OPPOSITION No B 2 538 356

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Luis Miguel Garayar Oria, Paseo de Ubarburu, 11 Polígono 27, 20014, San Sebastián, Spain (applicant), represented by Eurosigno Patentes y Marcas, Txakursolo n° 23 bajo, 48992 Getxo (Vizcaya), Spain (professional representative).

On 29/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 356 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 733 407 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 733 407. The opposition is based on earlier European Union trade mark application No 779 116 and international trade mark registration designating Ireland, Austria, Romania, Bulgaria, Slovakia, Denmark, Italy, Hungary, Benelux, Croatia, France and Slovenia No 1 096 843. The opponent invoked Article 8(1)(b) 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.

As seen above, 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 international trade mark registration designating Italy No 1 096 843.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 11: Lighting, heating, steam generating, cooking, cooling, drying, ventilating and water-conducting devices as well as sanitary equipment; electrical devices for warming the body for non-medical purposes; washer-dryers; heat pumps, electric cooking devices, namely steamers, roasters, ovens, convection ovens, freezers, ice cream makers (ice machines and equipment) and yogurt preparers (electric); faucets and faucet valves; tanning devices; refrigerators; electric deep fat fryers; torches, light bulbs; grills (cooking devices); hair driers; lanterns, microwave devices, hot air generators (steam generators, except machine parts); air conditioners and installations, toasters; toilet seats; fans (air conditioning); bath tubs and showers as well as accessories thereof, insofar as included in this class; lights, search lights, lanterns, table lamps and accessories thereof, insofar as included in this class; ignition devices; coffee machines; water kettles; fluorescent tubes and lighting fixtures; hot water bottles; whirlpool baths; hot air equipment.

Class 21: Devices and containers for the household and cooking; combs and sponges; brushes; brush-making material; cleaning utensils; steel wool; raw or partially prepared glass (except for building glass); glassware; porcelain and earthenware, insofar as they are included in this class; hand-operated home and cooking devices as well as portable containers for the household and cooking (insofar as included in this class) electric combs, toothbrushes and dental floss; sprinklers; cooking pot sets (also made from metal) in particular pots, pans and cauldrons; buckets; glass articles; porcelain and stoneware for the household and cooking; rodent and insect traps; gloves for the household and garden; watering cans; glass for vehicle windows (semi-finished product); glass with embedded, thin electrical conductors; heat-insulated containers and vessels; food cooling devices, containing heat exchange fluids, for household purposes; cooking containers and devices; works of art of porcelain, clay, glass, stoneware, glass and similar ceramic material; paper holders and plastic containers; toiletry utensils; paper towel dispensers; cleaning, polishing devices (hand-operated); signboards of porcelain or glass; toiletry kits; microwave tableware; room aquariums and terrariums and covers thereof; dinner servers and centerpieces (except for cutlery); napkin rings, cooking pots; water apparatus for cleaning teeth and gums; cleaning instruments (hand operated); brushes (except paint brushes); table cutlery and dishes made from plastics.

Class 35: General and individual commercial services in the areas of food, stimulants and non-food goods, in particular on sale in hotels, restaurants, catering businesses, retailers and small businesses; general and individual commercial services in the areas: chemical products, cleaning-, polishing-, abrasive- and washing agents, disinfectants and pesticides, coating agents, drugstore goods, cosmetics, health-sector goods, pharmaceutical and veterinary products, medical dressings, medical devices, shaving equipment and accessories, perfumery, household goods, commodities for the household, fuel, luminescent und propellant materials, technical oils and fats, lubricants, candles, machines, tools and metal goods, building articles, hobbyist articles and garden articles, plants and seeds, building articles, hobby and handicraft supplies, electric and electronic goods, sound and data carriers, illumination, heating, cooking, cooling, drying and ventilation devices, steam cleaning and steam equalization devices, sanitary systems and accessories, vehicles and components thereof, bicycles and parts and accessories thereof, fireworks, clocks and timepiece adornments, optical instruments and devices, musical instruments, printed matter, stationary, office requisites, leather bags and saddlery, furniture, furnishing items and decoration goods, tents, tarpaulins, clothing articles, shoes, textile goods, headwear, leather and imitations thereof, suitcases and valises, backpacks, umbrellas and parasols, toys, gym equipment and accessories, sports equipment and accessories, food and beverages, land, garden and forestry products, living animals, pet food and accessories, animal feed, smokers’ articles, tobacco goods and other stimulants, also over the Internet and/or teleshopping-mailings and/or online and/or catalog-purchase commercial services; import and export agent service, acceptance, processing and completion of orders (office work); procurement of services for third parties (purchasing goods and services for other businesses); order-taking, delivery order service and invoice processing, also within the framework of e-commerce; invoicing; conceptual designing of bonus and loyalty programs as customer loyalty programs for marketing purposes (insofar as included in this class); pursuit of bonus and loyalty programs as customer loyalty programs by means of evaluation of mathematical data to yield statistics and summaries of statistical data (insofar as included in this class); advertising, customer acquisition and care through advertising by mail order (mailing); organization and implementation of exhibitions for commercial or advertising purposes; planning, creation and implementation of advertising efforts; promotion of companies on the Internet and other media; advertising including promotion of products and services of third parties through sponsorship arrangements; publication of printed material for advertising purposes, in particular catalogs; presentation of goods in communications media for individual and general commerce; updating of advertising material; window displays; merchandising (sales promotion) (for third parties); rental of advertising space, also on the Internet (banner exchange); rental of advertising material and advertising time in communications media; distribution of samples for advertising purposes, sponsor search; marketing (sales research), also on digital networks; market research; surveys for business purposes; merchandising (sales promotion); computer data searches (for third parties) and/or in business transactions; imparting of information in commercial and business transactions, care of data in computer data banks; pricing of goods and services, invoice processing for electronic ordering systems; rental of office machines and equipment; rental of vending machines; rental of sales facilities; rental of subscriptions for telecommunication services (for third parties); procurement of addresses for advertising purposes or commercial and business contacts, also via the Internet, or of commercial transactions for third parties, also within the framework of e-commerce, or of mobile calling contracts (for third parties), or of contracts for third parties through the purchase and sale of goods; procurement of advertising and funding contracts for third parties; procurement of newspaper subscriptions (for third parties); business management consulting; business services including planning and supervision of corporate developments with respect to organization; business services including plannings (assistance) with management; business consulting for franchise concepts; business management; office work; the bringing together for the benefit of others a variety of goods, except for transport thereof, enabling consumers to conveniently view and purchase those goods; artists agents services.

Class 37: Repairing machines, electric and electronic devices; installation work; demolition work, maintenance and cleaning work in domestic areas (caretaking services); insect and pest eradication, except for agricultural purposes; rental of construction equipment and cleaning machines; installation and maintenance of hardware for Internet access; building construction.

The contested goods and services are the following:

Class 11: Sink basins; cooling apparatus; freezers; ovens; electric ranges; gas and electric economy cookers; microwave ovens; extractor hoods for kitchens; refrigerated food display cabinets; food temperature controllers (heaters); meat temperature controllers (heaters).

Class 21: Household or kitchen utensils and containers; glassware, porcelain and earthenware not included in other classes; household or kitchen utensils and containers, namely, saucepans, saucepans (earthenware -), cooking pots, hot pots, not electrically heated, pans, roasting dishes, serving platters, basins [bowls], cabarets (trays), cutlery trays, mixing spoons [kitchen utensils], chopsticks, coffee grinders, hand-operated, coasters, insulating flasks, scoops (tableware), dessert moulds, cookery molds [moulds], teapots, coffee pots, napkin holders, trivets (table utensils); glassware, porcelain and earthenware, namely mugs, glasses, plates, serving dishes, oven dishes, tea services (tableware), coffee services (tableware), earthenware saucepans, bowls, trays, salt shakers, pepper pots, spice sets, vinegar cruets, oil cruets, napkin rings.

Class 35: Wholesaling, retailing in shops and sale via global computer networks of dishwashers, refrigerators, freezers, ovens, electric cookers, economical electric and gas cookers, microwave ovens, smoke extractor hoods for kitchens, refrigerated food display cabinets, food temperature controllers (heaters), and meat temperature controllers (heaters); wholesaling and retailing in shops and sale via global computer networks of household or kitchen utensils and containers; wholesaling and retailing in shops and sale via global computer networks of glassware, porcelain and earthenware; wholesaling and retailing in shops and sale via global computer networks of stew-pans, earthenware saucepans, cooking pots, non-electric pressure cookers, frying pans, oven dishes, serving dishes, bowls, trays, cutlery trays, mixing spoons, chopsticks, hand-operated coffee grinders, coasters, insulating flasks, scoops (tableware), dessert moulds, cooking moulds, teapots, coffee-pots, napkin rings, trivets (table utensils); wholesaling and retailing in shops and sale via global computer networks of glassware, porcelain and earthenware; wholesaling, retailing in shops and sale via global computer networks of mugs, glasses, plates, serving dishes, oven dishes, tea services (tableware), coffee services (tableware), earthenware saucepans, bowls, trays, salt shakers, pepper pots, spice sets, vinegar cruets, oil cruets, napkin rings.

Class 37: Fitting, repair and maintenance of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; fitting, repair and maintenance of dishwashers, refrigerators, freezers, ovens, electric cookers, economical electric and gas cookers, microwave ovens, smoke extractor hoods for kitchens, refrigerated food display cabinets, food temperature controllers (heaters), and meat temperature controllers (heaters).

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce 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 applicant’s and the opponent’s lists 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.

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 11

Freezers; ovens are identically contained in both lists of goods and services.

Despite the slightly different wording, the contested cooling apparatus; microwave ovens are identical to the opponent’s cooling devices; microwave devices.

The contested sink basins; electric ranges; gas and electric economy cookers; extractor hoods for kitchens and refrigerated food display cabinets; food temperature controllers (heaters); meat temperature controllers (heaters) are included in the broad categories of the opponent’s heating, cooking, ventilating devices as well as sanitary equipment and refrigerators, respectively. Therefore, they are identical.

Contested goods in Class 21

Despite the slightly different wording, the contested household or kitchen utensils and containers and glassware, porcelain and earthenware not included in other classes are identical to the opponent’s devices and containers for the household and cooking and glassware, porcelain and earthenware, insofar as they are included in this class, respectively.

The contested glassware, porcelain and earthenware, namely napkin rings are identical to the opponent’s napkin rings.

The contested household or kitchen utensils and containers, namely, saucepans, saucepans (earthenware -), cooking pots, hot pots, not electrically heated, pans, roasting dishes, serving platters, basins [bowls], cabarets (trays), cutlery trays, mixing spoons [kitchen utensils], chopsticks, coffee grinders, hand-operated, coasters, insulating flasks, scoops (tableware), dessert moulds, cookery molds [moulds], teapots, coffee pots, napkin holders, trivets (table utensils) are included in the broad categories of, or overlap with, the opponent’s devices and containers for the household and cooking; hand-operated home and cooking devices as well as portable containers for the household and cooking (insofar as included in this class). Therefore, they are identical.

The contested glassware, porcelain and earthenware, namely mugs, glasses, plates, serving dishes, oven dishes, tea services (tableware), coffee services (tableware), earthenware saucepans, bowls, trays, salt shakers, pepper pots, spice sets, vinegar cruets, oil cruets are included in the broad categories of the opponent’s glassware, porcelain and earthenware, insofar as they are included in this class; porcelain for the household and cooking. Therefore, they are identical.

Contested services in Class 35

The contested wholesaling, retailing in shops and sale via global computer networks of dishwashers, refrigerators, freezers, ovens, electric cookers, economical electric and gas cookers, microwave ovens, smoke extractor hoods for kitchens, refrigerated food display cabinets, food temperature controllers (heaters), and meat temperature controllers (heaters); wholesaling and retailing in shops and sale via global computer networks of household or kitchen utensils and containers; wholesaling and retailing in shops and sale via global computer networks of glassware, porcelain and earthenware; wholesaling and retailing in shops and sale via global computer networks of stew-pans, earthenware saucepans, cooking pots, non-electric pressure cookers, frying pans, oven dishes, serving dishes, bowls, trays, cutlery trays, mixing spoons, chopsticks, hand-operated coffee grinders, coasters, insulating flasks, scoops (tableware), dessert moulds, cooking moulds, teapots, coffee-pots, napkin rings, trivets (table utensils); wholesaling and retailing in shops and sale via global computer networks of glassware, porcelain and earthenware; wholesaling, retailing in shops and sale via global computer networks of mugs, glasses, plates, serving dishes, oven dishes, tea services (tableware), coffee services (tableware), earthenware saucepans, bowls, trays, salt shakers, pepper pots, spice sets, vinegar cruets, oil cruets, napkin rings are included in the broad category of the opponent’s the bringing together for the benefit of others a variety of goods, except for transport thereof, enabling consumers to conveniently view and purchase those goods, which is not limited in the list to the sale of particular goods. Therefore, these services are considered identical.

Contested services in Class 37

The contested fitting, repair and maintenance of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; fitting, repair and maintenance of dishwashers, refrigerators, freezers, ovens, electric cookers, economical electric and gas cookers, microwave ovens, smoke extractor hoods for kitchens, refrigerated food display cabinets, food temperature controllers (heaters), and meat temperature controllers (heaters) are included in, or overlap with, the broad categories of the opponent’s repairing machines, electric and electronic devices; installation work; maintenance work in domestic areas (caretaking services). 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 and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average (e.g. for goods such as household or kitchen utensils and containers in Class 21) to high, as in the case of potentially expensive goods and services that are not bought on a daily basis and require particular attention at the moment of selection and purchase (e.g. cooling devices, freezers (Class 11) and fitting, repair and maintenance of apparatus for lighting, heating, refrigerating (Class 37)).

3. The signs

	MESO
Earlier trade mark	Contested sign

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the word ‘METRO’ written in rather commonplace bold, white upper case letters on a black rectangular background.

The contested sign is a word mark consisting of the single word ‘MESO’.

The earlier mark will be understood as referring to ‘meter’ or to ‘subway, underground’ in Italian (in the latter case, ‘metro’ is an abbreviation for ‘metropolitan’, that is, ‘metropolitana’ in Italian). However, this word has no clear meaning in relation to the goods and services in question.

The contested mark, ‘MESO’, has no clear meaning for the Italian-speaking part of the public.

Neither of the signs has any element that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their first letters, ‘ME’, and last letter, ‘O’. However, they differ in the letters ‘TR’/‘S’ in the middle of the marks.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in their first syllable, ‘ME’, and in the sound of their last letter, ‘O’, in the number of syllables in each mark (two) and in their intonation. The pronunciation differs in the sound of the letters ‘TR’/‘S’ in the middle of the marks.

Therefore, the signs are considered aurally similar to an average degree.

Conceptually, while the public in the relevant territory will perceive the earlier sign as meaning ‘meter’ or ‘subway, underground’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

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 and services 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The marks are visually and aurally similar to an average degree. The goods and services are identical. They target the public at large and business customers; the degree of attention ranges from average to high. Furthermore, the earlier mark is deemed to have a normal degree of distinctiveness per se in relation to the goods and services in question.

The marks coincide in the sequence of letters ‘ME’ at their beginnings and also in their final letter, ‘O’. Each is composed of two syllables and the signs have the same intonation. Their differing letters, ‘TR’ and ‘S’, in the earlier mark and the contested mark respectively, are preceded and followed by the same letters. This contributes to the possibility that consumers may overlook the differences between the marks when perceiving them visually or if they do not hear them distinctly when pronounced.

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).

Furthermore, account should be 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).

In the light of the above considerations, it is deemed that the coincidences between the signs are sufficient to outweigh their dissimilarities. As a result, when faced with identical goods and services under the marks in question, consumers will be led to believe that those goods and services come from the same undertaking or economically linked undertakings.

Moreover, although the public may pay special attention during the purchase of some of the goods and services in question, this will not be sufficient to avoid confusion regarding the origin of the good and services, taking into account the fact that the signs have significant similarities.

Therefore, the Opposition Division considers that there is a likelihood of confusion between the marks for the public in the relevant territory in relation to all the goods and services found to be identical. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 096 843 designating Italy. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier right international trade mark registration No 1 096 843 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ana MUÑIZ RODRÍGUEZ

Claudia ATTINA

Julia SCHRADER

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.