OPPOSITION No B 2 584 673

Atlantic Société française de développement thermique (société anonyme), 44, boulevard des Etats-Unis, 85000 La Roche-Sur-Yon, France (opponent), represented by Hirsch & Associés, 137 rue de l'Université, 75007 Paris, France (professional representative)

a g a i n s t

Industrias Royal Termic, S.L., Pol.Ind. Vicente Antolinos. C/E, parcela 43, 30140 Santomera (Murcia), Spain (applicant), represented by Aspamar Asesores, S.L., Calle de Miguel Ángel, 16 - 2º Dcha, 28010 Madrid, Spain (professional representative)

On 03/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 584 673 is upheld for all the contested services:

Class 35: Retailing in shops and via global computer networks of electrical goods.

2. European Union trade mark application No 13 975 909 is rejected for all the above services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 975 909, namely against some of the goods in Class 11 and some of the services in Class 35. The opposition is based on international registration designating the European Union No 511 738 and on French trade mark registration No 1 380 572. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 08/02/2016, the applicant filed a limitation request and, inter alia, Class 11 was removed from the specification and part of the services in Class 35 as well. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against some of the remaining services in Class 35, as detailed under part a) of the decision.

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 French trade mark registration No 1 380 572.

1. The goods and services

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

Class 11: Electric water-heaters.

The contested services are the following:

Class 35: Retailing in shops and via global computer networks of electrical goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested retailing in shops and via global computer networks of electrical goods are similar to a low degree to the opponent’s electric water-heaters (the latter falling in the broad category of and thus being identical to electrical 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 and services found to be similar to a low degree are directed at the general public and at business customers with specific professional knowledge or expertise in the plumbing sector. Therefore, the degree of attention will vary between average and higher than average for expensive or technically sophisticated goods.

3. The signs

DELTA
Earlier trade mark	Contested sign

The relevant territory is France.

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 the word ‘DELTA’.

The contested sign is a figurative mark consisting of the word ‘DELTA’ written in fairly standard green uppercase. A small green dot interrupts the vertical stroke of the letter ‘D’ and another one replaces the horizontal stroke of the letter ‘A’. The word ‘ultimate’ is depicted in black lowercase italics on the lower right-hand corner of the sign, starting beneath the letter ‘A’ of the word ‘DELTA’.

The word ‘DELTA’ present in both signs will be perceived either as ‘the fourth letter in the Greek alphabet’ or as ‘the flat alluvial area at the mouth of some rivers where the mainstream splits up into several distributaries’ (see http://www.collinsdictionary.com/dictionary/english/delta). In any case, this word does not describe or otherwise relate to the goods and services at hand and is, therefore, normally distinctive.

However, the word ‘ULTIMATE’ in the contested sign is an English word meaning ‘last, final’ or ‘extreme, the highest or the most significant’ (see http://www.collinsdictionary.com/dictionary/english/ultimate). It is very close to the French word ‘ULTIME’ that has the same meanings and is weak for the services at hand because it will be seen as a kind of laudatory adjective.

The earlier mark has no elements that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

The element ‘DELTA in the contested sign is the dominant element in virtue of its size and its position. It is also the most distinctive element due to the laudatory character of the word ‘ULTIMATE’.

Visually, the signs coincide in the word ‘DELTA’ which constitutes the entire earlier mark and is the most distinctive component of the contested sign. However, they differ in the additional word ‘ULTIMATE’ in the contested sign, which has a weak distinctive character, the green colour and the stylisation that have no equivalent in the earlier mark. Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the word ‛DELTA’, present identically in both signs. However, it differs in the additional word ‘ULTIMATE’ of the contested sign if pronounced at all which is considered unlikely in view of its reduced size and position within the sign as well as its weak character. Taking these arguments into consideration, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the above considerations concerning the semantic content conveyed by the marks. In view of these, the signs are conceptually highly similar as they both refer to the concept related to the word ‘DELTA’ and differ in the concept of the weak element ‘ULTIMATE’ of the contested sign.

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 contested services have been found to be similar to a low degree to the opponent’s goods.

The marks are visually similar to a high degree, aurally highly similar if not identical, and conceptually highly similar on account of the coinciding word ‘DELTA’. The additional word ‘ULTIMATE’ in the contested sign will not have much of an impact on consumers due to its laudatory character. Consequently, consumers will pay less attention to this word and rather focus on the distinctive word ‘DELTA’.

Account is taken of the fact that 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).

Considering the above, and bearing in mind that the only word element of the earlier mark is entirely contained within the contested sign, as well as the fact that the element ‘DELTA’ has an independent distinctive role in the contested sign, there is a likelihood of confusion on the part of the public, even when the degree of attention of the relevant public is expected to be higher than average, including the likelihood that consumers might believe that the goods and services come from the same undertaking or economically-linked undertakings.

Therefore, the opposition is well-founded on the basis of the opponent’s French trade mark registration. It follows from the above that the contested trade mark must be rejected for the all the contested services.

As the earlier French trade mark registration No 1 380 572 leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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).

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

Denitza STOYANOVA-VALCHANOVA

Sandra IBAÑEZ

Martina GALLE

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.