OPPOSITION DIVISION
OPPOSITION No B 2 715 129
Grup Frecan S.L., Vallcorba, 66, 08192 Sant Quirze del Vallès (Barcelona), Spain
(opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona,
Spain (professional representative)
a g a i n s t
BSH Hausgeräte GmbH, Carl-Wery-Str. 34, 81739 München, Germany (applicant).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 715 129 is upheld for all the contested goods.
2. European Union trade mark application No 15 308 695 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 308 695 ‘Urban Force’. The opposition is based on European
Union trade mark registration No 11 907 987 . 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.
Decision on Opposition No B 2 715 129 page: 2 of 7
a) The goods
The goods on which the opposition is based are the following:
Class 6: Buildings of metal; Tubes of metal for extractor hoods for kitchens;
Anchoring structures of metal for extractor hoods for kitchens.
Class 7: Exterior, intermediate and roof-mounted suction and ventilation motors
and engines; Motor and engine filters for extractor hoods for kitchens;
Washing machines; Dish washers; Waste disposals; Machinery and
machine tools.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes; Extractor hoods
for kitchens; Ventilation hoods; Taps [faucets]; Sinks; Wash-hand bowls
[parts of sanitary installations]; Cooking ovens; Hobs; Hearths;
Refrigerators; Water purifying apparatus and machines.
The contested goods are the following:
Class 7: Electric household and kitchen machines and apparatus, included in
class 7, in particular electric kitchen machines and apparatus, including
grinders, beaters and kneading apparatus, fruit presses, juice extractors,
juice centrifuges, mincing machines, cutting apparatus, electrically
powered tools, tin openers, knife sharpening apparatus, and machines
and apparatus for making beverages and/or preparing food, beverage
pumps for dispensing chilled beverages; Electric vending machines for
beverages or foods, automatic vending machines; Electric welding
devices for wrapping; Ironing presses, ironing machines, included in
class 07; Electric household cleaning equipment, including electric
window cleaning equipment, electric shoe polishers and vacuum
cleaners, wet and dry vacuuming apparatus; Robotic vacuum cleaners,
Robots for household chores; Parts for all the aforesaid goods, included
in class 07; Hoses, tubes, dust filters and dust filter bags, all for vacuum
cleaners.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods, indicate
that the specific goods are only examples of items included in the category and that
protection is not restricted to them. In other words, they introduce a non-exhaustive
list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 electric household and kitchen machines and apparatus, included in
class 7, in particular electric kitchen machines and apparatus, including grinders,
beaters and kneading apparatus, fruit presses, juice extractors, juice centrifuges,
mincing machines, cutting apparatus, electrically powered tools, tin openers, knife
sharpening apparatus, and machines and apparatus for making beverages and/or
preparing food, beverage pumps for dispensing chilled beverages include, as a
Decision on Opposition No B 2 715 129 page: 3 of 7
broader category, the opponent’s washing machines. Since the Opposition Division
cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested electric household cleaning equipment, including electric window
cleaning equipment, electric shoe polishers and vacuum cleaners, wet and dry
vacuuming apparatus includes, as a broader category, the opponent’s washing
machines. Since the Opposition Division cannot dissect ex officio the broad category
of the contested goods, they are considered identical to the opponent’s goods.
The contested electric welding devices for wrapping; ironing presses, ironing
machines, included in class 07; robotic vacuum cleaners, robots for household
chores are included in the opponent’s machine tools. Therefore, the goods are
considered identical.
The contested parts for all the aforesaid goods, included in class 07 and hoses,
tubes, dust filters and dust filter bags, all for vacuum cleaners and the opponent’s
machine tools, which include vacuum cleaners and other household appliances, can
have the same producers and end users. Furthermore they are complementary.
Therefore, these goods are similar.
According to the Guidelines on Classification and the Common Communication on
the Common Practice on the General Indications of the Nice Class Headings
(28/10/2015), the opponent’s machinery in Class 7 lacks the clarity and precision to
specify the scope of protection that it gives as it does not provide a clear indication of
what machines are covered. Machines can have different characteristics or different
purposes, they may require very different levels of technical capabilities and know-
how to be produced or used, could target different consumers, be sold through
different sales channels, and therefore relate to different market sectors.
The dictionary defines machinery as ‘machines, machine parts, or machine systems
collectively’, and a machine as ‘a piece of equipment which uses electricity or an
engine in order to do a particular kind of work’ (Collins English Dictionary).
When comparing the contested electric vending machines for beverages or foods,
automatic vending machines to the opponent’s machinery, the nature can be
considered the same (machines), the purpose is also the same in the very broadest
sense of the word, i.e. that it does a particular kind of work, and to that extent these
goods are considered similar to a low degree, but in the absence of an express
limitation by the opponent clarifying the vague term, it cannot be assumed that they
are produced by the same companies, that their methods of use coincide, or that
they share the same distribution channels or that they are in competition or
complementary.
b) 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 (to various degrees)
are directed both at the public at large and at business customers with specific
professional knowledge or expertise.
Decision on Opposition No B 2 715 129 page: 4 of 7
The public’s degree of attentiveness may vary from average to above, depending on
the price, sophistication, or terms and conditions of the goods purchased.
c) The signs
Urban Force
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 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.
The earlier mark is a figurative mark composed of the verbal elements ‘Urban’ in
slightly stylised typeface and, thereunder, and in considerably smaller script,
‘appliances’ in standard typeface. The contested sign is the word mark ‘Urban Force’.
The element ‘appliances’ of the earlier sign will be associated with ‘a machine or
device, esp an electrical one used domestically’
(https://www.collinsdictionary.com/dictionary/english/appliance). Bearing in mind that
the relevant goods are machines and kitchen and household appliances, this element
is non-distinctive for these goods.
The element ‘Force’ of the contested sign will be associated with ‘strength or energy;
might; power’ (https://www.collinsdictionary.com/dictionary/english/force). It is,
therefore, laudatory and thus weak for the relevant goods, which are machines and
parts thereof, since it merely suggests that they are particularly powerful.
The element ‘Urban’, identically included in both marks, will be understood as
meaning ‘of, relating to, or constituting a city or town’ by the relevant public
(https://www.collinsdictionary.com/dictionary/english/urban). Although this adjective
will be grammatically linked to the subsequent nouns included in the marks, the
combinations ‘urban appliances’ and ‘urban force’ do not convey any clear and
graspable meaning other than the mere sum of their parts. Since the element ‘Urban’
is not descriptive or otherwise non-distinctive in relation to the goods at issue, it is
distinctive.
Decision on Opposition No B 2 715 129 page: 5 of 7
Considering the aforesaid, the Opposition Division finds it appropriate to focus the
comparison of the signs on the English-speaking part of the public.
Consumers generally tend to focus on the beginning of a sign when they encounter a
trade mark. This is because the public reads from left to right, which makes the part
placed at the left of the sign (the initial part) the one that first catches the attention of
the reader.
The graphical stylisation of the earlier mark is of a rather decorative nature and,
therefore, plays only a secondary role in the overall impression of the mark.
Visually and aurally, the signs coincide in the distinctive verbal element ‘Urban’,
which constitutes the first element of both signs, when reading from left to right/top to
bottom. They differ in the elements ‘appliances’ of the earlier mark and ‘Force’ of the
contested sign, both of which are, however, non-distinctive/weak for the goods at
issue. The remaining differences are confined to the graphical stylisation of the verbal
elements of the earlier mark, which plays only a secondary role in the overall
impression of the mark.
Therefore, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning, the differences being confined to non-distinctive/weak elements, the signs
are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
appreciation depends on numerous elements and, in particular, on the degree of
recognition of the mark on the market, the association that the public might make
between the two marks and the degree of similarity between the signs and the goods
and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Decision on Opposition No B 2 715 129 page: 6 of 7
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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.
Taking into account the high degree of visual, aural and conceptual similarity
between the signs, consumers may be led to believe that the identical and similar
goods at issue, including those that are similar to a low degree, originate from the
same undertaking or at least economically linked undertakings, because the
differences between the signs are confined to non-distinctive/weak or secondary
elements and aspects.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand or variation of the earlier mark, configured in a different way
according to the type of goods that it designates (23/10/2002, T-104/01, Fifties,
EU:T:2002:262, § 49). This applies notwithstanding the fact that the consumer’s
degree of attention might be above average in relation to some of the goods.
Considering all the above, 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 European
Union trade mark registration No 11 907 987. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 715 129 page: 7 of 7
The Opposition Division
Plamen IVANOV Natascha GALPERIN André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.