OPPOSITION No B 2 751 694

Alfa Seleco S.L., Calle Piedrafita, 20, 28947 Fuenlabrada (Madrid), Spain (opponent), represented by Salvador Saura Cuadrillero, Ayala, 83, 28006 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Guli Technology Co., Ltd., 10B, Bldg. E4, TCL International E City, No. 1001, Zhongshanyuan Rd., Xili St., Nanshan Dist., Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 751 694 is partially upheld, namely for the following contested goods:

Class 9:        Computer peripheral devices; pedometers; scales; cabinets for loudspeakers; radios; air analysis apparatus; cables, electric; sockets, plugs and other contacts [electric connections]; remote control apparatus; chargers for electric batteries.

Class 11:        Lighting apparatus and installations; cooling installations and machines; air conditioning installations; disinfectant apparatus; radiators, electric; bed warmers; lighters; torches for lighting; lighting apparatus for vehicles.

2.        European Union trade mark application No 15 377 757 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 377 757. The opposition is based on European Union trade mark registrations No 10 011 567, No 10 164 192 and No 11 773 652. The opponent invoked Article 8(1)(a) and (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.

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 European Union trade mark registration No 10 011 567.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 6:        Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores; Expressly not including self-locking nuts and screws.

Class 7:        Machines and machine tools; Tools (parts of machines); Hand tools, other than hand-operated; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles).

Class 8:         Hand tools and implements (hand-operated); Cutlery; Side arms; Razors.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 19:        Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 35:        Advertising and marketing; franchising relating to business management assistance; Commercial management assistance in relation to franchising; Business management consultancy in relation to franchises; Commercial and industrial management assistance; Providing business and marketing information; Marketing studies; Business administration; Consultancy with regard to handling commercial transactions; Consultancy in respect of business managment assistance; Shop-window dressing; Demonstration of goods; Dissemination of advertisements; Dissemination of advertising matter; Dissemination of advertising for others via the Internet; Auditing; Market research; Management of computerised files; Business management consultancy; Agency services, sole agencies; Commercial management of the licensing of goods and services for others; Business organisation consultancy; Import-export agencies; Retailing and wholesaling in shops and via global computer networks of common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, machines and machine tools, tools (parts of machines), hand-held tools, other than hand-operated, motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles), hand tools and implements (handoperated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, building materials (non-metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal.

The contested goods are the following:

Class 9:        Computer peripheral devices; Pedometers; Scales; Cabinets for loudspeakers; Radios; Air analysis apparatus; Cables, electric; Sockets, plugs and other contacts [electric connections]; Remote control apparatus; Chargers for electric batteries.

Class 11:        Lighting apparatus and installations; Cooling installations and machines; Air conditioning installations; Gas scrubbing apparatus; Disinfectant apparatus; Radiators, electric; Bed warmers; Lighters; Torches for lighting; Lighting apparatus for vehicles.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 9

The contested computer peripheral devices overlap with the opponent’s data processing equipment insofar as both categories include devices for reproduction of images on monitors or screens. Therefore, they are identical.

The contested pedometers are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested scales are included in the broad category of the opponent’s weighing apparatus and instruments. Therefore, they are identical.

The contested radios are included in the broad category of the opponent’s apparatus for transmission of sound. Therefore, they are identical.

The contested air analysis apparatus overlaps with the opponent’s measuring apparatus and instruments insofar as both categories include air quality measuring devices. Therefore, they are identical.

The contested cables, electric; sockets, plugs and other contacts [electric connections]; chargers for electric batteries are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested remote control apparatus overlaps with the opponent’s apparatus for recording, transmission or reproduction of sound or images insofar as both categories include remote control devices for audio-visual equipment. Therefore, they are identical.

As for the contested cabinets for loudspeakers, like the opponent’s apparatus for the reproduction and transmission of sound, they serve to house parts of an apparatus that produces sound or music. They have the same purpose, can be manufactured by the same producers and have the same distribution channels. These goods are, thus, similar.

Contested goods in Class 11

The contested lighting apparatus and installations include, as a broader category, the opponent’s apparatus for lighting. Similarly, the contested cooling installations and machines include the opponent’s apparatus for refrigerating. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested air conditioning installations overlap with the opponent’s apparatus for ventilating. Therefore, they are identical.

The contested disinfectant apparatus overlaps with the opponent’s apparatus for water supply and sanitary purposes. Therefore, they are identical.

The contested radiators, electric; bed warmers are included in the broad category of the opponent’s apparatus for heating. Therefore, they are identical.

The contested lighters; torches for lighting; lighting apparatus for vehicles are included in, or overlap with, the opponent’s apparatus for lighting. Therefore, they are identical.

The contested gas scrubbing apparatus refers to industrial gas purification installations; these goods have nothing relevant in common with the opponent’s goods in Class 11, even though some of the opponent’s goods relate to the treatment of air. This is because the method of use and the purpose, that of gas cleaning and purification, of the contested gas scrubbing apparatus differ from those of the opponent’s goods in Class 11, given that the contested goods are basically pollution control devices used to remove certain particulates and/or gases from industrial exhaust streams. It follows that the nature, purpose, producers, relevant public and distribution channels of the goods under comparison are different. These goods are neither in competition nor complementary. Therefore, these goods are dissimilar.

The opponent’s goods of common metal not included in other classes; expressly not including self-locking nuts and screws in Class 6 and machines in Class 7, due to the vagueness of the terms, cannot be construed as being related to gas scrubbing apparatus, since the purpose, qualities and methods of use of the goods are not expressly identified in the specification. In the absence of an express limitation clarifying the term, the natural meaning of goods of common metal not included in other classes in Class 6 and machines in Class 7 cannot be ascertained, and the goods are considered not similar.

The rest of the opponent’s goods in Classes 6, 7, 8, 9 and 19 are also dissimilar to the abovementioned contested goods, since they do not have the same nature, purpose, method of use or usual origin. Furthermore, they are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other.

As regards the opponent’s services in Class 35, they are essentially business support services rendered for others to help them run their businesses or to help in launching a product or expanding market share, etc., and retail and wholesale services concerning various goods.

The opponent’s retail and wholesale services and the contested gas scrubbing apparatus in Class 11 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesale refers to the sale of commodities in quantity, usually for resale. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services and internet shopping services in Class 35.

Therefore, the contested gas scrubbing apparatus is dissimilar to all the opponent’s goods and services.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. As the degree of specialisation of these goods, as well as their cost, may vary significantly (from pedometers in Class 9 to air conditioning installations in Class 11), it is considered that the degree of attention may also vary from average to high.

3. The signs

GULI
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign is a figurative mark composed of the word ‘GULI’ followed by the word ‘kit’ in a smaller and lighter typeface, which makes it less conspicuous than the element ‘GULI’. The word ‘kit’ will be understood by the English-speaking part of the public as a set or collection of tools, supplies, instructional matter, etc., for a specific purpose (information extracted from Dictionary.com on 16/06/2017 at http://www.dictionary.com) and is therefore non-distinctive for the relevant goods.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘GULI’, present in both marks, has no meaning for the relevant public. This word will be perceived as a whole without any identifiable components. It is distinctive to an average degree in respect of the relevant goods.

In the contested sign, the word ‘GULI’ is the most eye-catching and therefore the dominant element.

Visually, the signs coincide in the word ‘GULI’, which is distinctive for both marks, and they differ only in the secondary and non-distinctive word ‘kit’ of the contested sign. The fact that the contested sign is a figurative mark does not have an impact on the similarity between the element ‘GULI’ in the two signs, as the grey typeface in which it is depicted in the contested sign is fairly standard.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘GULI’, present identically in both signs, and differs in the sound of the non-distinctive word ‘kit’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the contested sign contains the meaningful element ‘kit’, this non-distinctive concept is incapable of establishing any difference between the signs. The attention of the relevant public will be attracted by the additional fanciful word, which has no meaning. Therefore, 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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services; the degree of attention varies from average to high, and the earlier mark has an average degree of inherent distinctiveness. The signs are visually and aurally similar to a high degree, without this impression being altered by any relevant conceptual difference.

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 a new product line or to endow a trade mark with a new, fashionable image.

The Opposition Division considers that, because the signs contain the identical distinctive word ‘GULI’ and differ in the non-distinctive and secondary word ‘kit’ and the grey typeface of the contested sign, the relevant public (whether the public at large or professionals, and even when displaying a higher than average degree of attention) is likely to believe that the identical or similar goods at issue originate from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 011 567. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 10 164 192 for the word mark ‘GULI PLATINUM LED’ and on European Union trade mark registration No 11 773 652 for the figurative sign.

The other earlier rights invoked by the opponent cover the same or a narrower scope of the goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

As regards the remaining, dissimilar, goods, there is no need to proceed with a comparison of the signs for the remaining part of the public in the relevant territory, as the outcome of the present decision would be the same.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Cristina CRESPO MOLTO

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.