OPPOSITION No B 2 730 763

Klinkmann Trade Oy, Fonseenintie 3, 00370 Helsinki, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Ningbo Klinsmann Intelligent Technology Co. Ltd.,  No. 377 Yayuan South Road Shiqi Street, Yinzhou Ningbo, Popular 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 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 763 is partially upheld, namely for the following contested goods:

Class 9: Computers; counters; photocopiers [photographic, electrostatic, thermic]; weighing machines; measures; signal lanterns; telephone apparatus; television apparatus; cameras [photography]; measuring apparatus; optical apparatus and instruments; materials for electricity mains [wires, cables]; semi-conductors; electrolysers; fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; alarms; spectacles [optics]; batteries, electric.

Class 11: Lamps; oil lamps; cooking apparatus and installations; kitchen ranges [ovens]; kettles, electric; microwave ovens [cooking apparatus]; food steamers, electric; refrigerators; freezers; air conditioning installations; air purifying apparatus and machines; hair driers [dryers]; boilers, other than parts of machines; heating apparatus; taps [faucets]; bath installations; disinfectant apparatus; water purification installations; radiators, electric.

2.        European Union trade mark application No 15 206 411 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 some of the goods of European Union trade mark application No 15 206 411 namely against all the good in Classes 9 and 11. The opposition is based on, European Union trade mark registration No 13 691 647. 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 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; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer networking and data communications equipment; electric and electronic components; measuring, detecting and monitoring instruments, indicators and controllers; software for industrial automation systems and industrial data transfer; energy control and energy measurement systems; production management systems and software.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; parts and fittings for the afore mentioned goods.

The contested goods are the following:

Class 9: Computers; counters; photocopiers [photographic, electrostatic, thermic]; weighing machines; measures; signal lanterns; telephone apparatus; television apparatus; cameras [photography]; measuring apparatus; optical apparatus and instruments; materials for electricity mains [wires, cables]; semi-conductors; electrolysers; fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; alarms; spectacles [optics]; batteries, electric.

Class 11: Lamps; oil lamps; cooking apparatus and installations; kitchen ranges [ovens]; kettles, electric; microwave ovens [cooking apparatus]; food steamers, electric; refrigerators; freezers; air conditioning installations; air purifying apparatus and machines; hair driers [dryers]; boilers, other than parts of machines; heating apparatus; taps [faucets]; bath installations; disinfectant apparatus; water purification installations; radiators, electric; lighters.

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

Computers, weighing machines; measuring apparatus; optical apparatus and instruments; life saving apparatus and equipment are identically contained in both lists of goods (including synonyms).

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

The contested signal lanterns; alarms are included in the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested spectacles [optics] are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested fire extinguishers are included in the broad category or the opponent’s fire-extinguishing apparatus. Therefore, they are identical.

The contested photocopiers [photographic, electrostatic, thermic] are included in the broad category of the opponent’s apparatus for transmission, reproduction of images. Therefore, they are identical.

The contested telephone apparatus are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

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

The contested cameras [photography] are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested materials for electricity mains [wires, cables]; semi-conductors are included in the broad category of the opponent’s electric and electronic components. Therefore, they are identical.

The contested batteries, electric are included in the broad category of the opponent’s apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested electrolysers are included in the broad category of the opponent’s apparatus and instruments for conducting electricity as it refers to the process of passing a current through a liquid. Therefore, they are identical.

Radiological apparatus for industrial purposes are equipment where many types of manufactured components can be examined to verify the internal structure and integrity of a specimen through radiological images using X-rays or gamma rays.   Optical apparatus and instruments either process light waves to enhance an image for viewing or analyse light waves (or photons) to determine one of a number of characteristic properties. The contested radiological apparatus for industrial purposes are considered similar to the opponent’s optical apparatus and instruments because, these goods are concerned with capturing images, they may come from the same undertakings and be distributed over the same channels.

Contested goods in Class 11

Cooking apparatus and installations; heating apparatus are identically contained in both lists of goods (including synonyms).

The contested lamps; oil lamps are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested kitchen ranges [ovens]; kettles, electric; microwave ovens [cooking apparatus] are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested food steamers, electric are included in the broad category of the opponent’s apparatus for steam generating. Therefore, they are identical.

The contested refrigerators; freezers are included in the broad category of the opponent’s apparatus for refrigerating. Therefore, they are identical. 

The contested air conditioning installations are included in the broad category of the opponent’s apparatus for ventilating. Therefore, they are identical.

The contested air purifying apparatus and machines are highly similar to the opponent’s apparatus for refrigerating and ventilating. Indeed, air purifying apparatus and machines work on the basis of ventilation and refrigeration of the air. Both sets of products aim at modifying the condition of the air. These apparatus have the same nature and purpose. They are usually manufactured by the same undertakings and sold through the same distribution channels. The above mentioned goods are therefore highly similar.

The contested hair driers [dryers] are included in the broad category of the opponent’s apparatus for drying. Therefore, they are identical.

The contested boilers, other than parts of machines; radiators, electric are included in the broad category of the opponent’s apparatus for heating. Therefore, they are identical. 

The contested taps [faucets]; bath installations; water purification installations are included in the broad category of the opponent’s apparatus for water supply and sanitary purposes. Therefore, they are identical.

The contested disinfectant apparatus are included in the broader category of the opponent’s apparatus for sanitary purposes. Indeed, the earlier goods are relating to the conditions that affect hygiene and health, especially the supply of sewage facilities and clean drinking water which includes the disinfectant apparatus. Therefore, they are identical.

The contested lighters are igniters which have nothing in common with any of the opponent’s goods in Classes 9 and 11. Their nature, purpose, producers, end-users and distribution channels are different. These goods are neither in competition nor complementary. Neither has the opponent adduced any specific arguments or evidence that would explain why these goods are similar and in the absence of any relevant points of contact, therefore, these goods are dissimilar.

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 professional knowledge and expertise in the field of electrical equipment, optical apparatus or injury prevention for example.  

The degree of attention may vary from average to high, depending on, the frequency of purchase, their price, the type or level of technological sophistication of the goods (computer, cameras [photography]) and the fact that the applicant’s life-saving apparatus and instruments are related to saving somebody’s life in dangerous, harmful or unpleasant situations.

3. The signs

KLINKMANN
Earlier trade mark	Contested sign

The relevant territory is 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 two marks will be associated by part of the relevant public as referring to surnames. As these surnames are not descriptive, allusive or otherwise weak for the relevant goods, they are considered distinctive. They are also distinctive for the rest of the public for which ‘KLINKMANN’ and ‘KLINSMANN’ will be perceived as meaningless.

Visually and aurally, the signs coincide in the letters/sounds ‘KLIN(-)MANN’. However, they differ in one letter/sound ‘K’ in the earlier mark and ‘S’ in the contested sign. The marks further differ in the slight stylisation of the verbal element of the contested sign, which is however rather standard and not able to take away the attention from the verbal element. Since the signs are relatively long marks (9 letters each) which have common beginnings, common endings and only differ in one letter in the middle which easily could go unnoticed, they are therefore, visually and aurally highly similar.

Conceptually, regarding the part of the public who see the signs as surnames, the signs will be perceived as different surnames and are therefore not conceptually similar. For the part of the public who do not see the signs as surnames but as meaningless fanciful terms, a conceptual comparison is not possible and 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 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

All the contested goods except “lighters” in class 11 have been found identical or similar to the opponent’s goods. They are directed both at the public at large and business customers, whose degree of attention will vary from average to higher than average depending on the goods.

The signs are visually and aurally highly similar. For part of the relevant public they are not conceptually similar, for another part of the public the conceptual comparison remains neutral.

It is the contention of the Opposition Division that the differences between the signs will go largely unnoticed: one letter in the middle does very little to assist in distinguishing between the marks.

In this regard, account is 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). Even consumers who pay 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).

Consequently, the relevant consumer is likely to confuse the marks, even taking account of the higher degree of attention paid to some of the goods at issue. The differences between the signs are simply not enough to outweigh the clear similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

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

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

Saida CRABBE

Lucinda CARNEY

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.