OPPOSITION No B 2 536 004
Tof S.r.l., Via dell’Erica, 16/18, 28017 San Maurizio D’Opaglio (NO), Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 – 1ºB, 03007 Alicante, Spain (professional representative)
a g a i n s t
Técnicas de Dosificación y Filtración, S.L., Avenida Fuentemar 20, Parque Empresarial Advance, 28823 Coslada (Madrid), Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).
On 10/02/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 536 004 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 and services of European Union trade mark application No 13 684 048, namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 882 126. 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
The goods on which the opposition is based are, inter alia, the following:
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
The contested goods are the following:
Class 11: Water purification installations (listed four times); apparatus for sanitary purposes; water treatment filters; installations for water filtering; water conditioners; sanitary water fittings; water supply installations (listed three times); devices for sterilising water; water dispensers; industrial waste water purification plants.
The contested goods are identical to the opponent’s apparatus for water supply and sanitary purposes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.
- 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 or at business customers with specific professional knowledge or expertise. As the degree of specialisation of these goods as well as their cost may vary significantly, it is considered that the degree of attention may also vary from average to high.
- The signs
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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 earlier mark is a figurative mark made up of the letters ‘TOF’, written in a stylised uppercase lettering centred over a black rectangular background crossed in its superior part by a horizontal thin white line.
The contested sign is a figurative mark. It consists of the letters ‘TDF’, written in a white standard uppercase over a blue rectangular background on the left-hand side. Below it, are written, in a much smaller black uppercase lettering, the verbal elements ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’.
The elements ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’ of the contested sign are Spanish words and they will be understood by part of the relevant public, mainly the Spanish-speaking part of the public but also other consumers such as those speaking Latin languages because the equivalent words are very close. Even in other languages such as in English, these words might be understood as the English words ‘dosage and filtering techniques’ are also close. In particular, the word ‘TÉCNICAS’ will be largely understood because the equivalent terms are identical in Portuguese or similar in other languages of the relevant territory, such as in Italian (‘tecniche’), in English or French (‘techniques’), in Dutch (‘technieken’) or in German (‘Techniken’). Bearing in mind that the relevant goods are apparatus for water supply and sanitary purposes, these elements are weak for a significant part of the relevant public. However, these terms have a normal distinctive character for those who do not understand them.
As regards both signs, they are composed of less distinctive figurative elements of a purely decorative nature, namely the black rectangular background crossed by a white line in the earlier mark and the blue rectangular background in the contested sign.
Taking into account the foregoing, the most distinctive elements of the signs are the verbal elements ‘TOF’ in the earlier mark and, for part of the relevant public, ‘TDF’ in the contested sign. For those who do not understand the words ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’ of the contested sign, these have also a normal distinctive character.
The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
The element ‘TDF’ and the blue rectangular background in the contested sign are the dominant elements as they are the most eye-catching by virtue of their position and size. At the contrary, the words ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’ are written in a smaller font and are placed in a secondary position, namely at the bottom.
Visually, the signs coincide in the letters ‘T*F’ written in white letters over a rectangular background and, to a much lesser extent, in the letters ‘O’ of the earlier mark and ‘D’ of the contested sign which, even though they are clearly and visibly different letters, still present a certain degree of similarity in their shape. Apart from the visible divergences in the shapes of the letters ‘O’ and ‘D’, the signs also differ in all the additional elements, namely in the dimensions and colours of the backgrounds, in the position of the coincident elements in the signs, in the white line and the high stylisation of the fonts in the earlier mark as well as in the words ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’ of the contested sign.
It must also be pointed out that the horizontal strokes of the letters ‘T’ and ‘F’ in the earlier mark are very long when compared to their vertical stroke. Moreover, the letters ‘T’ and ‘O’ of the earlier mark are joined together. However, these typographical particularities in the earlier mark have no equivalent in the coincident element of the contested sign which is written in a standard typeface and clearly helps in distinguishing the signs.
Some of the additional elements have a low distinctiveness, when not for the whole relevant public, at least for a significant part. However, although their impact is lower, they still modify the visual impression given by the marks, all the more so as the length of the signs also influences the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the sole verbal element of the earlier mark is made up of only three letters. When trade marks are composed of so few letters, the difference in one letter may be sufficient to render them not similar, all the more so as the signs also present other differences.
Taking into account the foregoing, the signs are visually similar, but only to a low degree.
Aurally, taking into account that the earlier mark alternates its two consonants with a vowel in the middle, the letters will be pronounced by part of the relevant public all together, as if they were constituting a word, forming the sound /tof/. At the contrary, the lack of any vowel in the verbal element ‘TDF’ will lead the consumer to associate it with an acronym and force it to spell it letter by letter. For example, in English or in French, ‘TDF’ will be pronounced /ti/di/ef/ or /té/dé/êf/, respectively. Therefore, they coincide in the sounds /t/ and /f/ but differ in the sound /o/ in the earlier mark and, as regards the contested sign, in the sounds /i/di/e/ or /é/dé/ê/, in English or in French, respectively. The same reasoning applies to other languages of the relevant territory. It is considered that these differences in the pronunciation of the signs considerably modify the rhythm.
On the other hand, it cannot be excluded that another part of the relevant public will also perceive the earlier mark as an acronym and, consequently, will pronounce it letter by letter and not as a word.
The additional elements ‘TÉCNICAS DE DOSIFICACIÓN Y FILTRACIÓN’ of the contested sign will not be pronounced, at least by the largest part of the relevant public, because they will be perceived as weak and secondary in the sign.
Therefore, irrespective of the different pronunciations in the relevant territory and taking into account the foregoing, the signs are aurally similar to a low degree for the consumers who will pronounce the earlier mark as a word. As regards those who will pronounce separately each letter of the earlier mark, the degree of aural similarity is considered below average because the elements pronounced in the signs are short and a difference in one letter is more easily noticeable than in long signs.
Conceptually, while the largest part of the relevant public will perceive one or more semantic content(s) in the contested sign, the earlier mark lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For other consumers, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Dutch-speaking consumers may associate the element ‘TOF’, if perceived as a word, with the idea of ‘great’ or ‘fantastic’. For this part of the relevant, the signs are not similar because they convey different meanings.
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
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
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, § 22 et seq.).
The goods, found to be identical, are directed at the public at large or at business customers and the degree of attention may vary from average to high. The signs are visually similar to a low degree and aurally to a degree lower than average or even low. Conceptually, for most of the consumers of the relevant territory, the signs are not similar because only the contested sign contains some meanings or because each sign conveys different meanings. For the remaining part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.
The earlier mark and the dominant element of the contested sign both have three letters; the earlier mark is, consequently, a short mark and it is considered that the fact that the contested sign differs in one letter as regards its dominant and distinctive element ‘TDF’ and in further additional elements, as already described above, is of particular relevance.
Consequently, the coincidences between the signs do not lead to a finding of likelihood of confusion because they are considered not sufficient to counteract the differences between them.
Considering all the above, even taking into account that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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
| Sandra IBAÑEZ | Benoit VLEMINCQ | Martina GALLE |
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.