OPPOSITION No B 2 539 073

Kyungdong Navien Co. Ltd., 95, Suworam-gil, Seotan-myeon, Pyeongtaek-si, Gyonggi-do, Republic of Korea (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Evinox Energy Limited, Regency House, 61A Walton Street, Walton on the Hill, Tadworth, Surrey KT20 7RZ, United Kingdom (applicant), represented by Rohan Solicitors, Aviation House 1-7 Sussex Road, Haywards Heath, West Sussex RH16 4DZ, United Kingdom (professional representative).

On 03/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 539 073 is upheld for all the contested goods.

2. European Union trade mark application No 13 846 803 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 European Union trade mark application No 13 846 803. The opposition is based on European Union trade mark registration No 12 782 322. 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.

1. The goods

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

Class 9: Computer programs for controlling home network; computer programs for remote reading of meter via home network; computer programs for controlling wire/wireless home appliances via home network; computer programs for security service via home network; computer programs for online communication via home network; gas leak alarms; alarms for the detection of inflammable gases; electric theft prevention installations; fire alarms; oil sensors for boilers; water level sensors for boilers; automatic combustion control apparatus; automatic humidity control apparatus; electric doorlock; flame sensors; smoke detectors; electric switches.

Class 11: Gas boilers; gas water heaters; gas water heaters for household purposes; boilers for household purposes; electric radiant heaters for household purposes; heating apparatus for solid/liquid and gaseous fuels; hot-air heating apparatus for industrial purposes; hot-water heating apparatus for industrial purposes; steam heating apparatus for industrial purposes; water supply equipment for heating boilers; airpipes for heating boilers; pipes for heating boilers; heating installations; boiler pipes (tubes) for heating installations; heating elements for heating; heating boilers; heating apparatus; radiators; boilers (other than parts of machines); laundry room boilers; instant water heaters; heat pumps; hot-air heating apparatus; thermostatic valves (parts of heating installations); water heaters; hot-water heating apparatus; hot-water heating installations; air heating apparatus; electrical boilers; humidifiers for central heating radiators; steam heating apparatus; air valves for steam heating installations; steam generating installations; steam boilers (other than parts of machines); steam accumulators; heat accumulators; regenerative heat exchangers; solar water heaters; air conditioners; gas fires; electric heating apparatus; electric radiators; ventilators; ventilation devices and installations; gas ranges; gas burners; water heaters (apparatus).

The contested goods are the following:

Class 11: Heating technology control apparatus.

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.

The contested heating technology control apparatus is similar to the opponent’s heating apparatus, as they may have the same producers, end users and distribution channels. Furthermore, they are complementary.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high as a result of the possible high price and highly specialised nature of the goods.

3. The signs

	SmartTalk
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

Visually, the earlier mark is a figurative mark, ‘Smart Tok’, and the contested sign is a word mark, ‘SmartTalk’. The signs coincide in the letters ‘SMART T*(*)K’; however, they are written as two separate words in the earlier mark and as one word in the contested sign. Furthermore, they differ in the letters ‘AL’ of the contested sign, which have as their counterpart the letter ‘O’ in the earlier mark. However, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being 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. Therefore, the signs are similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different non-English-speaking parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SMARTT*(*)K’. The pronunciation differs in the sound of the letter ‘O’ of the earlier mark, which has as its counterpart the letters ‘AL’ in the contested sign. As these letters are in the middle of the signs, they will have a less strong aural impact than the other elements. Therefore, the signs are aurally highly similar.

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.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The similar goods target the public at large and a professional public. The degree of attention may vary from average to high. The marks are visually and aurally similar to a high degree.

Taking into account the principle of interdependence mentioned above, as well as the fact that the similarities are situated at the beginning of the marks and in their last letter (‘SMARTT*(*)K’), it is considered that the relevant public – including the professional public – might be led to believe that the similar goods come from the same undertaking or from economically linked undertakings, even when a higher degree of attention is being displayed.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 782 322. It follows that the contested trade mark must be rejected for all the contested goods.

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

Claudia ATTINÀ

Eamonn KELLY

Adriana VAN ROODEN

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.