniture (supports); coolers for furnaces; oven linings; structural plates for ovens; furnace linings; furnace linings made from fireclay; furnace grates; incinerators; solar furnaces; evaporators; feeding apparatus for heating boilers; flues for heating boilers; boiler pipes [tubes] for heating installations; steam heating equipment; water-heating installations; humidifiers for central heating radiators; air deodorizing apparatus; fans for personal use; air heaters; coils (parts for distillation, heating or refrigerating installations), other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening; solar collectors for heating apparatus; water heating installations; steam heating equipment; blankets, electric, not for medical purposes; electrically heated carpets; footmuffs, electrically heated; electric heating filaments; electric heating apparatus; aquarium heaters; heated cushions, not for medical purposes; heating apparatus for solid; liquid or gaseous fuels; heating elements; radiator caps; fan heaters; radiators (heating); hot plates; light diffusers; fans (air conditioning), all the aforesaid goods other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening; fans (parts of air-conditioning installations);air filters (air conditioning); air-conditioning installations; air-conditioning apparatus; filters for airconditioning; air filtering installations; ionization apparatus for the treatment of air; radiators, electric; radiators (heating);thermostatic valves, other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening; tanning apparatus; convectors; sauna stoves with fittings; light therapy apparatus; air-conditioning apparatus; oil filled radiators; steam facial apparatus (saunas).

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; ducts, not of metal, for ventilating and air-conditioning installations; cement for furnaces.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; massage tables; fireguards.

Class 37: Building construction; repair; installation services; installation and repair of furnaces; heating apparatus installation and repair; air-conditioning system installation and repair.

Class 40: Treatment of materials, other than for use in connection with, or for, components for the stratification of objects by means of selective thermal hardening; air freshening; air purification; air deodorising.

The contested goods and services are the following:

Class 11: Lighting and lighting reflectors; Heating, ventilating, and air conditioning and purification equipment (ambient).

Class 37: Building maintenance and repair; furniture maintenance and repair; alarm, lock and safe installation, maintenance and repair; lift and elevator installation, maintenance and repair; plumbing installation, maintenance and repair; hvac (heating, ventilation and air conditioning) installation, maintenance and repair; computer hardware and telecommunication apparatus installation, maintenance and repair; glazing, installation, maintenance and repair of glass, windows and blinds; conversion of shop premises; interior fitting-out of offices; interior fitting-out of company premises; installation of fire performance coatings; application of coatings for the repair of walls; assembling [installation] of shelving; assembling [installation] of storage systems; advice relating to preventing blockages in plumbing lines; emergency servicing of apparatus for supplying electricity; routine servicing of refrigerating apparatus; maintenance of consumer electric appliances; maintenance of electronic apparatus; office equipment maintenance; maintenance of industrial machinery; maintaining and repair of rain channels; maintenance of commercial electrical systems; application of sheathing to cables; engine lubrication; installation of racks; installation of sanitary apparatus; installation of door fittings; installation of storage facilities; installation of pipe insulation; installation of fabricated construction units; installation of audiovisual equipment; office equipment installation; installation of security and safety equipment; installation of fixtures and fittings for domestic premises; furniture installation; installation of furniture for shops; installation of fitted furniture; installation of interior partitions for buildings; installation of motors; erection of signs; installation of coloured panels in building facias; installation of plumbing; installation of doors; installation of doors and windows; installation of plumbing systems; installation of rainwater harvesting systems; office machines and equipment installation, maintenance and repair; installation and maintenance of photovoltaic installations; freezing equipment installation and repair; electric appliance installation and repair; maintenance and repair of electronic installations; maintenance and repair of engines; providing information relating to the repair or maintenance of mechanical parking systems; septic tank cleaning; cleaning of industrial premises; cleaning of machines; carpet-laying; paper hanging; floor layering; fitting of floor coverings; tile laying, bricklaying or block laying; renovation, repair and maintenance of electrical wiring; repair of lighting apparatus; interior refurbishment of buildings; renovation of electrical wiring; renovation of machinery; repair of industrial machinery; repair of toilet bowls with integrated bidet water jets; repair of canalization systems; repair or maintenance of power generators; advisory services relating to the maintenance of buildings; servicing of conduits; maintenance and repair services relating to automatic door equipment; maintenance and repair services relating to door closers; information services relating to installation of security systems; security fencing (erection of -); installation of theft prevention devices; advisory services relating to the maintenance and repair of mechanical and electrical equipment; advisory services relating to the installation of passenger lifts; advisory services relating to the maintenance of fixings; electrical wiring services; advisory services relating to the installation of lighting apparatus; furniture restoration, repair and maintenance; coating services for the repair of industrial engineering plant; remedial services for wall coverings; remedial services for floor coverings.

Class 42: IT services; design services; science and technology services; engineering services; drafting and development of photovoltaic systems; technical drawing; research relating to technology; conducting of technical feasibility studies; research relating to security; industrial research.

Some of the contested goods, such as the contested heating equipment that includes as a broader category the opponent’s electric heating apparatus are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, their price or terms and conditions of the purchased goods and services.

3. The signs

EOS
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 ‘EOS’ might be recognized by a very small part of the relevant public as a character from the Greek mythology representing the goddess of the dawn. Moreover, the Estonian speaking-part of the public will also associate this word with ‘the beginning of something’ and ‘spores’ which are ‘cells produced by bacteria and fungi which can develop into new bacteria or fungi’. In any case, it has no meaning in relation to the goods and services at hand and therefore it is considered distinctive.

As regards the contested sign, it is composed of a meaningless fanciful and therefore distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the public will pay more attention to this verbal element than the figurative element.

The signs have no elements that could be considered clearly more dominant than other elements, the earlier mark because it consists of only one element and in the contested sign the elements are of more or less the same size.

Visually, the signs coincide in the letters ‘EOS’. However, they differ in the three additional letters placed at the end of the contested sign, namely ‘***GIE’ and in the blue figurative element placed in the front of that element. They also differ in the typeface, although relatively standard, used to represent the contested sign.

Thus when comparing the signs visually it is apparent that the contested sign has a different structure, length and graphic representation. In particular the different length of the signs is striking considering that the verbal element of the contested sign doubles the length of the earlier mark. In general, the shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in the present case the fact that the contested sign is much longer than the earlier mark leads to a different overall impression. In contrast, the public is less aware of differences between long signs. The additional figurative element of the contested sign, although weak and therefore of less impact, nevertheless further distinguishes the marks.

Consequently, the signs are visually similar to a low 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 ‘EOS’. However, considering the shortness of the earlier mark, it should be noted that even a small difference can have a great impact on the overall impression of the signs. Therefore, the similarity in the marks beginnings is decreased by the pronunciation of the different ending of the contested sign, ‘***GIE’, since it considerably modifies the rhythm and intonation of the signs.

Consequently, the signs are aurally similar to a low degree.

Conceptually, for the part of the public in the relevant territory that perceives the meanings of the earlier mark, as explained above, the signs are conceptually not similar since the other sign has no meaning.

Neither of the signs has a meaning for the rest of 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 and services 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

As mentioned in sections a) and c) of this decision, the goods and services are assumed to be identical and the signs are visually and aurally similar to a low degree. The conceptual comparison does not affect the assessment, for the part of the public that attributes no meaning to either mark. However, for the part of the public that does see a meaning in the earlier mark, they are not conceptually similar. Furthermore, as established above, the earlier mark enjoys a normal degree of distinctiveness.

Although there are similarities between the signs, they are confined to a string of letters that will not be dissected out from the contested sign since all of the letters in the contested sign are represented using the same typeface and the same colour, and in principle consumers tend to perceive a mark as whole.

Therefore, it is not likely that consumers, even those with an average degree of attention, would be misled as regards the commercial origin of the identical or similar goods in question merely because of the coincidence in a string of letters, the impact of which is diluted within the overall impressions that the marks convey.

Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Adriana VAN ROODEN

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.