OPPOSITION No B 2 752 916
Spring International GmbH, Höhscheider Weg 29, 42699 Solingen, Germany (opponent), represented by Dompatent von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)
a g a i n s t
Guangdong Huayi Plumbing Fittings Industry Co., Ltd., No.1, Baishitou Industrial Development Zone, Yueshan Town, Kaiping City, Guangdong, People’s Republic of China (applicant), represented by Albright IP Limited, County House, Bayshill Road, Cheltenham, Gloucestershire GL50 3BA, United Kingdom (professional representative).
On 16/06/2017, the Opposition Division takes the following
1. Opposition No B 2 752 916 is upheld for all the contested goods, namely:
Class 21: Kitchen utensils; household containers; China ornaments; drinking vessels; thermally insulated containers for food.
2. European Union trade mark application No 15 373 004 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 373 004, namely against some of the goods in Class 21. The opposition is based on, inter alia, international trade mark registration No 814 039 designating, inter alia, the European Union. 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 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 international trade mark registration No 814 039 designating, inter alia, the European Union.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 21: Kitchenware, cookware and tableware, also for preparing food at the table including pans and cooking pots, dish covers; fondue dishes and fondue plates, service plates, meat trays, snail pans; service trays, shakers, snow buckets, ice buckets, wine coolers, jiggers, single glass holders, whistling kettles and tea kettles, sugar holders, salt and pepper shakers and mills; scrapers in the form of spatulas made of plastic or of wood; ash sieves; containers for household and kitchen use (not of precious metal); household filters, non-electric fruit juicers for household use; equipment and containers for household or kitchen use (not of precious metal or plated therewith); household gloves; ceramic products for the household; baskets (not of precious metal) for the household; cooling elements for foodstuff (containing heat-exchanging fluids) for household use; non-electrical mixing devices for the household, hand-operated mills for household use; non-electrical polishing devices and machines for household use; smoke consumers for household use; graters, non-electrical egg whisks for the household, sifters for household use; strainers for household use; trays of paper for household use, trays (not of precious metals) for household use; nonelectrical household choppers, picnic cases (dinnerware); steaming pans (not electrical); closure heads for pans; non-electrical coffee makers (not of precious metal); cooking moulds; non-electrical cooking equipment, cooking pots; plates for preventing the milk from boiling over, pressure cookers (non-electrical); equipment for cooking and for flambeing.
The contested goods are the following:
Class 21: Kitchen utensils; household containers; China ornaments; drinking vessels; thermally insulated containers for food.
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 kitchen utensils and household containers are identically contained in the opponent’s lists of goods, albeit using slightly different wording (kitchenware, containers for household and kitchen use).
The contested drinking vessels are included in the broad category of the opponent’s tableware. Therefore, they are identical.
The contested thermally insulated containers for food are included in the broad category of the opponent’s containers for household. Therefore, they are identical.
The contested china ornaments are objects made of porcelain, a particularly fine ceramic, which are used for decoration. They are similar to the opponent’s ceramic products for the household, which are domestic objects of ceramic, including porcelain items, for instance crockery, pots and containers. These goods are made of the same material and can, therefore, have the same producers. It is not uncommon for manufacturers of ceramic products for the household also to produce decorative objects in the same material. The goods, moreover, target the same public and have the same distribution channels.
- 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. The degree of attention is considered average.
- 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 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.
The common element ‘SPRING’ is meaningful in certain territories, for example in those countries where English is understood. 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 the word mark ‘SPRING’, which will be understood by the relevant public as meaning ‘the season between winter and summer when the weather becomes warmer and plants start to grow again’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/spring on 16/06/2017). The meaning of the word has no connection with the relevant goods and the mark is, therefore, distinctive.
The contested sign is a figurative mark that includes the word ‘SPRING’ in slightly stylised black title case letters, which will be understood in the meaning given above and is distinctive. Above the letter ‘I’, there is a small figurative element depicting a leaf, which reinforces the concept conveyed by the verbal element of the mark and, therefore, plays an ancillary role for the purposes of the present comparison. It should be noted that, 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). Consequently, the abovementioned figurative device has less impact than the verbal element of the contested sign. Moreover, the small size of the figurative element and the fact that it reinforces the concept of the verbal element of the contested sign further diminish its impact on the present comparison.
Visually, the signs coincide in the string of letters ‘SPRING’, which constitutes the entire earlier mark and is the only verbal element of the contested sign. They differ only in an element of secondary importance, namely the depiction of a leaf in the contested sign. Therefore, the signs are visually highly similar.
Aurally, the signs are identical. In particular, since the figurative element of the contested sign will not be pronounced, it is not subject to a phonetic assessment.
Conceptually, reference is made to the observations above on the semantic content of the earlier mark and the verbal element of the contested sign, ‘SPRING’. Bearing in mind that the marks differ in a secondary element (i.e. the depiction of a leaf in the contested sign, which merely reinforces the concept conveyed by its verbal element and has small dimensions), the marks are conceptually identical.
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
The contested goods are partly identical and partly similar to the opponent’s goods. The degree of attention of the relevant public (i.e. the public at large) is average and the distinctiveness of the earlier mark is normal.
The signs are visually highly similar and aurally and conceptually identical, since they both contain the word ‘SPRING’. The marks differ only in the additional figurative element of the contested sign, which is a secondary element, due to its figurative nature and small size. Moreover, this component of the sign merely reinforces the concept conveyed by its verbal element and, therefore, does not play an independent role in the consumer’s overall impression. This difference is not sufficient to overcome the striking similarities between the signs and to render the signs sufficiently different that a likelihood of confusion on the part of the public can safely be excluded. As seen above in section c), the figurative element of the contested sign has a limited significance in the global appreciation of the likelihood of confusion between the marks.
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).
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, as is likely in the present case. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above and bearing in mind that the differences between the signs are confined to a secondary element, 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 international trade mark registration No 814 039 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.
Since IR No 814 039 leads 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 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
Pierluigi M. VILLANI
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.