OPPOSITION No B 2 494 352

Hitachi Appliance kabushiki Kaisha (d/b/a Hitachi Appliances, Inc.), 16-1, Kaigan 1-chome, Minato-ku, Tokyo, Japan, (opponent), represented by Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft mbB, Prielmayerstr. 3, 80335 München, Germany (professional representative)

a g a i n s t

iHaus AG, Siedlerstraße 2, 85774 Unterföhring, Germany (applicant), represented by Jan-David Hecht, Ranstädter Steinweg 28, 04109 Leipzig, Germany (professional representative).

On 21/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 494 352 is partially upheld, namely for the following contested goods:

Class 11 Apparatus for heating, steam generating, refrigerating, drying, ventilating purposes; Heating boilers; Heating installations; Air conditioning installations; Humidifiers for central heating radiators; Air deodorising apparatus; Filters for air conditioning; Feeding apparatus for heating boilers; Thermostatic taps for heating apparatus; Air conditioning fans; Heat pumps; Heat regenerators; Heat accumulators; Heat exchangers, not parts of machines; Water heaters (apparatus); Water heaters; Heating installations [water]; Water coolers; Central heating radiators.

2. European Union trade mark application No 13 257 019 is rejected for all the above mentioned goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 257 019. The opposition is based on European Union trade mark registration No 12 429 254. The opponent invoked Article 8(1)(a) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (b) EUTMR

In its notice of opposition dated 17/03/2015 the opponent claimed Article 8(1)(a) EUTMR as the basis of its opposition.

In this regard, it should be noted that, although the specific conditions under Article 8(1)(a) and Article 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Opposition Division will still examine the case under Article 8(1)(b) EUTMR which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations in which both marks and goods/services are similar and also situations in which the marks are identical and the goods/services are similar or vice versa.

Therefore, although the opponent has not explicitly based its opposition on Article 8(1)(b) EUTMR during the opposition period, the opponent’s claim to double identity will be construed as being also a claim to likelihood of confusion and the opposition will be examined on the ground of Article 8(1)(b) EUTMR as the signs are not identical in the present case.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 11 Room air conditioners.

The contested goods are the following:

Class 7

Machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines; Aerated beverage and water-making apparatus; Aerating pumps for aquaria; Cleaning appliances utilizing steam; Electric can openers; Elevators [lifts]; Electric, hydraulic or pneumatic window openers; Electric, hydraulic or pneumatic window closers; Fruit presses, electric, for household purposes; Grating machines for vegetables; Washing machines for crockery; Drills (Electric hand -); Hand-held tools, other than hand-operated; High pressure washers; Coffee grinders, other than hand operated; Kneading machines; Elevators [lifts]; Blenders, electric, for household purposes; Mills for household purposes, other than hand-operated; Sewing machines; Lawn mowers; Escalators; Beaters, electric; Snow ploughs; Shoe polishers, electric; Rinsing machines; Electric, hydraulic or pneumatic door openers; Electric, hydraulic or pneumatic door closers; Washing machines; Electric kitchen grinders; Parts, components and accessories for all the aforesaid goods (included in class 7).

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Ammeters; Antenna, broadband cable and satellite installations; Batteries and installations consisting thereof; Downloadable music files; lightning protection installations; Compact disc players; Data and communications network installations, consisting of passive network apparatus and components, including power networks and interface modules therefor, including patch panels, junction boxes and patch cables, and active network apparatus and components, including routers, switches, and W-LAN components necessary for signal transmission on intranets and on the Internet (included in class 9); Detectors; Transparency projection apparatus; Digital photo frames; Printers for computers; Pressure measuring apparatus; DVD players; EIB (European Installation Bus) and LON (Local Operating Network) installations, included in class 9; Fire alarm systems and intruder detection systems; ELA (electroacoustic) installations, including SAA (voice alarm) installations, having loudspeakers, control apparatus, amplification apparatus, intercom units and audio storage devices, and used for broadcasting, music broadcasting and alarm devices; Electric display apparatus; Electric apparatus and installations for monitoring building information, and systems consisting thereof (included in class 9); Electric and electronic pagers and installations consisting thereof (included in class 9); Electric and electronic apparatus for generating, activating and transmitting acoustic evacuation signals, and systems consisting thereof for assisting in the evacuation of persons from public, commercial and private buildings (included in class 9); Electric and electronic apparatus having lighting devices for generating, activating and transmitting optical evacuation signals and systems consisting thereof for assisting the evacuation of persons from public, commercial and private buildings; Ignition (Electric apparatus for remote -); Electric identification apparatus; Electrotechnical apparatus, namely electronic display boards; Television apparatus; Telephones; Film cameras; Remote control apparatus; Gas testing instruments; Gas flow meters; Gas meters (measuring apparatus); Electronic apparatus for recording, compilation, evaluation, storage, transmission and interpretation of sensor measurement data from an intelligent apartment or smart home and for smart metering; Electronic apparatus and installations consisting thereof (included in class 9), namely installations in the field of energy supply, energy distribution and supply to consumers for public, commercial and private real estate (included in class 9); Equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for measuring, regulating and checking energy, gas, cold, electricity, heat and water, and for recording data relating thereto, all included in class 9; Equipment and apparatus and installations constructed therefrom in the field of media technology and media control for acoustic and optical media, included in class 9, in particular apparatus in the field of audio technology, audio production, audio design, communications engineering, telecommunications, video technology and video production, junction boxes (electricity); Apparatus for viewing and showing on video; Apparatus for controlling, regulating and for effecting the automatic operation (included in class 9) of technical equipment in living spaces for the purpose of increasing the comfort and safety of residents; Apparatus, included in class 9, for monitoring the living space and health of residents by means of sensors and for triggering automatic telephone or other calls for help transmitted via data or speech networks (monitoring apparatus and alarms), integrated circuit cards (smart cards); Equipment failure warning systems; Headphones; Loudspeakers; Signs, luminous; Identity cards, magnetic; Encoded magnetic cards; Custom-made data processing equipment and installations and systems consisting thereof, included in class 9; Measuring and checking (supervision) apparatus for gases and liquids (included in class 9); Mobile phones; Downloadable music files; Vehicles (Navigation apparatus for -) [on-board computers]; Radios; Smoke detectors; Switchboards; Transmitters and receivers of electronic signals; Smartphones; Voice alarm devices and systems consisting thereof; Control and regulating apparatus for electricity; Telephone installations; Thermometers, not for medical purposes; Temperature controlling apparatus; Peepholes [magnifying lenses] for doors; Electric door bells; Uninterruptible power systems; USB flash drives; Video baby monitors; Heating meters; Water level indicators; Water meters, including water meters for houses, water meters for flats; WebCam; Counting apparatus; Meters; Meters for thermal energy; Time switches, automatic; Access control apparatus and installations consisting thereof (included in class 9); All the aforesaid apparatus and installations consisting thereof, including remotely controllable, in particular remotely readable, and for automatic and/or wireless data capture, including receiver units relating thereto, light control installations; Parts, components and accessories for all the aforesaid goods (included in class 9).

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Extractor hoods for kitchens; Heaters, electric, for feeding bottles; Bath fittings and installations; Barbecues; Apparatus for lighting; Light-emitting diodes [LED] lighting apparatus; Bidets; Tanning apparatus [sun beds]; Bread baking machines; Toasters; Lights, electric, for Christmas trees; Electric pressure cookers; Ceiling lights; Pressure water tanks; Ice chests; Electric kettles; Gas burners; Gas boilers; Upright and chest freezers; Beverage cooling apparatus; Grills (cooking appliances), rotisseries; Hair driers [dryers]; Water heaters; Heating boilers; Heating installations; Hot air ovens; Coffee machines, electric; Air conditioning installations; Cooking utensils, electric; Cookers; Cooking rings; Chandeliers; Refrigerating cabinets; Electric lamps; Water-pipes for sanitary installations; Humidifiers for central heating radiators; Air deodorising apparatus; Filters for air conditioning; Microwave ovens; Regulating and safety accessories for water or gas pipes and water or gas apparatus; Sanitary apparatus; Sauna bath installations; Feeding apparatus for heating boilers; Lamps; Thermostatic taps for heating apparatus; Water closets; Urinals [sanitary fixtures]; Air conditioning fans; Heat pumps; Heat regenerators; Heat accumulators; Heat exchangers, not parts of machines; Water heaters (apparatus); Water heaters; Heating installations [water]; drying machines (electric) for laundry; Water coolers; Water distribution installations; Water purification installations; Water purifying apparatus and machines; Water supply installations; Water distribution installations; Whirlpool-jet apparatus; Central heating radiators; Parts, components and accessories for all the aforesaid goods (included in class 11).

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

It should also be noted that the mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61).

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.

Contested goods in Class 7

The contested Machine tools; Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines; Aerated beverage and water-making apparatus; Aerating pumps for aquaria; Cleaning appliances utilizing steam; Electric can openers; Elevators [lifts]; Fruit presses, electric, for household purposes; Grating machines for vegetables; Washing machines for crockery; Drills (Electric hand -); Hand-held tools, other than hand-operated; High pressure washers; Coffee grinders, other than hand operated; Kneading machines; Elevators [lifts]; Blenders, electric, for household purposes; Mills for household purposes, other than hand-operated; Sewing machines; Lawn mowers; Escalators; Beaters, electric; Snow ploughs; Shoe polishers, electric; Rinsing machines; Washing machines; Electric kitchen grinders; Parts, components and accessories for all the aforesaid goods (included in class 7) have no relevant points of contact with the earlier room air conditioners in class 11 which can be regarded as synonym to room air conditioning apparatus. The goods have a different nature, a different purpose and different method of use. They are not complementary nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to the earlier goods.

With the contested Motors and engines (except for land vehicles) the opponent claims that motors and engines include motors and engines for air conditioners and broadly overlap and complete each other and are therefore similar. It may be true that motors are needed to drive air conditioning apparatus but that is not enough to conclude that those goods are similar. The mere fact that a particular good is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different. Parts of apparatus such as motors for air conditioners are mostly not visible on the outside and are made by other undertakings. The same argument is valid for the contested Electric, hydraulic or pneumatic window openers; Electric, hydraulic or pneumatic window closers; Electric, hydraulic or pneumatic door openers; Electric, hydraulic or pneumatic door closers. The fact that the door and window openers may in any way alter the environment of a space is equally not sufficient to establish an automatic similarity between the finished product and its parts or other parts outside the device itself. These goods under comparison are therefore dissimilar.

Contested goods in Class 9

The contested Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, lifesaving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines; Fire-extinguishing apparatus; Ammeters; Antenna, broadband cable and satellite installations; Batteries and installations consisting thereof; Downloadable music files; lightning protection installations; Compact disc players; Data and communications network installations, consisting of passive network apparatus and components, including power networks and interface modules therefor, including patch panels, junction boxes and patch cables, and active network apparatus and components, including routers, switches, and W-LAN components necessary for signal transmission on intranets and on the Internet (included in class 9); Transparency projection apparatus; Digital photo frames; Printers for computers; Pressure measuring apparatus; DVD players; EIB (European Installation Bus) and LON (Local Operating Network) installations, included in class 9; Fire alarm systems and intruder detection systems; ELA (electroacoustic) installations, including SAA (voice alarm) installations, having loudspeakers, control apparatus, amplification apparatus, intercom units and audio storage devices, and used for broadcasting, music broadcasting and alarm devices; Electric display apparatus; Electric and electronic pagers and installations consisting thereof (included in class 9); Electric and electronic apparatus for generating, activating and transmitting acoustic evacuation signals, and systems consisting thereof for assisting in the evacuation of persons from public, commercial and private buildings (included in class 9); Electric and electronic apparatus having lighting devices for generating, activating and transmitting optical evacuation signals and systems consisting thereof for assisting the evacuation of persons from public, commercial and private buildings; Ignition (Electric apparatus for remote -); Electric identification apparatus; Electrotechnical apparatus, namely electronic display boards; Television apparatus; Telephones; Film cameras; Gas testing instruments; Gas flow meters; Gas meters (measuring apparatus; Electronic apparatus and installations consisting thereof (included in class 9), namely installations in the field of energy supply, energy distribution and supply to consumers for public, commercial and private real estate (included in class 9); Equipment and apparatus and installations constructed therefrom in the field of media technology and media control for acoustic and optical media, included in class 9, in particular apparatus in the field of audio technology, audio production, audio design, communications engineering, telecommunications, video technology and video production, junction boxes (electricity); Apparatus for viewing and showing on video; Apparatus, included in class 9, for monitoring the living space and health of residents by means of sensors and for triggering automatic telephone or other calls for help transmitted via data or speech networks (monitoring apparatus and alarms), integrated circuit cards (smart cards); Equipment failure warning systems; Headphones; Loudspeakers; Signs, luminous; Identity cards, magnetic; Encoded magnetic cards; Custom-made data processing equipment and installations and systems consisting thereof, included in class 9; Mobile phones; Downloadable music files; Vehicles (Navigation apparatus for -) [on-board computers]; Radios; Smoke detectors; Switchboards; Transmitters and receivers of electronic signals; Smartphones; Voice alarm devices and systems consisting thereof; Control and regulating apparatus for electricity; Telephone installations; Peepholes [magnifying lenses] for doors; Electric door bells; Uninterruptible power systems; USB flash drives; Video baby monitors; Water level indicators; Water meters, including water meters for houses, water meters for flats; WebCam; Access control apparatus and installations consisting thereof (included in class 9); All the aforesaid apparatus and installations consisting thereof, including remotely controllable, in particular remotely readable, and for automatic and/or wireless data capture, including receiver units relating thereto, light control installations; Parts, components and accessories for all the aforesaid goods (included in class 9) have no relevant points of contact with the earlier goods in Class 11. The goods have a different nature, a different purpose and different method of use. They are not complementary nor in competition with each other. Moreover, they are not likely to be produced by the same undertakings, they are distributed through different sales channels and they target different end-users. Therefore, these goods are dissimilar to the earlier goods.

For the goods ‘measuring and checking (supervision) apparatus and instruments; data processing equipment, computers; Computer software; Detectors; Electric apparatus and installations for monitoring building information, and systems consisting thereof (included in class 9); Remote control apparatus; Electronic apparatus for recording, compilation, evaluation, storage, transmission and interpretation of sensor measurement data from an intelligent apartment or smart home and for smart metering; Equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for measuring, regulating and checking energy, gas, cold, electricity, heat and water, and for recording data relating thereto, all included in class 9; Apparatus for controlling, regulating and for effecting the automatic operation (included in class 9) of technical equipment in living spaces for the purpose of increasing the comfort and safety of residents; Measuring and checking (supervision) apparatus for gases and liquids (included in class 9); Thermometers, not for medical purposes; Temperature controlling apparatus; Counting apparatus; Meters; Meters for thermal energy; Time switches, automatic’ it may also be true that they are needed to drive, control or steer air conditioning apparatus but that is not enough to conclude that those goods are similar. The mere fact that a particular good is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar since, in particular, their nature, intended purpose and the customers for those goods may be completely different. These parts are mostly not visible on the outside and are made by other undertakings. Therefore, these goods are considered dissimilar to the earlier goods

Contested goods in Class 11

The contested Apparatus for heating, steam generating, refrigerating, drying and ventilating purposes include, as a broader category, the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Air conditioning installations are identically contained in both lists of goods (including synonyms). The goods are identical.

The contested Heating boilers; Heating installations; Humidifiers for central heating radiators; Air deodorising apparatus; Filters for air conditioning; Feeding apparatus for heating boilers; Thermostatic taps for heating apparatus; Air conditioning fans; Heat pumps; Heat regenerators; Heat accumulators; Heat exchangers, not parts of machines; Water heaters (apparatus); Water heaters; Heating installations [water]; Water coolers; Central heating radiators are all independent devices or parts of air conditioning apparatus that share the same function of regulating the climate or temperature of the environment with the earlier room air conditioners. They share the same purpose, are sold at the same outlets, made by the same undertakings, are either complementary or in competition with each other and are directed at the same public. Therefore they are considered similar.

The contested Apparatus for water supply and sanitary purposes; Extractor hoods for kitchens; Heaters, electric, for feeding bottles; Bath fittings and installations; Barbecues; Apparatus for lighting; Light-emitting diodes [LED] lighting apparatus; Bidets; Tanning apparatus [sun beds]; Bread baking machines; Toasters; Lights, electric, for Christmas trees; Electric pressure cookers; Ceiling lights; Pressure water tanks; Ice chests; Electric kettles; Gas burners; Gas boilers; Upright and chest freezers; Beverage cooling apparatus; Grills (cooking appliances), rotisseries; Hair driers [dryers]; Water heaters; Hot air ovens; Coffee machines, electric; Cooking utensils, electric; Cookers; Cooking rings; Chandeliers; Refrigerating cabinets; Electric lamps; Water-pipes for sanitary installations; Microwave ovens; Regulating and safety accessories for water or gas pipes and water or gas apparatus; Sanitary apparatus; Sauna bath installations; Lamps; Water closets; Urinals [sanitary fixtures]; Water heaters (apparatus);; drying machines (electric) for laundry; Water distribution installations; Water purification installations; Water purifying apparatus and machines; Water supply installations; Water distribution installations; Whirlpool-jet apparatus; Parts, components and accessories for all the aforesaid goods (included in class 11) have no relevant points of contact with the earlier room air conditioners. The goods have a different nature, a different purpose and different method of use. They are not in competition with each other. Some of the goods may be produced by the same undertakings and distributed through similar sales channels, but they do target other end-users than the consumer in search of air conditioning apparatus. Therefore, these goods are dissimilar to the earlier goods.

2. 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 and similar are directed at the general public and at a professional public with specific knowledge and expertise. The degree of attention will vary from average to higher than average because some of the relevant goods, such as air conditioners, are only purchased infrequently for a specific need and are more expensive goods.

3. The signs

SUMMIT
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 earlier mark is a word mark consisting of one single word ‘SUMMIT’

The contested sign is a figurative mark consisting of one single word ‘SUMIT’ in a regular typeface but with the second letter U and third letter M welded together because they share the right and left leg consecutively.

Distinctive and dominant elements of the signs

Neither the earlier mark nor the contested sign have elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements. The applicant claims that earlier mark has the meaning “the highest level” and thus in relation to the goods “room air conditioners” having the best quality and technique available on the market. According the Oxford English Dictionary the English word ‘SUMMIT’ has several meanings, such as: “The highest point of a hill or mountain” or “The highest attainable level of achievement” or “A meeting between heads of government”. Contrary to the allegations of the applicant the Opposition Division finds that the single element ‘SUMMIT’ in the earlier mark has a normal degree of distinctiveness in relation to the relevant goods in Class 11 because the reference to highest level of quality is only a very allusive one not allowing the distinctiveness of the earlier mark to become weak. The same is true for the single verbal element of the contested sign, it has a normal degree of distinctiveness in relation to the relevant goods in Classes 9 and 11.

Visually, the signs coincide in the letters S-U-M-*-I-T in the same order. However, they differ in the additional letter M in the earlier sign which has no counterpart in the contested sign. The contested sign is depicted in a slightly stylised but average typeface with the letters U and M connected in such a way as to appear to be one sign. However this does not make the word SUMIT less legible as such. Therefore, the signs are considered to be visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is highly similar, or even identical to a part of the public, whether or not the words contain one letter M or two.

Conceptually, the English speaking public will perceive the earlier sign as ‘SUMMIT’, as ‘The highest point of a hill or mountain’ or ‘a meeting between heads of government’. In the other languages the sign has no meaning. For a part of the same English speaking public he contested sign ‘SUMIT’ will be seen as a misspelling of the word ‘SUMMIT’ and for them the marks under comparison are conceptually identical. For the rest of the public who do not perceive this misspelling the contested mark does not have any meaning in English or any other language of the EU and then the signs under comparison 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.

4. 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, as explained above, 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.

5. Global assessment, other arguments and conclusion

The goods have been found to be identical, similar and dissimilar.

The relevant public consists of both the average consumer and the professional public, the level of attention will vary from average to higher than average.

Both marks share the letters S-U-M-*-I-T in the same order. In fact all the letters of the contested application are fully integrated in the earlier mark. The differences between the marks under comparison are an additional letter M in the earlier mark and that the letters of the contested mark are represented in a stylised typeface with the letters U and M merged together. The stylised lettering of the contested application and the connected letters U and M does not draw away the attention from the word SUMIT and does not make it less legible. Therefore, visually the marks are highly similar and phonetically they are highly similar and for a part of the public even identical.

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). While it may be true that the relevant public is more attentive when acquiring some of the contested goods, it does not mean that the purchaser has always the opportunity to compare both marks side-by-side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out.

Considering all the above, there is a likelihood of confusion on the part of the public, this even taking into account a higher degree of attention for some of the relevant goods, and therefore the opposition is partly well-founded on the basis of the opponent’s European Trade Mark registration No 12 429 254.

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.

COSTS

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 shall 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

Saida CRABBE

Steven Charles STAM

Plamen IVANOV

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.