revolution | Decision 2858796
Date Published: Feb 7, 2018
OPPOSITION DIVISION
OPPOSITION No B 2 858 796
Photo-Me International PLC, Church Road, Bookham, Surrey KT23 3EU, United
Kingdom (opponent), represented by Baron Warren Redfern, 1000 Great West
Road
Brentford TW8 9DW, United Kingdom (professional representative)
a g a i n s t
Hendi Polska Sp. z o.o., ul. Magazynowa 5, 62-023 Gądki, Poland (applicant),
represented by Paweł Waszak, Os. Kościuszkowców 14/7, 62-020 Swarzędz,
Poland (professional representative).
On 02/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 858 796 is partially upheld, namely for the following
contested goods:
Class 7: Dishwashers; dish washing machines for industrial purposes.
2. European Union trade mark application No 15 872 856 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 15 872 856 for the figurative mark , namely against
all the goods in Classes 3, 7 and 11. The opposition is based on European Union
trade mark registration No 11 401 701 for the word mark ‘REVOLUTION’.
The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 858 796 page: 2 of 8
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Laundry washing machines; coin operated laundry washing machines.
Class 11: Laundry drying machines; coin operated laundry drying machines.
Class 37: The provision of washing and drying laundry facilities; the provision of
coin operated washing and drying machines; rental of laundry equipment;
the provision of a laundrette service.
The contested goods and services are the following:
Class 3: Detergents; washing-up detergent; dishwasher detergents; liquid
dishwasher detergents; dishwashing liquid; washing liquids.
Class 7: Dishwashers; dish washing machines for industrial purposes; liquidizers
[kitchen machines]; filling machines; kitchen tools [electric utensils].
Class 11: Ovens; kitchen ranges; ovens; exhaust hoods [cooker hoods]; exhaust
hoods for kitchens; sinks; kitchen sinks; refrigerators; freezers; cooling
apparatus; cold storage rooms.
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.
Additionally, it is to be noted that according to Article 33(7) EUTMR, goods or
services are not regarded as being similar to or dissimilar from each other on the
ground that they appear in the same or different classes under the Nice
Classification.
Contested goods in Class 3
The contested detergents; washing-up detergent; washing liquids are all cleansing
substances that act similarly to soap but are made from chemical compounds rather
than fats and lye. These contested goods are dissimilar to the opponent´s laundry
washing machines; coin operated laundry washing machines in Class 7. While these
goods may be used in combination with each other and by the same relevant public,
they differ in nature, methods of use and they have different channels of distribution.
Decision on Opposition No B 2 858 796 page: 3 of 8
They would normally be produced by different companies, thus their usual origin is
different and they are not in competition.
Likewise, the contested dishwasher detergents; liquid dishwasher detergents;
dishwashing liquid are dissimilar to the opponent´s laundry washing machines and
indeed coin operated laundry washing machines in Class 7. These contested goods
consist of various cleansing substances with a very specific purpose, i.e. to clean
dishes, while the opponent´s goods are intended to clean laundry. They also differ in
nature, distribution channels and usual origin. They are neither complementary, nor in
competition with each other.
All of the contested goods in Class 3 are also dissimilar to the opponent´s laundry
drying machines; coin operated laundry drying machines in Class 11, which are even
more remote on account of their different purpose, which is to dry laundry. They also
differ in nature, distribution channels and usual origin. They are neither
complementary, nor in competition with each other.
These contested goods are also clearly dissimilar to the opponent´s services in Class
37 the provision of washing and drying laundry facilities; rental of laundry equipment;
the provision of a laundrette service, which main aim is to clean and/or dry laundry.
They differ in nature (goods versus services), distribution channels, relevant public
and usual origin. All the contested goods in Class 3 are also dissimilar to the
opponent´s services the provision of coin operated washing and drying machines in
Class 37. As there is no specification regarding the purpose of these machines, this
category must be understood as covering also provision of coin operated dish
washing machines. However, the mere fact that various washing machines may use
detergents, including dishwasher detergents, in order to clean is not sufficient to
render these goods and services similar. Further, they differ in nature (goods versus
services), distribution channels and usual origin.
Contested goods in Class 7
The contested dishwashers; dish washing machines for industrial purposes are
considered similar to the opponent´s laundry washing machines in Class 7. The
opponent´s laundry washing machines is a broad category which must be
understood as covering also laundry washing machines for industrial purposes. The
goods in comparison have the same nature and method of use. They share the same
distribution channels and they coincide in the relevant public. Both the manufacturing
sites and methods of manufacture of these goods are similar. Producers of the
contested goods often manufacture also washing machines, thus these goods may
have the same usual origin.
By contrast, the contested liquidizers [kitchen machines]; filling machines; kitchen
tools [electric utensils] are, in general terms, electric appliances or tools used in the
kitchen for the purpose of processing and preparation of food and beverage,
including chopping, mixing, pressing. They are not intended for cooking as this is the
purpose of the goods covered by Class 11. These contested goods are dissimilar to
any of the opponent´s goods and services in Classes 7, 11 and 37 which are
confined to washing and drying machines and services connected with either
washing or drying. The contested goods and the opponent’s goods and services
have different intended purposes and methods of use, they are neither
complementary or in competition with each other. Also the usual origin of these
goods and services is different.
Contested goods in Class 11
Decision on Opposition No B 2 858 796 page: 4 of 8
The contested ovens; kitchen ranges; ovens are appliances for heating, grilling,
roasting and cooking of food. The doubled use of the word ovens in the English list of
contested goods in Class 11 results from translation issues. The original list of goods
and services in the Polish language covers ‘piece kuchenne’ and ‘piekarniki’, both of
which may be translated as ‘ovens’ into the English language. Both of these terms
cover very similar appliances which may be used for heating, grilling, roasting and
cooking of food. The contested refrigerators; freezers; cooling apparatus; cold
storage rooms are insulated compartments, cabinets or rooms in which a subfreezing
temperature is maintained for the rapid freezing and storing of perishable items,
especially food. All of the above goods are dissimilar to any of the earlier goods or
services in Classes 7, 11 and 37 which are connected with either washing and drying
machines and washing and drying services. They have very different intended
purposes, they are neither complementary nor in competition with each other. Also
the usual origin of these goods and services is different. The opponent’s services in
Class 37 additionally have different nature.
The contested exhaust hoods [cooker hoods]; exhaust hoods for kitchens are
devices containing a mechanical fan that extracts smoke or fumes from a room, and
in case of the latter from a kitchen. The contested sinks; kitchen sinks are water
basins fixed to a wall or floor and having a drainpipe and generally a piped supply of
water. These contested goods (hoods and sinks) are also dissimilar to any of the
opponent’s goods and services in Classes 7, 11 and 37. They have different nature,
intended purposes, methods of use and usual origin. They are neither
complementary nor in competition with the earlier goods and services.
For the sake of completeness, the Opposition Division notes that the opponent
argues with regard to the comparison of the earlier goods in Class 7 and the
contested goods in Classes 7 and 11 that all these goods are the so-called “white
goods” for the kitchen. The opponent argues that these goods perform different
functions, but are sold through the same channels, to the same end users and that
there would be a reasonable expectation on the part of those users that
a manufacturer of such goods would manufacture all of them. The opponent claims
that all major manufacturers of dishwashing machines also produce laundry washing
machines as well as that all major manufacturers of ovens, exhaust hoods, sinks,
refrigerators and freezers also produce laundry drying machines.
The Opposition Division agrees that laundry washing machines in Class 7 may have
the same usual origin as dishwashers and dish washing machines in Class 7, for the
reasons explained in the earlier paragraphs. However, such a trade custom cannot
be established with regard to the remaining contested goods in Classes 7 and 11, as
suggested by the opponent. While it cannot be excluded that some manufacturers of
washing machines may produce also other contested goods, this would be an
exceptional case and not a rule on the market. These goods have different methods
of manufacture and different manufacturing sites. Also, their production requires
different skills and expertise. It thus cannot be established that the usual origin of
these goods is similar. The mere fact that these goods may have similar distribution
channels and end users is not sufficient to render them similar. All of these goods
have very different intended purposes and serve to satisfy different needs.
Consequently, these goods are dissimilar.
b) Relevant public — degree of attention
Decision on Opposition No B 2 858 796 page: 5 of 8
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 that were found to be similar are directed primarily at
the public at large, however part of the goods in Class 7 intended for industrial
purposes are also directed at business customers with specific professional
knowledge or expertise. The degree of attentiveness of the relevant public may thus
vary from average to high, depending on the price, specialised nature, or terms and
conditions of the purchased goods and services.
c) The signs
REVOLUTION
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 coinciding verbal element ‘REVOLUTION’ has a meaning in English, namely ‘the
overthrow or repudiation of a regime or political system by the governed; a far-
reaching and drastic change, especially in ideas, methods, etc.; a movement in or as
if in a circle, one complete turn in such a circle; the orbital motion of one body, such
as a planet or satellite, around another’ The word ‘REVOLUTION’ may also be used
in relation to washing or drying machines to indicate the revolutions per minute (rpm)
of the spin speed. However, the above meanings would not be understood
throughout the territory of the European Union. For example, the word
‘REVOLUTION’ is meaningless in territories where Hungarian language is
understood, which affects perception of the sign by the public in these territories and
the assessment of the likelihood of confusion. The word ‘REVOLUTION’ is neither a
basic English word, nor a commonly used one. And the respective verbal equivalent
of this word is very different, namely ‘forradalom’.
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 application.
Consequently, the Opposition Division finds it appropriate to focus the comparison on
the Hungarian-speaking part of the relevant public.
Decision on Opposition No B 2 858 796 page: 6 of 8
The earlier mark is a word mark consisting solely of the word ‘REVOLUTION’ which,
as noted above, will be considered meaningless and, thus, distinctive for the earlier
goods.
The contested mark is a figurative mark composed of a stylised four-pointed star with
a dashed circle inside it and the word ‘REVOLUTION’ written in a simple typeface in
upper case characters. Both elements are depicted in red. Neither the verbal
element, nor the figurative one has any meaning for the contested goods, thus both
of them are considered distinctive.
No element of the contested sign is clearly more eye-catching then the remaining
ones.
Visually, the signs coincide in the element ‘REVOLUTION’ which constitutes the
entire earlier mark and the only word element of the contested sign. They differ in the
stylisation of the verbal element and in the figure device of the contested mark,
which, however, have less impact on the consumer then verbal elements. It should
be noted that 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. This is because the public does not tend to
analyse signs and will more easily refer to the signs in question by their verbal
element than by describing their figurative elements (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). Consequently, the signs are visually similar to a high
degree.
Aurally, both signs will be pronounced identically in four syllables as /re-vo-lu-tion/.
The figurative element and stylisation of the contested sign is not subject to an aural
assessment. Therefore, the signs are aurally identical.
Conceptually, neither of the verbal elements of the signs has a meaning for the part
of the public in the relevant territory, as defined above. The concept of a four-pointed
star of the contested sign is not present in earlier sign, thus both signs are not similar
conceptually.
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 and services in question from the perspective of the
relevant public. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
Decision on Opposition No B 2 858 796 page: 7 of 8
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified. It must be
appreciated globally, taking into account all factors relevant to the circumstances of
the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18;
11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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 goods and services in comparison have been found partially similar and partially
dissimilar. The signs are visually similar to a high degree and aurally identical. The
signs are not similar conceptually. The earlier mark has a normal degree of
distinctiveness for the relevant public.
The relevant public is the public at large displaying an average to high level of
attentiveness.
The earlier mark is reproduced in its entirety in the contested sign which differs only
in stylisation of this word and a relatively simple figurative device representing a four-
pointed star. In view of the identical verbal elements the differences between the
signs are not sufficient to overcome the overall impression of similarity. It should be
recalled that consumers are more likely to remember the verbal element, and will
refer to the goods in question by the verbal element of the mark rather than by
describing its figurative element.
Taking into account the interdependence principle mentioned above, and 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), which applies likewise to the
consumers who pay a high degree of attention (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54), the Opposition Division considers that there is a likelihood of
confusion for the Hungarian-speaking part of the public, both with average and high
degree of attentiveness, for the goods considered to be similar. Therefore, the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration No 11 401 701. 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. It follows that the contested trade mark
must be rejected for all the contested goods found to be similar to those of the earlier
trade mark.
The opposition is not successful insofar as the goods that are dissimilar are
concerned, namely all the goods in Classes 3 and 11 and part of the goods in Class
7. 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.
Decision on Opposition No B 2 858 796 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Elena NICOLÁS GÓMEZ Jakub MROZOWSKI Lucinda CARNEY
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.