OPPOSITION No B 2 664 392
Conrad Electronic SE, Klaus-Conrad-Str. 1, 92240 Hirschau, Germany (opponent), represented by Stippl Patentanwälte, Freiligrathstr. 7ª, 90482 Nürnberg, Germany (professional representative)
a g a i n s t
U. S. Steel Košice s.r.o., Vstupný areál U. S. Steel, 04454 Košice, Slovakia (applicant)
On 24/03/2017, the Opposition Division takes the following
1. Opposition No B 2 664 392 is upheld for all the contested goods.
2. European Union trade mark application No 15 071 897 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 071 897. The opposition is based on, inter alia, European Union trade mark registration No 10 898 435. 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.
- The goods and services
The goods and services on which the opposition is based are, inter alia, 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; Parts for the aforesaid goods, included in class 6; All the aforesaid goods not including barrels of metal, barrel racks of metal, taps for barrels of metal.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Light sources; Lighting devices for light sources (electric), Electric lamps, Flash lamps and Effect lamps, Low voltage neon-glow lamps, Incandescent lamps, Electric discharge lamps; Lighting apparatus utilising light emitting diodes (LEDs), Sockets for electric lights, Light-emitting diodes (LED lighting apparatus); Parts for the aforesaid goods, included in class 11.
Class 35: Advertising; Business management; Business administration; Office functions; Retailing and wholesaling in the fields of: chemicals, paints, pharmaceuticals, cosmetics and household goods, fuels, goods for the health sector, machines, tools, construction articles, DIY articles and garden articles, hobby requisites and craft supplies, electrical goods and electronic goods, computers, electronic data carriers, sound recording carriers and data carriers, sanitary installations, vehicles and vehicle accessories, fireworks, watches and jewellery, musical instruments, printed matter, stationery, office requisites, bag makers' goods and saddlery, furnishings and decorative articles, tents, awnings, tarpaulins, clothing, footwear and textile goods, toys, sporting goods, goods of common metal, not including barrels of metal, barrel racks of metal, taps for barrels of metal.
The contested goods are the following:
Class 6: Casings of metal; Architectural fasteners of metal; Cowls of metal; Metal brackets; Placards of metal.
Class 11: Evaporators; Heating units; Flat radiators for central heating installations; Control units [thermostatic valves] for heating installations; Industrial heating installations; Central heating boilers; Radiators [heating]; Hot air apparatus; Radiator valves [thermostatic]; Installations for central heating; Fireplaces; Heating apparatus for use in the home; Heating apparatus and installations; Cooling appliances and installations; Electric fans with evaporative cooling devices.
Class 35: Market campaigns; On-line promotion of computer networks and websites; Arranging of competitions for advertising purposes; Compilation, production and dissemination of advertising matter.
The applicant argues that the goods and services are not identical, as the opponent focuses on electronics and wholesale, and the applicant on convectional hot water radiators and heating units. In this respect it must be pointed out that for the purpose of these proceedings, it is irrelevant which goods the parties actually manufacture or to what kind of customers they actually sell.
The goods have to be compared as they appear on the register and as they are applied for before the Office (see, for example, decision of 11 November 2010 – R1327/2010 MONELLA VAGABONDA VIP (Fig. Mark)/VAGABOND et al., at paragraph 25). The reasoning behind this is that during the first five years of registration of a EUTM, the trade mark owner may diversify production or commercialization of goods or services within the limits of his specification.
Given that the goods and services will be compared precisely as they appear on the register, the applicant’s reference to the IP translator decision of the Court of Justice (C-307/10) is not relevant in the present case.
Contested goods in Class 6
The contested casings of metal; architectural fasteners of metal; cowls of metal; /metal brackets; placards of metal are included in or overlap with the opponent’s metal building materials. Consequently, the goods are identical.
Contested goods in Class 11
The opponent’s broader category, apparatus for heating, includes the following goods: heating units; flat radiators for central heating installations; control units [thermostatic valves] for heating installations; industrial heating installations; central heating boilers; radiators [heating]; hot air apparatus; radiator valves [thermostatic]; installations for central heating; fireplaces; heating apparatus for use in the home; heating apparatus and installations. Consequently, the goods are identical.
The contested evaporators; electric fans with evaporative cooling devices are included in, or overlap with, the opponent’s apparatus for ventilating. Therefore, these goods are also identical.
The contested cooling appliances and installations are included in, or overlap with, the opponent’s apparatus for refrigerating. Therefore, these goods are also identical.
Contested services in Class 35
The opponent’s broader category, advertising, consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or reinforcing the client’s position in the market and acquiring competitive advantage through publicity. This broad category of services, therefore, includes all the contested services, i.e. market campaigns; on-line promotion of computer networks and websites; arranging of competitions for advertising purposes; compilation, production and dissemination of advertising matter. Consequently, the services are identical.
- 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 are directed at the public at large as well as at business customers with specific professional knowledge or expertise working in the construction industry or businesses requiring complex heating or ventilating systems. The contested services mainly target professionals seeking publicity for their activities.
The degree of attention will therefore vary from average to high, depending on the price or expertise involved.
- The signs
Earlier trade mark
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 earlier mark is a word mark ‘Conrad’ while the contested sign is a 3D mark consisting of the word ‘KORAD’ written in white upper case letters with a grey border, within a grey rectangle.
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.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs under comparison are meaningless, notably the Italian-speaking part of the relevant public.
Visually, the signs coincide in the letters ‘*O*RAD’. However, they differ in their initial letters ‘C’ and ‘K’. Further the earlier mark differs in its letter ‘N’. This letter ‘N’ is, however, in the middle of the earlier mark and is surrounded by the coinciding letters ‘O’ and ‘RAD’. The lengths and structures of the signs are very similar, as they both contain a single word of six or five letters. The 3D nature of the contested mark does not have a lot of impact on the comparison given its simple stylisation; the two different mark types at hand are not necessarily perceived in different ways by the relevant public.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincide in the sound of the letters ‘CO*RAD’ and ‘KORAD’ since the letters ‘C’ and ‘K’ are pronounced in the same way by the public in the relevant territory. The pronunciation only differs in the sound of the third letter ‘N’ of the earlier mark. In addition, the contested sign has a very similar rhythm and intonation, as the sound of the differing letter ‘N’ is not of such a nature that it would significantly offset the sounds of the five aurally identical letters surrounding it.
Consequently, the degree of aural similarity is high.
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.
- 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.
- 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 goods/services covered are from the same or economically linked undertakings.
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).
In the present case, the goods and services are identical. The signs are aurally highly similar, in addition to which there is also an average degree of visual similarity. For the relevant public, none of the signs has a concept which could help differentiate between them.
The signs aurally coincide in all the sounds of the contested sign. Given that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection, the difference in the sound of one letter, ‘N’, placed in the middle of the earlier sign is insufficient to exclude a likelihood of confusion as regards the commercial origin of the identical goods and services.
Considering all the above, there is a likelihood of confusion on the part of the Italian-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. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier European Union trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 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
Cynthia DEN DEKKER
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.