OPPOSITION No B 2 519 240

Shomar Limited, Unit 9, Western Industrial Estate, Naas Road, Dublin 12, Ireland Maeve O’Reilly, 1 Moorfield, Church Road, Ballybrack, Dublin, Ireland, and Jacqueline Adam, 37 Richmond Avenue, Monkstown, Dublin, Ireland, (opponents), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland (professional representative)

a g a i n s t

Thor Kitchen Corporation, 1335 Fortune Bay Ct., Hoffman Estates, Illinois 60192, United States of America (applicant), represented by Katarzyna Binder-Sony, 3 More London Riverside, London SE1 2RE, United Kingdom (professional representative).

On 04/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 519 240 is upheld for all the contested goods.

2. European Union trade mark application No 13 571 112 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 European Union trade mark application No 13 571 112. The opposition is based on, inter alia, United Kingdom trade mark registration No 1 352 074. The opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 1 352 074.

1. The goods

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

Class 11: Installations, apparatus and appliances, all for domestic purposes; refrigerators, deep freezers; cookers, air extractor hoods for use with cookers; ovens; installations and apparatus for heating foodstuffs and beverages; grilling and roasting apparatus for cooking; barbeques; toasters; apparatus for making tea and coffee; coffee percolators; space heaters, water heaters; gas lighters; clothes driers and hair drying appliances; all included in Class 11.

The contested goods are the following:

Class 11: Kitchen appliances, namely cooking ovens, electric ranges, gas ranges, range hoods, refrigerators, BBQ grills, table top grills, barbecues and grills.

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

The term ‘namely’, used in the applicant’s list of goods 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 goods.

Refrigerators, barbeques are identically included in both lists of goods.

The contested kitchen appliances, namely cooking ovens, electric ranges, gas ranges, range hoods, BBQ grills, table top grills and grills are included in the broad category of the opponent’s installations, apparatus and appliances, all for domestic purposes, all included in Class 11. Therefore, they are identical.

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 are directed at the public at large. The degree of attention varies from average to higher than average depending on the price, specialised nature and frequency of the purchase of the goods (e.g. refrigerators).

3. The signs

THOR	THOR KITCHEN
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both marks are word marks. The earlier mark is composed of one word, ‘THOR’, whereas the contested sign is composed of two words, ‘THOR KITCHEN’.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The word ‘KITCHEN’ of the contested sign will be understood by the public in the relevant territory as meaning, inter alia, ‘a room or area where food is prepared and cooked’ (information extracted from Oxford Dictionaries on 06/04/2016 at http://www.oxforddictionaries.com/definition/english/kitchen). Bearing in mind that the relevant goods are related to kitchen appliances, this element is non-distinctive for these goods.

Neither of the marks under comparison has any elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

The word ‘THOR’, which the marks have in common, will be understood by the public in the relevant territory as meaning ‘The god of thunder, the weather, agriculture, and the home, the son of Odin and Freya (Frigga)’ (information extracted from Oxford Dictionaries on 06/04/2016 at http://www.oxforddictionaries.com/definition/english/thor). This word has a normal degree of distinctiveness in relation to the goods in question.

Visually, the signs coincide in the distinctive word ‘THOR’, whereas they differ in the word ‘KITCHEN’, which is a non-distinctive element of the contested sign.

Therefore, the signs are visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘THOR’, present in both signs. The pronunciation differs in the sound of the non-distinctive word ‛KITCHEN’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar.

Conceptually, the signs will be associated with the same meaning on account of the distinctive word ‘THOR’, which the marks have in common, whereas they differ in the meaning of the non-distinctive word ‛KITCHEN’ in the contested sign.

Therefore, the signs are 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, 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 are identical.

The earlier mark has a normal degree of distinctiveness because it has no meaning in relation to any of the goods in question from the perspective of the public in the relevant territory.

The signs are visually, aurally and conceptually similar due to the presence of the distinctive word ‘THOR’, which plays an independent distinctive role in both signs.

As regards the contested sign, the coinciding word, ‘THOR’, is likely to be remembered by the relevant public, since the additional word of the contested sign, namely the word ‘KITCHEN’, is generic and therefore non-distinctive in relation to the goods in question. Since the word KITCHEN in this case has little or no trade mark significance, it is not sufficient to counteract the visual, aural and conceptual similarities residing in the coinciding word, ‘THOR’.

Taking into account all the relevant circumstances of the case, in particular the identity between the goods and the visual, aural and conceptual similarities in the only word element of the earlier mark, ‘THOR’, which is entirely included at the beginning of the contested sign, where it plays an independent and distinctive role, the Opposition Division considers that the similarities between the marks are sufficient to cause a likelihood of confusion. The relevant public is likely to think that the goods in question come from the same undertaking or economically linked undertakings, even though the degree of attention of the relevant public is higher than average.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 1 352 074. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier United Kingdom trade mark registration No 1 352 074 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rhys MORGAN

Hasan Oguzhan KARSLI

Jessica LEWIS

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.