OPPOSITION No B 2 473 588

Kingfisher France, Z.I. Templemars 59175, France (opponent), represented by Cabinet Plasseraud 52, rue de la Victoire, 75009 Paris, France (professional representative)

a g a i n s t

Qian Qiu, 28 Qixian Road Hanyang District, Wuhan 430051, China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone) 20831 Seregno (MB), Italy (professional representative).

On 28/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 473 588 is upheld for all the contested goods and services.

2. Community trade mark application No 13 403 803 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 403 803 . The opposition is based on Community trade mark registration No 10 435 428 . The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services on which the opposition is based are, amongst others, the following:

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, calculating machines, data processing equipment and computer, Telephone, Solenoid valves.

Class 11: Filters (parts of household or industrial installations), Filters for use with swimming pools, Water heaters, Radiators, Boilers, Washbasins, Taps, Bidets, Baths, Showers, Hydrotherapy showerheads, Sauna and spa facilities, Water closets, Sinks, Humidifiers, Range hoods, Ventilating hoods, Air cleaning and air purifying apparatus and machines, Air-conditioning apparatus, Apparatus for ventilating, Air conditioning fans, Domestic fireplaces and hearths, Traps, Towel heaters, Lighting appliances, Integrated ovens, Integrated fridges, Hotplates.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal; Foils, Sheets and rods of semi-finished plastics, Stopping and insulating materials, Watering hoses, Insulating felt, Insulators, Gaskets.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Whips, saddlery.

The contested goods are the following:

Class 9: 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; Calculating machines; Scientific apparatus and instruments; Surveying apparatus and instruments; Photographic apparatus and instruments; Cinematographic apparatus and instruments; Optical apparatus and instruments; Weighing apparatus and instruments; Measuring apparatus and instruments; Signalling apparatus and instruments; Checking (supervision) apparatus and instruments; Life-saving apparatus and instruments; Teaching apparatus and instruments; Data processing equipment; Computers; Computer peripherals; Cases for telephones.

Class 17: Flexible pipes, tubes, hoses, and fittings therefor, including valves; Seals, sealants and fillers; Flexible pipes, tubes, hoses, and fittings therefor, including valves, non-metallic; Moulds (Ebonite -); Paints for insulation; Fabrics for insulation; Insulation for aircraft; Insulation for pipes; Fiberglass for insulation; Insulation sheets; Electrical insulation articles and materials; Acoustic insulation articles and materials; Thermal insulation articles and materials; Plastics materials in the form of blocks [semi-finished products]; Plastics materials in the form of sections [semi-finished products]; Plastics materials in the form of tapes [semi-finished products]; Plastics materials in the form of strips [semi-finished products]; Plastics materials in the form of sheets [semi-finished products]; Plastics materials in the form of rods [semi-finished products]; Plastics materials in the form of plates [semi-finished products]; Plastics in the form of sheets, films, blocks, rods and tubes; Plastics in extruded form for use in manufacture; Plastic rods and bars; Plastic material in extruded form for use in production; Plastic foam materials for use in manufacture; Laminated plastics material for use with mechanical engraving material; Laminated plastics material for use with computerised engraving material; Laminated plastic sheets for use in manufacture; Laminated plastic materials for use in manufacture; Extruded plastics [semi-finished products]; Shock-absorbing buffers of rubber; Moulds (Ebonite -); Vibration dampers of rubber; Seals; Plastic seals; Pipe spacers (Non-metallic -); Filtering materials [semi-processed foams or films of plastic]; Membranes and semi-processed synthetic filtering materials; Weather strips (Non-metallic -); Sealing strips (Non-metallic -); Bags [envelopes, pouches] of rubber, for packaging; Rubber bags for merchandise packaging [envelopes or pouches]; Bands of rubber for unscrewing jar lids.

Class 18: Luggage; Bags; Wallets; Fur; Leather; Pelts; Leatherboard; Leather cases; Leather boxes; Saddlery; Whips; Clothing for animals; Handbags made of imitations leather.

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

The term ‘including’, used in the applicant´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’).

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

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.

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 9

Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Scientific apparatus and instruments; Surveying apparatus and instruments; Photographic apparatus and instruments; Cinematographic apparatus and instruments; Optical apparatus and instruments; Weighing apparatus and instruments; Measuring apparatus and instruments; Signalling apparatus and instruments; Checking (supervision) apparatus and instruments; Life-saving apparatus and instruments; Teaching apparatus and instruments; Magnetic data carriers; Calculating machines; Data processing equipment; computers are identically contained in both lists of goods and services (including synonyms). Therefore, those goods are identical.

The contested Computer peripherals are similar to the opponent’s Computer. Computers are similar to computer peripherals as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested Cases for telephones are considered to be similar to the opponent´s goods Telephones. These goods are often used in combination with each other, have the same distribution channels and sales outlets and target the same consumers. Furthermore, these goods are normally manufactured by the same kinds of undertakings.

Contested goods in Class 17

The contested Flexible pipes, non-metallic; Plastic materials in the form of sheets [semi-finished products]; plastic materials in the form of rods [semi-finished products]; plastic materials in the form of sheets, rods; plastic rods; Plastics in extruded form for use in manufacture are identically contained in both lists of goods and services (including synonyms). Therefore, those goods are identical.

The contested Flexible tubes, hoses and the contested Flexible tubes, hoses non-metallic include, as a broader category, the opponent’s Flexible pipes, not of metal; Watering hoses. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested (Flexible tubes, hoses and) fittings therefor, including valves and the contested (Flexible tubes, hoses, and) fittings therefore, including valves, non-metallic are considered to be similar to the opponent´s Flexible pipes, not of metal; Watering hoses. The above contested goods have a similar nature and purpose as the opponent´s goods, since they are likely to have the same distribution channels, sales outlets, and producers. Further, those goods are complementary to each other. Therefore, those goods are considered to be similar.

The contested Seals (appear twice), sealants and fillers; Paints for insulation; Fabrics for insulation; Insulation for aircraft; Insulation for pipes; Fibreglass for insulation; Insulation sheets; Electrical insulation articles and materials; Acoustic insulation articles and materials; Thermal insulation articles and materials; Plastic seals; Weather strips (Non-metallic-); Sealing strips (Non-metallic-) are included in the broad category of the opponent’s Packing, stopping and insulating materials, insulating felt, insulators. Therefore, they are considered identical.

The contested Plastic materials in the form of blocks [semi-finished products]; Plastic materials in the form of sections [semi-finished products]; Plastics materials in the form of tapes [semi-finished products]; plastic materials in the form of strips [semi-finished products]; Plastics materials in the form of plates [semi-finished products]; Plastics in the form of films, blocks and tubes; plastic bars are considered to be similar to the opponent´s sheets, and rods of semi-finished plastics. The above goods have a similar nature and purpose, and have the same distribution channels and sales outlets and target the same consumers. Furthermore, these goods are normally manufactured by the same kinds of undertakings.

The contested extruded plastics [semi-finished products] include, as a broader category, the opponent’s Plastics in extruded form for use in manufacture. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested Plastic material in extruded form for use in production; Plastic foam materials for use in manufacture; Laminated plastics material for use with mechanical engraving material; Laminated plastics material for use with computerised engraving material; Laminated plastic sheets for use in manufacture; Laminated plastic materials for use in manufacture are considered to be similar to the opponent´s Plastics in extruded form for use in manufacture. The above goods have a similar nature and purpose. Further, they are likely to have the same distribution channels and sales outlets and target the same consumers. Additionally, these goods are normally manufactured by the same kinds of undertakings. Therefore, those goods are considered to be similar.

The contested shock absorbing buffers of rubber; Moulds (Ebonite-) (appears twice); Vibration dampers of rubber; bags [envelopes, pouches] of rubber, for packaging; Rubber bags for merchandise packaging [envelopes or pouches]; bands of rubber for unscrewing jar lids are included in the broad category of the opponent’s goods made from these materials and not included in other classes [Rubber]. Therefore, they are considered identical.

The contested Pipe spacers (Non-metallic-) are considered to be similar to the opponent´s Flexible pipes, not of metal. The above goods are likely to have the same distribution channels and sales outlets and target the same consumers. Additionally, these goods are normally manufactured by the same kinds of undertakings. They are also often complementary goods. Therefore, those goods are considered to be similar.

The contested Filtering materials [semi-processed foams or films of plastic]; Membranes and semi-processed synthetic filtering material are considered to be similar to the opponent´s Filters (parts of household or industrial installations) from Class 11. The above goods have a similar nature and purpose. Additionally, these goods are normally manufactured by the same kinds of undertakings. Therefore, those goods are considered to be similar.

Contested goods in Class 18

The contested Luggage, Bags include, as a broader category, the opponent’s Trunks and travelling bags. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested Leather; Leatherboard; Leather cases; Leather boxes; Handbags made of imitation leather are included in the broad category of the opponent´s Leather and imitations of leather, and goods made of these materials and not included in other classes. This is because the contested goods are goods made of the materials as detailed in the opponent´s specification. Therefore, those goods are considered to be identical.

The contested Wallets and Clothing for animals overlap with the opponent´s Leather and imitations of leather, and goods made of these materials and not included in other classes. This is because the contested goods are often made of the materials as detailed in the opponent´s specification. Therefore, those goods are considered to be identical.

The contested Fur; Pelts are included in the broad category of the opponent´s animal skins. Therefore, those goods are identical.

The contested Saddlery; Whips are identically contained in both lists of goods and services (including synonyms). Therefore, those goods are identical.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English speaking part of the relevant public.

Visually, the opponent´s sign consists of the sequence of letters C-A-S-T-O represented in white lower case letters in a normal font. That sequence of letters is represented against a blue background and underlined by a white and blue shaded line. After the final letter ‘O’ in that sequence of letters is a small slanted yellow rectangle style shape.

The contested sign consists of the sequence of letters C-A-S-T-H-O. That sequence of letters is represented in a stylised font in lower case letters.

The signs are similar to the extent that they coincide in the letters ‘CAST*O’. However, they differ in respect of the letter ‘H’ which is the fifth letter of the contested mark, and which is not present in the opponent´s mark. Further, the marks differ with regards to the stylisation of their verbal elements. Additionally, the white/blue line which underlines the verbal element ‘CASTO’ and the yellow rectangle next to the letter ‘O’ of that verbal element, as well as the blue background in the opponent´s mark are not present in the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CAST*O’ present identically in both signs, and to that extent the signs are aurally similar. Further, both signs consist of 2 syllables. Additionally, the position of the letter ‘H’ towards the end of the verbal element of which the contested mark consists, and prior to the final letter ‘O’ of that verbal element, means that letter ‘H’ will have a soft pronunciation.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

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.

5. 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 or similar to various degrees are directed at the public at large. Some of the goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention may therefore vary from average to high. Some of the goods may be inexpensive (for example, teaching apparatus/instruments) and some of the goods may be infrequent purchases or specialised goods (cinematographic apparatus and instruments, for example).

6. Global assessment, other arguments and conclusion

The court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements, and in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para.22).

The court has also held that 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 (judgment of 11/11/1997, C-251/95, ‘Sabèl’, para.23).

Account should be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect recollection of them that they have kept in their minds. In addition, consumers tend to remember similarities rather than dissimilarities between signs.

In the present case, the goods are identical or similar to various degrees. The signs coincide visually and aurally in respect of 5 out of the 6 letters of which the contested mark consists. Additionally, neither sign contains any element which is more dominant or distinctive than any other.

Moreover, consumers generally tend to focus on the beginning of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first 4 letters of the marks at issue (‘CAST’) have to be taken into account when assessing the likelihood of confusion between the marks. Further, the letter ‘H’ which is encompassed by the contested mark, and which is not present in the opponent´s sign, has a soft pronunciation when followed by the letter ‘O’. This difference at the end of the contested sign is not sufficiently striking so as to counteract the overall similar impression generated by the fact that both the first four letters and the final letter of the marks under comparison are identical.

Further, it is true that the earlier sign includes figurative elements which have no counterpart in the contested sign. However, when a sign consists of word and figurative elements, the impact of the words is normally greater than that of the figurative elements. Consumers normally refer to a sign by referring to the words used in it, and not be describing its figurative elements.

Considering all the above, there is a likelihood of confusion on the part of the English speaking part of the public. This is despite the fact that the level of attention of the relevant public may be higher than average. As stated above in section b) 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 Community trade mark registration No 10 435 428. 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 extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Ric WASLEY

Alexandra APOSTOLAKIS

Gailé SAKALAITÉ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.