GELINDO | Decision 2681230
Date Published: May 1, 2018
OPPOSITION No B 2 681 230
Griferias Galindo, C/ de l'Horta, 8, 08750 MOLINS DE REI / Barcelona, Spain (opponent), represented by Juan Carlos Vicente Ochoa Blanco-Recio, Cerro del Espino, 12, 28221 MAJADAHONDA (Madrid), Spain (professional representative)
a g a i n s t
Jingang Lu, No.10, Gaoxin South 4th Road, Nanshan District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).
On 10/02/2017, the Opposition Division takes the following
1. Opposition No B 2 681 230 is upheld for all the contested goods, namely
Class 11: Water purification installations; taps [cocks, spigots] [faucets (Am.)
for pipes; bath fittings; disinfectant apparatus.
2. European Union trade mark application No 14 942 461 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 14 942 461, namely against some of the goods in Class 11. The opposition is based on, inter alia, European Union trade mark registration No 11 251 352. The opponent invoked Article 8(1)(b) and 8(5) 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 European Union trade mark registration No 11 251 352.
- The goods
The goods on which the opposition is based are the following:
Class 11: Apparatus for water supply and sanitary purposes.
The contested goods are the following:
Class 11: Water purification installations; taps [cocks, spigots] [faucets (Am.)] for pipes; bath fittings; disinfectant apparatus.
The contested taps [cocks, spigots] [faucets (Am.)] for pipes are included in, or overlap with, the opponent’s broader category apparatus for water supply.
Moreover, the contested water purification installations; bath fittings; disinfectant apparatus is included in, or overlap with, the opponent’s broader category apparatus for sanitary purposes.
Therefore, the goods 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 both at the public at large as well as professional consumers, such as plumbers, repairmen, etc. The degree of attention will vary from average, for simple household items such as low-priced bath fittings, to high, especially for water supply apparatus which can be expensive and/or its installation will necessitate professional assistance.
- The signs
Earlier trade mark
The relevant territory is the European Union.
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.
Given that the signs are not meaningful in certain territories, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the German, Polish, Finnish, Estonian and Hungarian-speaking part of the public.
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 consisting of the word “Galindo” written in standard lowercase font preceded by a larger single capital letter “G” within two square brackets placed horizontally on its top and bottom, all in black. Being placed before the word “Galindo”, the public will be prone to see the single letter “G” in square brackets as an emphasis to the word’s initial letter. None of the sign’s elements could be considered more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark consisting of the word “GELINDO” written in fairly standard upper case black characters.
Visually, the signs coincide in “G*LINDO”, i.e. in all but one letter of the contested sign. They differ in the signs’ second letters “A”/”E”. The signs also differ in the single “G” letter in the earlier sign, although this letter is the same as the initial letter, “G”, of the coinciding word element, and will thus rather emphasise the signs’ coincidence in this letter.
The signs also differ in their stylisation, although both the earlier sign’s lower case and the contested sign’s capital letters are fairly standard. Moreover, 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. (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides the sound of the letters “G*LINDO”, present identically in both signs. The pronunciation differs in the sound of the signs’ second letters “A”/”E”. The elements “GALINDO”/”GELINDO”, only differing in their second sound, show significant similarities in rhythm and intonation. There is an additional initial sound “G” in the earlier mark, but since the following sound is also a “G”, this difference will have less impact.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the public in the relevant territory will perceive the concept of the single letter “G” in the earlier mark, while the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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
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 covered are from the same or economically linked undertakings.
Moreover, account is taken of the fact that consumers, even attentive ones, 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).
In the present case, the contested sign only differs from the earlier sign in its second “E” letter and in its stylisation, which has less impact than the verbal elements. The difference placed in the earlier sign’s stylised single letter “G” will also have limited impact as this letter will be seen as an accentuation of the initial letter of the sign’s other element “Galindo”; moreover, this letter is, incidentally, also the initial letter of the contested sign.
When confronted with the contested sign on identical goods, on account of the high aural as well as the visual similarity in the elements “GALINDO”/”GELINDO”, the reasonably well informed and reasonably observant and circumspect consumers, but even the highly attentive ones will readily assume that those goods come from the same or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the German, Polish, Finnish, Estonian and Hungarian-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. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right European Union trade mark registration No 11 251 352 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR. Nor is it necessary to examine the opponent’s claim to a family of marks with the common element “GALINDO”.
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
Cynthia DEN DEKKER
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.