IS: INCLUSIVE SHOWERING | Decision 2481722 - Ideal Standard International BVBA v. Norcros Group (Holdings) Limited
Date Published: May 1, 2018
OPPOSITION No B 2 481 722
Ideal Standard International NV, Corporate Village - Gent Building Da Vincilaan 2, 1935 Zaventem, Belgium (opponent), represented by Sipara Limited, Seacourt Tower Third Floor West Way, Oxford OX2 0JJ, United Kingdom (professional representative)
a g a i n s t
Norcros Group (Holdings) Limited, Ladyfield House, Station Road, Wilmslow, Cheshire SK9 1BU, United Kingdom (applicant), represented by Forresters, Rutland House, 148 Edmund Street, Birmingham B3 2JA, United Kingdom (professional representative).
On 11/01/2017, the Opposition Division takes the following
1. Opposition No B 2 481 722 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 362 132. The opposition is based on European Union trade mark registration No 6 764 724. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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 and services
The goods on which the opposition is based are the following:
Class 11: Installations and apparatus for water supply and sanitary purposes; bathroom suites; baths; showers; shower, toilet, washroom cubicles; shower cabinets, shower baths; shower bath cubicles; screens for baths, shower baths and for shower trays; shower enclosures; bath panels; lavatories, basins, bidets, water closets, urinals; cisterns and flushing apparatus for lavatories; water closet seats; pedestals for washbasins; sinks including metal sinks; whirlpool tubs and kits; spa tubs and hydromassage tubs; drinking fountains; fountains for washing the eyes; foot pools and foot spas; water filters; taps and mixer taps; taps and water fittings with flow and/or temperature control; shower heads; hand showers; shower supports; shower rails; electric lighting fittings; lampshades; mirror lamps; electrically heated towel rails and radiators; disinfectant dispensers and distributors for toilets; metallic and non-metallic handles for bath tubs; parts and fittings for all the aforesaid goods.
Class 20: Furniture, especially bathroom furniture; furniture and furniture fittings for bathrooms, washrooms, changing rooms, saunas and kitchens, all being non-metallic; mirrors; frames for mirrors and pictures; mirror holders; mirror display boards; storage units; lockers and benches; toilet and medicine cabinets; display boards; non-metallic bathroom hooks; coat hooks; hooks for towels and/or bath robes; shelves and shelving; worktops; non-metallic fittings for furniture, especially handles and hooks; support rails and grips; grab rails, non-metallic; bathroom and kitchen cabinets (furniture); venetian blinds and indoor slatted blinds, all made from non-textile materials; roller blinds made of wood or of non-textile materials; clothes stands, clothes racks, clothes rails; towel dispensers not of metal; water pipe valves of plastic; plugs (stoppers) not of metal; decorative plaques; parts and fittings for all the aforesaid goods.
Class 21: Small domestic utensils and containers, as well as holders therefor; dishes, holders and dispensers for soap, lotions and shampoos; closet brushes; toilet brushes, tooth brushes and drinking vessels; holders and dispensers for brushes, toilet paper, towels or drinking vessels; towel rails, rings and holders; pedal bins; waste bins; trays; towel baskets; laundry baskets; toilet sponges; toilet cases; vases; knobs and handles of porcelain or ceramics; decorative discs and plaques for bathroom fittings; parts and fittings for all the aforesaid goods.
The contested goods and services are the following:
Class 9: Control plates, panels, switches and devices for the local and remote operation of domestic showers, including wireless control devices for remote operation of electric showers; software, apps (software applications) and downloadable electronic publications relating to showers, shower installation, usage, maintenance and fault diagnosis; parts and fittings for all the aforesaid goods.
Class 11: Installations and apparatus, all for water supply and sanitary purposes; showers; showers for sale in kit form; electric showers; shower towers; shower units; pumped showers; power showers; pumped electric showers; mixer showers; thermostatic mixer showers; shower heads and roses; shower bath apparatus; shower cabinets; mixer valves; water heater apparatus; instantaneous water heaters for shower installations; flexible shower pipes; ablutionary devices; water conduit installations; heaters and hot air dryers for sanitary use; body dryers for bath/shower use; water distribution installations; water supply installations; water pipes for sanitary installations; t valves; taps; mixer taps; pipes (parts of sanitary installations); hot/cold water mixing valves; water heaters for showers; mixer valves for domestic and commercial ablutionary use; sanitary apparatus and installations; heating installations (water); bath fittings; bath installations; remote power packs in the form of water heaters for heating water remote from an associated shower outlet; bath plumbing fixtures; parts, fittings and accessories for all the aforesaid goods, including shower head support rails, riser rails, shower attachment kits, shower hoses, shower head attachment fittings, sliding shower head clamps and grips and shower wall brackets.
Class 37: Services for the installation, maintenance and repair of showers and shower bath installations, ablutionary devices, instantaneous electrical water heaters and apparatus and fittings for shower bath apparatus, including pumps.
Some of the contested goods are identical to goods on which the opposition is based (for example the contested showers in Class 11 that are identically included in the specification of the earlier mark). As regards the contested services, although they are not identical, it is clear that some of them are similar to the goods on which the opposition is based (for example services for the installation, maintenance and repair of showers in Class 37 that are similar to the earlier showers in Class 11 since they can coincide in distribution channels, relevant publics and providers/producers). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark and respectively as if all the contested services were similar to the goods of the earlier mark.
- 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 assumed to be identical and the services assumed to be similar (for the reasons explained above) are directed at the public at large, but also at business customers with specific knowledge or expertise. The degree of attention may vary from average to high depending on the nature and/or price of the goods and/or services or on the knowledge, experience and purchase involvement of the relevant public (for example some of the goods are technical and would therefore receive a higher than average degree of attention).
- 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 earlier mark is a figurative mark composed of two curved lines in grey, with a ‘dot’ placed above the line on the left. It is difficult to readily ascertain what consumers will discern in the earlier mark, given that the combination of the two curved lines can be perceived by the public in different ways. The line on the left may be perceived as a highly stylised lower case letter ‘i’ (due the ‘dot’ placed above the line) and the line on the right as a stylised capital letter ‘S’ (as it has a similar shape to said letter). Finally, another part of the public might only perceive one of the lines in the mark as a stylised letter, while some might only perceive the mark as figurative (an abstract combination of curved lines, without any meaning).
Considering the various scenarios laid out regarding the different possible perceptions of the earlier trade mark, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that will perceive the earlier mark as a stylised rendition of the letters ‘iS’, as this is clearly a plausible scenario and it is the scenario which is most favourable for examining the opponent’s case.
The opponent claims that its mark ‘encompasses the letters IS, an obvious acronym of their Ideal Standard name on products’. There is however no evidence on file to support a finding that the public will see the combination of these letters as having this specific semantic content in relation to the goods at issue. Therefore, such claim has to be put aside. In fact, the Opposition Division is rather of the view that for the relevant public the combination of such letters will have no immediately perceptible meaning in relation to the goods at issue and it is, therefore, of normal distinctiveness.
The contested sign is also a figurative mark composed of the letters ‘IS’ in standard upper case dark grey script, followed by a colon in light grey and by the words ‘INCLUSIVE’ (in bold and black/dark grey letters) and ‘SHOWERING’ (in standard and black/dark grey letters and placed under ‘INCLUSIVE’). As explained above, the combination of letters ‘IS’ does not convey on its own any immediately perceivable concept and is of average distinctiveness for the goods and services in question, even if it will (at least by a part of the relevant public) be perceived as short for ‘INCLUSIVE SHOWERING’ in the contested sign. The English-speaking part of the relevant public will understand ‘INCLUSIVE’ as referring to, inter alia, ‘including all the services or items normally expected or required’ or ‘not excluding any section of society or any party involved in something’ (information extracted from Oxford Dictionaries on 11/01/2017 at https://premium.oxforddictionaries.com/definition/english/inclusive) and ‘SHOWERING’ (or to shower) as meaning ‘wash oneself in a shower’ (information also extracted from Oxford Dictionaries on 11/01/2017 at https://premium.oxforddictionaries.com/definition/english/shower). It follows that the juxtaposition of words ‘INCLUSIVE SHOWERING’ will be evocative of ‘something which is intended to cover all items, costs or services relating to showering’. Furthermore, it cannot be excluded that this expression is perceived as referring to ‘showering open to everyone’ (hence, also for disabled people and people with mobility issues), as argued by the opponent in its letter of 14/07/2015, where it makes reference to the fact that this expression ‘is used to indicate goods such as shower products that are ‘inclusive’ of all consumers including the elderly and disabled’. In any case, given that the relevant goods are either showers or various other goods related thereto and that the relevant services are purported to be rendered in connection with showers or showering-related apparatus/devices, the relevant English-speaking consumers will attach little trade mark significance to these words.
However, there will also be a part of the public for which the words ‘INCLUSIVE SHOWERING’ do not convey any meaning. Moreover, another part of the public might only understand the word ‘INCLUSIVE’ as meaning ‘together with’ or ‘including’, since it is written and pronounced similarly in other languages of the European Union, such as in Spanish (‘inclusivo’), Italian (‘inclusivo’) and Romanian (‘inclusiv’). For this part of the public ‘INCLUSIVE SHOWERING’ is of average distinctiveness. Finally, the colon is merely a simple punctuation sign, which has less trade mark significance, if any at all.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide only in that they both contain the combination of the letters ‘IS’. The opponent argues that the earlier mark ‘has some stylisation but it is clearly the letters IS that are the visually dominant element of both marks’ and therefore, the marks would be ‘highly visual similar’. The Opposition Division cannot agree with this view. There are significant visual differences between the marks as a whole, considering how the combination of letters ‘IS’ is depicted in the conflicting signs. In contrast to the contested sign (where ‘IS’ is rendered in a standard font and both letters are of an equal height and thickness), ‘iS’ is rendered in a highly stylised font in the earlier mark, with the line forming the letter ‘i’ being thicker in its upper part and curved under the ‘S’ in a way that gives the impression of the ‘S’ being placed above the ‘i’, not beside it. The Opposition Division further notes that the coinciding element of the signs only contains two letters and that the length of the signs (or verbal elements) may influence 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. In this case, the contested sign also contains the elements ‘INCLUSIVE SHOWERING’ and a colon and has, altogether, a different length and structure than the earlier mark. As mentioned above, ‘INCLUSIVE SHOWERING’ might be understood as weak for part of the relevant public, however, it is distinctive for another part and has (for the latter part) a significant influence on the visual comparison of the signs. In any case even taking into account the limited weight attributed to ‘INCLUSIVE SHOWERING’ by part of consumers, it is still considered that the marks present significant differences susceptible to create a distinct visual overall impression. Therefore, the signs are visually dissimilar.
Aurally, the earlier mark will be pronounced identical to the element ‘IS’ in the contested sign. However, the contested sign will be pronounced in a total of 18 more letters than the earlier mark (because of the additional elements of ‘INCLUSIVE SHOWERING’). Therefore, the Opposition Division finds the signs aurally similar to a low degree.
Conceptually, the earlier mark contains the letters ‘iS’, a combination which is without a meaning for the relevant public. On the other hand (and as explained above), for a part of the public the contested sign will convey the concept of ‘INCLUSIVE SHOWERING’ or, as the case may be, that of the word ‘INCLUSIVE’. Therefore, for this part of the public, the signs are conceptually not similar. For the remaining part (that does not associate either sign with a concept) a conceptual comparison is not possible and the conceptual aspect does not influence the comparison of the signs. Finally, this conclusion is not called into question by the presence of the colon in the contest sign (for the reasons explained above).
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 stated above in section c) of this decision, the assessment of the similarity of the signs has been carried out based on the perception of the public that sees the earlier mark as ‘iS’. This is the most favourable scenario in which the opponent’s case can be examined, which is however without prejudice to the applicant, as it will be shown herein below.
The signs have been found to be visually dissimilar since, as explained in detail in section c), the overall visual impression that each mark makes on the relevant public is clearly distinct. Moreover, the signs are only aurally similar to a low degree and for some of the consumers they are conceptually not similar (whereas for the remaining part of the relevant public, a conceptual comparison of the signs is not possible). Considering all the above, even assuming that the goods are identical and the services are similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for that part of the public that does not perceive the earlier mark as ‘iS’ (e.g. only as merely figurative), as the outcome of the present decision would still be the same. Indeed, if there is no likelihood of confusion for those consumers that perceive ‘iS’ in the earlier mark, a fortiori, there is no likelihood of confusion for those consumers who do not see such letter combination (or only see one letter), since the signs will be even further apart.
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
VAN DEN EEDE
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.