OPPOSITION No B 2 812 850

Hyundai Corporation, 25, Yulgok-Ro 2-Gil, Jongno-Gu, Seoul, Republic of Korea  (LA) (opponent), represented by Cabinet Le Guen  Maillet, 5, place Newquay, B.P. 70250, 35802 Dinard Cédex, France (professional representative)

a g a i n s t

Shenzhen Hongda Shun Technology Development Co. Ltd, Rm 402, 4th FL XinLiDa Industrial Area, Jun Xin Road, Guanlan, New District of Longhua, Shenzhen, People’s Republic of China (applicant), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative)

On 10/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 789 603 is upheld for all the contested goods.

2.        European Union trade mark application No 15 741 432 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all of the goods of European Union trade mark application No 15 741 432 figurative trade mark:

The opposition is based on, inter alia, Danish trade mark registration No VR 2015 02066, Finnish trade mark registration No 265 759 and United Kingdom trade mark registration No 3 104 546, all for the figurative trade mark:

The opponent invoked Article 8(1)(a) EUTMR.

Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR that requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

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 Danish trade mark registrations No VR 2015 02066, Finnish trade mark registration No 265 759  and United Kingdom trade mark registration No 3 104 546.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Danish trade mark registration No VR 2015 02066

Class 8: Manual tools (manual); electric iron; electric apparatus for depilation; electric hair straighteners; electrical hair trimmers; shavers; hair clippers (electrically or non-electric); hand operated multi-purpose tools.

United Kingdom trade mark registration No 3 104 546

Class 8: Tree pruners, Augers (hand tools), Screw-thread cutters (hand tools), Budding knives, Axes, Drills, Milling cutters (hand tools), Bits (hand tools), Adzes (tools), Border shears, Glass cutters, Pruning scissors, Pruning knives, Cutting tools (hand tools), Graving tools (hand tools), Punches (hand tools), Blades (hand tools), Shears, Hand drills (hand tools), Tool belts (holders), Drivers, Ratchets (hand tools), Wrenches, Riveters, Nail drawers (hand tools), Nail extractors, Nail punches, Adjustable spanners, Mitre boxes (hand tools), Iron hammers, Hand tools (hand operated), Spanners (hand tools), Cutting pliers (linemans pliers), Sledgehammers, Pliers, Hammers, Chisels, Planes, Jigsaws, Files (tools), Saws (hand tools), Lawn clippers (hand instruments), Hand pallet truck, Hand chain block, Drill bit, Electric iron, Electric epilator, Electric hair straighter, Electric hair trimmer, Electric shaver, Hair clippers (electric or non-electric).

Finnish trade mark registration No 265 759

Class 11: Air conditioning apparatus; aerocondensers; air purification apparatus; bidets; radiators; dehumidifiers; electric fans; electric fires; electric stoves; electric stoves; freezers; gas-powered heating apparatus; gas ovens and cookers; dampers; laundry drying apparatus; microwave ovens; oil stoves; radiators; hoods kitchens cooker fans; refrigerators; sterilisers; fans; water dispensers; water heating apparatus; water purifying apparatus; …….  illumination apparatus; metal halide lamps; lamps lighters and chokes; electric light bulbs; road lights; safety lamps; neon lamps; lanterns; discharge lamps and therefor holders; ultraviolet lamps; chandeliers; water exterior lamps; aquarium lights; arc lamps; infrared lamps; precise lamps; ceiling lights; floodlights; solar lights; showers; gas boilers; household boilers; heating apparatus heat water immediate for dispensing; hot without heating apparatus; hot water heating installations; gas refrigerators; cooling apparatus

The contested goods are the following:

Class 8: Hand tools, hand-operated; garden tools, hand-operated; manicure sets; screwdrivers; extension pieces for braces for screw taps; tweezers; table cutlery [knives, forks and spoons]; fingernail polishers, electric or non-electric; hand implements for hair curling; pliers; shearers [hand instruments]; irons [non-electric hand tools]; hand pumps; graving tools [hand tools].

Class 11: Lamps; light-emitting diodes [LED] lighting apparatus; lighting apparatus for vehicles; fairy lights for festive decoration; cooking apparatus and installations; cooling appliances and installations; air conditioning installations; air cooling apparatus; drying apparatus and installations; heating apparatus; radiators [heating]; bath installations; disinfectant apparatus; radiators, electric; Stage lighting apparatus.

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

The contested hand tools, hand-operated are identically reproduced in the earlier mark’s list of goods and in the list of the contested goods.

The opponent’s tree pruners are included in the contested broad category of garden tools hand-operated. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested manicure sets; fingernail polishers, electric or non-electric are defined as (sets of) small tools designed for trimming and caring for the nails. Therefore, these goods are included in the opponent’s category of manual tools (manual) and thus identical.

The contested screwdrivers; tweezers; pliers; shearers [hand instruments]; hand pumps; graving tools [hand tools] are all small tools included in the opponent’s broad category of hand tools (hand operated). Therefore, these goods are identical.

The opponent’s cutting tools include items such as kitchen knives and pizza cutters generally made of stainless steel, which require the same manufacturing techniques as in the production of the contested table cutlery [knives, forks and spoons]. Therefore, often the producers of these goods are the same; they are certainly found in the same shops and target the same public. Also they share the same method of use. It follows that these goods are similar.

The contested extension pieces for braces for screw taps are complementary parts for a tool for making female screws. Consequently, these goods target the same public as the opponent’s hand tools (hand operated), follow the same distribution channels and are sold in the same specialized shops. It follows that these goods are similar.

The contested hand implements for hair curling can be produced by the same manufacturer as the opponent’s electric hair straighter. These goods, moreover, target the same public and have the same purpose of styling hair. They can be bought in the same shops. These goods are, therefore, similar.

The contested irons [non-electric hand tools] and the opponent’s electric iron have a different nature, but they can be produced by the same companies. They target the same public and can be obtained in the same shops. Their purpose of making clothes smooth is, moreover, the same. Consequently, these goods are similar.

Contested goods in Class 11

The contested lamps; light-emitting diodes [LED] lighting apparatus; lighting apparatus for vehicles; fairy lights for festive decoration; stage lighting apparatus are included in the opponent’s broad category of illumination apparatus. Therefore, these goods are identical.

The opponent’s gas ovens and cookers are included in the contested broad category of cooking apparatus and installations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Air conditioning apparatus appear in both lists of goods and also include the contested air cooling apparatus. Therefore, these goods are identical.

The opponent’s cooling apparatus are included in the contested broad category of cooling appliances and installations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s laundry drying apparatus are included in the contested broad category of drying apparatus and installations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested heating apparatus include as a broad category the opponent’s electric stoves. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested radiators [heating] and radiators, electric are identical to the opponent’s radiators.

The opponent’s showers are included in the contested broad category of bath installations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s sterilisers and the contested disinfectant apparatus are synonyms and therefore identical.

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.

The degree of attention may therefore vary from average to high.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Earlier trade marks	Contested sign

The relevant territories are Denmark, Finland and the United Kingdom.

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 ‘HYUNDAI’ in a black bold rather standard typeface. The contested sign is a figurative mark composed of a geometrical shape depicted above the word element ‘HUNDA’ in a standard typeface. Both signs have no meaning for the relevant public in relation to the relevant goods. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of the letters ‘H*UNDA*’, which makes up the word element of the contested sign. They differ in the second letter ‘Y’ and last letter ‘I’ of the earlier mark and the geometrical shape of the contested sign, which has no counterpart in the earlier mark.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘H*UNDA*‘, present identically in both signs. The pronunciation differs in the sound of the second letter ‘Y’, when pronounced, like for the English speaking public. For the other part of the public this vowel is silent in the pronunciation of ‘HYUNDAI’. The pronunciation also differs in the diphthong ‘AI’ of the earlier mark.

Therefore, on account of five coinciding letters out of seven the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for 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 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 goods have been found identical or similar to the opponent’s goods.  

In the present case, as stated in point b) above, the Opposition Division bases its examination on the general public which is more prone to confusion and whose degree of attention is average.

The signs are visually and aurally similar to an average degree. As a conceptual comparison is not possible, the conceptual aspect has no influence on their similarity. The earlier mark enjoys a normal degree of distinctive character. The differentiating letters of the earlier mark do not alter the pronunciation in such a significant way that the relevant consumer could easily distinguish between the two signs.

Account is also 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).

It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). The relevant consumer will refer to the contested sign as ‘HUNDA’ as it has a stronger impact than the geometrical device. This is particularly relevant when, as in the present case, the signs have no concept that could serve to deflect consumers’ attention from the letters and sounds that the marks have in common.

It must also be stressed that most of the goods are identical, which brings into consideration the principle of interdependence, whereby a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services and vice versa, which applies in this case.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the professional part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Danish trade mark registration No VR 2015 02066, Finnish trade mark registration No 265 759 and United Kingdom trade mark registration No 3 104 546. It follows that the contested trade mark must be rejected for all the contested goods.

As these earlier rights lead 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).

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

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Ferenc GAZDA

Cynthia DEN DEKKER

Ioana MOISESCU

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.