OPPOSITION No B 2 640 517

BWT Aktiengesellschaft, Walter-Simmer-Str. 4, 5310 Mondsee, Austria (opponent), represented by Sonn & Partner Patentanwälte, Riemergasse 14, 1010 Wien, Austria (professional representative)

a g a i n s t

Nikles Tec Italia S.R.L., Via Alessandro Volta 2, 25013 Carpenedolo (Brescia), Italy (holder), represented by Jacobacci & Partners S.P.A., Piazza della Vittoria 11, 25122 Brescia, Italy (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 640 517 is upheld for all the contested goods.

2.        International registration No 1 254 794 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 254 794. The opposition is based on European Union trade mark registration No 2 341 733. 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.

1. The goods

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

Class 11:        Filters and filtering apparatus for water treatment and water conduit installations.

The contested goods are the following:

Class 11:        Water distribution apparatus and sanitary installations; bath fittings and bath installations; taps [faucets]; mixer taps; shower enclosures and shower systems; shower heads and shower hoses.

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 water distribution apparatus and sanitary installations; bath fittings and bath installations; taps [faucets]; mixer taps; shower enclosures and shower systems; shower heads and shower hoses are similar to the opponent’s filters and filtering apparatus for water treatment and water conduit installations. These goods have the same commercial origin, are distributed through the same channels and target the same consumers. Furthermore, some of the goods are complementary, such as taps [faucets]; mixer taps; shower heads and shower hoses and filters and filtering apparatus for water treatment and water conduit installations.

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 similar 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, in relation to cheap goods, to high, in relation to those goods that are technically advanced, expensive and imply sophistication on the part of the public.

3. The signs

INFINITY
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘INFINITY’.

The contested sign is a figurative mark that is made up of three conjoined elements. These include the two verbal elements ‘In’ and ‘inity’. Between these elements is a perpendicular infinity symbol.

The earlier mark will be perceived by the relevant public as meaning ‘a point that is further away than any other point and can never be reached‘ and ‘a number that is larger than any other number and can never be given an exact value’ (information extracted from Collins English Dictionary online on 29/03/2017 at https://www.collinsdictionary.com/dictionary/english/infinity). The contested sign conveys the same meaning, although it does not contain the letter ‘F’, because it will be obvious to the relevant public that this letter has been replaced with the infinity symbol. As the signs are not descriptive, allusive or otherwise weak with respect to the relevant goods, they are distinctive.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as conveying the same concept, the signs are conceptually identical.

Visually, the signs coincide in the letters ‘IN*INITY’. However, they differ in the letter ‘F’ of the earlier mark and in the infinity symbol of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, the relevant public will pronounce the contested sign as ‘INFINITY’ due to the conceptual meaning of the sign. Therefore, the signs are aurally identical.

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs are visually similar to an average degree, and aurally and conceptually identical. The goods are similar. They target the public at large and business customers with specific professional knowledge or expertise and the degree of attention varies from average to high.

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), even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 341 733. It follows that the contested trade mark must be rejected for all the contested goods.

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(1)(a)EUTMR.

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 holder 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

Katarzyna ZANIECKA

Alexandra APOSTOLAKIS

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.