OPPOSITION No B 2 746 660

Electrostar GmbH, Stuttgarter Str. 36, 73262 Reichenbach, Germany (opponent), represented by Kohler Schmid Möbus Patentanwälte Partnerschaftsgesellschaft Mbb, Gropiusplatz 10, 70563 Stuttgart, Germany (professional representative)

a g a i n s t

Sami n. Khoury co., Al Muqablain Thabet Bin Aqram Str Beside Al-Manaseer Concrete Building No. 64, Ammam 11118, Jordan (applicant), represented by Isern Patentes Y Marcas S.L., Avenida Diagonal 463 bis 2° piso, 08036 Barcelona, Spain (professional representative).

On 28/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 660 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 834 303 for the figurative mark, namely against all the goods in Class 8 and some of the goods in Classes 9 and 11. The opposition is based on European Union trade mark registration No 14 037 601 for the figurative mark  . 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 7: Electric cleaning machines and equipment, in particular vacuum cleaners, vacuum cleaners for machine tools, wet and dry vacuum cleaners, asbestos vacuum cleaners, mains-operated and battery-operated sweeping machines, spare parts and fittings for the aforesaid goods, in particular motors, engines, containers, vacuum cleaner hoses, vacuum cleaner filters, vacuum cleaner bags, vacuum cleaner nozzles, handles; Water heaters, namely kettles.

Class 8: Flat irons.

Class 11: Hair driers [dryers]; Hand dryers for washrooms, namely cold air and warm air hand dryers.

Class 20: Mirrors, namely shaving mirrors and cosmetic mirrors.

Class 21: Soap dispensers; Ironing boards; Hand-operated cleaning equipment, in particular sweepers.

The contested goods are the following:

Class 8: Flat irons (electric).

Class 9: Lighting apparatus (electric for igniting from a distance).

Class 11: Hair driers (dryers); heaters for baths; heaters for heating irons; heating apparatus; electric heating apparatus; fans (air-conditioning); electric fans for personal use; electric filaments (heating); desiccating apparatus; dryers (air); dryers (hair); drying apparatus.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and also at professionals. The relevant public’s degree of attention towards the goods is likely to vary according to the category of goods in question, ranging from average to high, depending on the nature and the price of the goods.

3. The signs

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).

Although signs cannot be artificially dissected, it must be taken into account that, when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known to the public perceiving it, it is likely that they will mentally divide the mark into the recognised terms or familiar parts forming it (e.g. prefixes or suffixes). Furthermore, in the present case, for the part of the public with a good understanding of English, the elements ‘STAR’ and ‘MIX’ can be clearly distinguished as separate elements. The word ‘STAR’ can be defined, inter alia, as ‘a large ball of burning gas in space’ (https://www.collinsdictionary.com/dictionary/english/star), and ‘MIX’ can be defined as follows, among other meanings: ‘If you mix something, you prepare it by mixing other things together’ (https://www.collinsdictionary.com/dictionary/english/mix).

The marks have no dominant elements.

In any event, neither ‘STARMIX’ nor ‘SAMIX’ has any meaning in the relevant languages. Therefore, they are deemed to be distinctive in their own right.

Visually, both signs begin with the letter ‘S’ and contain the letter ‘A’, although in different positions, whereas their endings, ‘MIX’, are identical. However, the presence of the letters ‘T’ and ‘R’ in the earlier sign noticeably alters the length and visual impression given by the signs. While the identical first letter ‘S’ and ending ‘MIX’ of the signs lead to an unmistakable degree of similarity, this is partly attenuated by the dissimilarities in the central parts of the marks.

The signs differ in that the earlier mark is depicted in red, while the contested sign is in black and grey. The signs also differ in their stylisation: a star is depicted in the earlier mark, whereas the contested sign features a highly stylised letter ‘i’ bearing a slight resemblance to a lightning bolt symbol.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced either as ‘STAR-MIX’ (by the English-speaking part of the public, for example) or as ‘ES-TAR-MIX’ (in Spanish, for example), both of which differ materially from the pronunciation of the contested mark, ‘SA-MIX’. Although they coincide in the syllable ‘MIX’, the sequences of syllables, the rhythms and the intonations of the signs are different.

Therefore, the signs are aurally similar to a low degree.

Conceptually, for the part of the public that will not dissect the earlier mark into the elements ‘STAR’ and ‘MIX’, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public that will break down the earlier mark into the elements ‘STAR’ and ‘MIX’, the mark will evoke the meaning of these words, which will be reinforced by the depiction of the star in the letter ‘i’. However, the contested sign still lacks any meaning for this part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The signs are similar to a non-negligible degree, due to the identical letters in their first and last parts. Nevertheless, they are similar to only a low degree. For instance, it is not the case that one sign is included in the other, or that the later mark consists of the earlier mark with another term added, which would have been an indication that the signs were similar (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28).

Furthermore, the likelihood of confusion cannot be determined in the abstract, but must be assessed in the context of an overall analysis that takes into consideration all of the relevant factors of the case in question, including whether the public’s level of attention is higher or lower and the habits of that public in the sector concerned (20/10/2011, T-214/09, Cor II, EU:T:2011:612, § 68-69).

Bearing in mind the above considerations and the low degree of visual and aural similarity between the signs, the Opposition Division finds that there is no likelihood of confusion between the marks on the part of the relevant public, even for identical goods. The relevant consumers will easily distinguish between the conflicting marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Birgit FILTENBORG

Erkki MÜNTER

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.