OPPOSITION No B 2 755 877
Francisco Struch, S.L., Carretera de Tous, Km 0.700, 46260 Alberique (Valencia), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Wang Yan, No. 29f, Fumingge, Haifu Garden, No. 1023, Shennan East Rd., Luohu District, Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 – Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).
On 09/06/2017, the Opposition Division takes the following
1. Opposition No B 2 755 877 is partially upheld, namely for the following contested goods:
Class 11: Headlights for automobiles; Lighting apparatus for vehicles; Water purification installations; Lighting apparatus and installations; Lights for vehicles; Vehicle headlights; Vehicle reflectors; Anti-glare devices for vehicles [lamp fittings]; Lamps for directional signals of automobiles; Automobile lights; Refrigerating cabinets; Refrigerators; Sanitary apparatus and installations; Solar water heaters; Water purification installations; Light bulbs; Arc lamps; Electric lamps; Lamps; Incandescent burners; Pocket searchlights; Discharge tubes, electric, for lighting; Light diffusers; Sockets for electric lights; Ceiling lights; Light-emitting diodes [LED] lighting apparatus; Water sterilizers; Purification installations for sewage; Filters for drinking water; Water purifying apparatus and machines; Freezers; Air deodorising apparatus; Air purifying apparatus and machines; Aquarium heaters; Water filtering apparatus; electric hair dryers.
2. European Union trade mark application No 15 276 942 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 276 942, namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 2 822 203. 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 the following:
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 20: Furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, bone, ivory, whale bone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics.
Class 21: Utensils and containers for household or kitchen purposes (not of precious metal or coated therewith), combs and sponges, soap holders and soap dispensers, toilet roll holders, holders for sponges and for shaving brushes; brushes (except paintbrushes), brush making materials; materials for cleaning purposes; steel wool (scouring pads of steel); unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes.
The contested goods are the following:
Class 11: Headlights for automobiles; Lighting apparatus for vehicles; Water purification installations; Lighting apparatus and installations; Lights for vehicles; Vehicle headlights; Vehicle reflectors; Anti-glare devices for vehicles [lamp fittings]; Lamps for directional signals of automobiles; Automobile lights; Refrigerating cabinets; Refrigerators; Sanitary apparatus and installations; Solar water heaters; Water purification installations; Light bulbs; Arc lamps; Electric lamps; Lamps; Incandescent burners; Pocket searchlights; Discharge tubes, electric, for lighting; Light diffusers; Sockets for electric lights; Ceiling lights; Light-emitting diodes [LED] lighting apparatus; Water sterilizers; Purification installations for sewage; Filters for drinking water; Water purifying apparatus and machines; Freezers; Germicidal lamps for purifying air; Air deodorising apparatus; Air purifying apparatus and machines; Aquarium heaters; Water filtering apparatus; electric hair dryers.
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 lighting apparatus and installations include, as a broader category, the opponent’s apparatus for lighting. In the same sense, the contested sanitary apparatus and installations include the opponent’s apparatus for sanitary purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the respective opponent’s goods.
The contested headlights for automobiles; lighting apparatus for vehicles; lights for vehicles; vehicle headlights; vehicle reflectors; anti-glare devices for vehicles [lamp fittings]; lamps for directional signals of automobiles; automobile lights; light bulbs; arc lamps; electric lamps; lamps; incandescent burners; pocket searchlights; discharge tubes, electric, for lighting; light diffusers; sockets for electric lights; ceiling lights; light-emitting diodes [LED] lighting apparatus are included in, or overlap with, the opponent’s apparatus for lighting. Therefore, they are identical.
The contested water purification installations (listed twice); water sterilizers; purification installations for sewage; filters for drinking water; water purifying apparatus and machines; water filtering apparatus overlap with the opponent’s apparatus for water supply and sanitary purposes, insofar as these categories include water-supply or sanitary equipment with purifying, sterilising or filtering functions. Therefore, they are identical.
The contested refrigerating cabinets; refrigerators; freezers are included in the broader category of the opponent’s apparatus for refrigerating. Therefore, they are identical.
The contested solar water heaters; aquarium heaters are included in the broader category of the opponent’s apparatus for heating. Therefore, they are identical.
The contested air deodorising apparatus; air purifying apparatus and machines cannot be clearly separated from the opponent’s apparatus for ventilating, insofar as these categories include apparatus, being parts of ventilating and air-conditioning equipment, for removing airborne particles or odours from the air-handling units. Based on this overlap, the goods are considered identical.
The contested electric hair dryers are included in the broader category of the opponent’s apparatus for drying. Therefore, they are identical.
However, the contested germicidal lamps for purifying air have no relevant connections with the opponent’s goods in Class 11. Germicidal lamps are used for the treatment of air with ultraviolet rays. Despite being referred to as ‘lamps’, they are not used for lighting purposes. They are not fitted or used in close connection with ventilating installations either. Rather, they are sold as self-contained apparatus and originate from specialised undertakings dealing with sterilisation equipment that inactivates bacteria, viruses etc. Furthermore, germicidal lamps are neither complementary nor in competition with the opponent’s goods. As regards the opponent’s goods in Class 20 (essentially furniture, interior design articles) or those in Class 21 (essentially household or kitchen articles, brushes and brush-making materials, unworked or semi-worked glass), the remaining contested goods have no commonalities whatsoever. Clearly different by natures and purposes, these goods do not have the same usual origin. They do not move over the same distribution channels either. The coincidence in the relevant public is insufficient in itself for a finding of similarity. Therefore, the contested germicidal lamps for purifying air are dissimilar to all of the opponent’s goods in Classes 11, 20 and 21.
- 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 and at business customers with specific professional knowledge or expertise in the field of lighting (including vehicle lights), water supply, refrigeration, sanitary installations, heating, drying, ventilating and air conditioning.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- 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). 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 on the Spanish-speaking part of the general public in the European Union, for which the signs show substantial aural similarities and at the same time are conceptually neutral, for reasons given below.
Aurally, it is common, in Spanish, to add an /e/ sound before ‘S’-consonant clusters, like the one appearing in the beginning of the earlier mark, ‘ST’. Although potentially there are several ways of pronouncing the ‘X’ in the beginning of the contested sign, a part of the public will pronounce it like /eks/. Therefore, the beginnings of the signs for that part of the public will be highly similar, /estru/ and /ekstru/. In addition, it has to be noted that since the phoneme sequence /ekst/ is not common in Spanish, another part of the public may even pronounce the letters ‘XT’ of the contested sign as /est/ which coincides with the beginning of the earlier mark. The consonant clusters in the endings of the signs will be different, /ch/ and probably /k/. Nevertheless, the vowel pattern and the length of the pronunciations will be the same, based on the above explanations. Moreover, it can be reasonably assumed that the stress will be put on the /u/ vowel in both signs.
Therefore, the signs are highly similar aurally.
Conceptually, neither of the words at issue exists in Spanish. Although a part of the public may recognise the English word ‘truck’ in the contested sign which can influence the distinctiveness of this word for those goods that are intended for use with this type of vehicles, there is another part of the public – and not a negligible one – which will not proceed to dissecting the contested sign and will perceive it as an arbitrary word as a whole. The assessment will proceed on the basis of that part of the Spanish-speaking public for which both signs are fanciful terms with no identifiable components. They are considered to enjoy an average degree of inherent distinctiveness for the goods in question.
Since a comparison between the words is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Visually, the signs coincide in the four-letter sequence, ‘TRUC’, and differ in their first and last letters, namely ‘S-H’ in the earlier mark and ‘X-K’ in the contested sign. The fact that the contested sign is applied for as a figurative mark does not have a material impact on the visual comparison of the signs as the typeface in which the sign is depicted is fairly standard.
Therefore, the signs are similar at least to a low degree visually.
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 has no meaning for any of the goods in question from the perspective of the public in the relevant language area. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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). The interdependence principle is of a particular importance as, in the present case, the contested goods that are relevant for the assessment of likelihood of confusion are identical to some of those covered by the earlier mark.
From the perspective of the Spanish-speaking part of the general public in the relevant territory, the signs are highly similar aurally and have a certain degree of visual similarity, without this impression being altered by any conceptual perception.
It is considered that, in the absence of any elements in the signs that would be more distinctive or visually more eye-catching, the differences identified in signs are insufficient to counteract the similarities. 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).
When encountering the signs at issue in relation to identical goods, the public may confuse them on account of the high degree of similarity on the aural level, including where the degree of attention is enhanced. 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).
Considering all the above and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the Spanish-speaking part of the general public, and the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 822 203. 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, and there is no need to analyse the remaining part of the public.
It follows that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
IBARRA DE DIEGO
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.