OPPOSITION No B 2 421 090
Würth International AG, Aspermontstr. 1, 7000 Chur, Switserland (opponent), represented by Adolf Würth GmbH & Co. KG, Enika Paletta, Reinhold-Würth-Str. 12-17, 74650 Künzelsau, Germany (employee representative)
a g a i n s t
Shanghai Daxon Co. Ltd., room B-124, No 785, Baihe Town, Qingpu District, Shanghai, People’s Republic of China (applicant), represented by Guy Delhaye, 2 rue Gustave de Clausade, 81800 Rabastens, France (professional representative).
On 13/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 421 090 is upheld for all the contested goods.
2. European Union trade mark application No 13 038 401 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 350.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 038 401. The opposition is based on European Union trade mark registration No 6 775 944. 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 8: Hand tools and implements (hand operated); cutlery; side arms; razors; hand operated hand tools; hand-operated cutting apparatus, scissors, tin snips; cutlery.
The contested goods are the following:
Class 8: Scissors; beard clippers; hair clippers for personal use, electric and non-electric; hand implements for hair curling; nail clippers, electric or non-electric; blades (hand tools); depilation appliances, electric and non-electric.
The contested scissors; beard clippers; hair clippers for personal use, electric and non-electric; hand implements for hair curling; nail clippers, electric or non-electric; blades (hand tools); depilation appliances, electric and non-electric are all included in the broad category of, or overlap with, the opponent’s hand tools and implements (hand operated). Therefore, they are identical.
- 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. The degree of attention is considered to be average.
- The signs
|
ZEBRA |
|
|
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 common element ‘ZEBRA’ is meaningful in most of the European Member States’ 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 such as the United Kingdom.
The English word ‘ZEBRA’ refers to a wild African equid characterized by its distinctive black and white striped coats. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The earlier mark is a word mark, made up of the single word ‘ZEBRA’. The contested sign is a figurative mark; however it is made up of the single word ‘ZEBRA’ in a fairly standard typeface, in upper case letters, without any additional stylisation or elements.
Visually and aurally, the signs coincide in the distinctive word ‘ZEBRA’. They only visually differ in the very minor stylisation of the word in the contested sign, which however may even go unnoticed by part of the relevant consumers. Consequently, the earlier mark almost entirely coincides with the contested sign.
Hence, the marks are visually similar to at least a very high degree and aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Hence, the signs 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
As has been concluded above, the contested goods in Class 8 were found identical and are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually similar to (at least) a very high degree and aurally and conceptually identical.
The marks merely differ in the very minor stylisation of the contested sign (which moreover may even go unnoticed for part of the relevant consumers), so that clearly a likelihood of confusion exists.
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 6 775 944. It follows that the contested trade mark must be rejected for all the contested goods.
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 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
|
María Clara IBÁNEZ FIORILLO |
Edith Elisabeth VAN DEN EEDE |
Andrea VALISA
|
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.