OPPOSITION No B 2 676 867

Sanitärtechnik Eisenberg GmbH, In der Wiesen 8, 07607 Eisenberg, Germany (opponent), represented by Jan-David Hecht, Ranstädter Steinweg 28, 04109 Leipzig, Germany (professional representative)

a g a i n s t

GSI S.p.A., S.P. 150, km. 3,125, 01035 Gallese Scalo (VT), Italy (applicant), represented by Studio Tecnico Lenzi, Via Lucania 13, 00187 Roma, Italy (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 676 867 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 of European Union trade mark application No 14 913 537. The opposition is based on German trade mark registration No 39 918 342. 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 11: Flushing tanks, float valve, toilet seat, frame system, drain sets, floor drainage.

The contested goods are the following:

Class 11: Sanitary ware made of porcelain; Bidets; Toilet seat lids; Sanitary covers for toilet seats; Showers; Water closets; Wash-hand basins [parts of sanitary installations]; Sinks; Wash fountains; Washbasins; Urinals [sanitary fixtures]; Toilet seats; Toilet bowls; Bathtubs; Shower pans.

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.

The contested sanitary ware made of porcelain overlap with the opponent’s toilet seat. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Toilet seats are identically contained in both lists of goods.

The contested toilet seat lids; sanitary covers for toilet seats; water closets; toilet bowls are similar to a high degree to the opponent’s toilet seat, as all the goods are toilets or parts thereof. They have the same general purpose and are usually produced by the same undertakings. These goods are sold through the same distribution channels and target the same relevant public. Furthermore, they are complementary.

The contested bidets; showers; wash-hand basins [parts of sanitary installations]; sinks; wash fountains; washbasins; urinals [sanitary fixtures]; bathtubs; shower pans are similar to the opponent’s toilet seat, as they are also sanitary apparatus used in bathrooms for personal hygiene and are usually manufactured by the same undertakings out of the same materials. Furthermore, they target the same relevant public and they are sold in the same sections of specialised shops.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

	GSI Classic sanitary ware
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 consisting of the verbal element ‘CLASSIC’ written in fairly standard bold typeface, with the exception of its third letter, ‘A’, the central stroke of which is substituted by an inverted triangle.

The contested sign is a word mark consisting of the elements ‘GSI Classic Sanitary ware’. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether the contested word mark is written in upper or lower case or in a combination thereof.

The common element ‘Classic’ is a basic English word that refers to something of the highest class, something that serves as a standard or model of its kind or something that is characterised by simplicity, balance, regularity, and purity of form. In addition, it is very close to the equivalent words in the official language in the relevant territory, namely ‘Klassik’ (noun) and ‘Klassisch’ (adjective). Bearing in mind that the relevant goods are sanitary ware, this element is considered laudatory and, therefore, with less distinctive value.

The elements ‘sanitary ware’ are very close to the equivalent words in German ‘Sanitärware’ that mainly refer to the ceramic plumbing fixtures in a bathroom such as toilet bowls, cisterns, washbasins and other fittings. Therefore, the whole expression ‘Classic Sanitary ware’ will be understood as a laudatory slogan in connection with the relevant goods that are sanitary ware and will, thus, have less distinctive character than the verbal element ‘GSI’, which has no meaning for the relevant public and is, therefore, distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters and sounds of the word element ‘Classic’, which is, however, placed in the second position of the various verbal elements of the contested sign. Furthermore, this similarity between the signs loses weight as this verbal element is laudatory or forms part of a laudatory slogan in the confronted marks. The signs differ in the distinctive verbal element ‘GSI’, which will be pronounced as an acronym, placed at the forefront of the contested mark, and in the remaining components of the laudatory slogan of this sign, namely ‘sanitary ware’. Therefore, the signs have different structures and lengths. Furthermore, the signs differ in the slight stylisation of the earlier mark, as described above.

Therefore, weighing up all the factors, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar laudatory meaning with a limited distinctiveness, the signs are conceptually similar to a low 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for the goods in question.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

It has been established in section a) of this decision that the contested goods are considered partly identical and partly similar to varying degrees to the opponent’s goods.

On the other hand, according to the Common Practice, when the marks share an element with low distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. Therefore, the present assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components.

In this regard, a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. In the present case, it has been concluded that the signs are visually, aurally and conceptually similar only to a low degree to the extent they coincide in the laudatory element ‘Classic’, which is the only verbal element of the earlier mark and forms part of a slogan with a weak distinctive character in the contested sign. It must be also observed that the differing distinctive letters and sounds ‘GSI’ appear at the beginning of the contested sign, which is generally given more importance and, therefore, will be readily noticed by the relevant public.

Even considering that an average degree of attention will be displayed when purchasing the goods, as well as taking into account that some are identical, the striking differences between the signs are sufficient to counteract these factors.

The opponent claims that it is established case law that adding a company name to the sign of an earlier trade mark will lead to a likelihood of confusion and cites judgment of 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594. However, it should be pointed out that in that case, the Court concluded that ‘where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein’ (emphasis added). However, taking into account what has been stated above regarding the distinctiveness of the common verbal element ‘Classic’, the Opposition Division considers that the case referred to by the opponent is not relevant to the present case and, therefore, the opponent’s claim must be rejected.

Considering all the above, 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.