OPPOSITION No B 2 664 038

Carl Kammerling International Limited, CK House, Glan y Don Industrial Estate, Pwllheli, Gwynedd LL53 5LH, United Kingdom (opponent), represented by Bromhead Johnson, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom (professional representative)

a g a i n s t

Chak Fai Tsang, Room 510-511, 5F, Sheraton Business Center, Humen Avenue, Humen Town, Dongguan, People’s Republic of 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 23/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 664 038 is upheld for all the contested goods, namely:

Class 9: Alarms.

2. European Union trade mark application No 14 836 704 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 836 704, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 4 738 613. 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: Electronic security devices; passive infra red motion sensor alarms; movement sensor alarms; magnetic door alarms; magnetic window alarms; smoke detectors; personal attack alarms; push button digital door locks.

Class 12: Anti-theft vehicle security equipment.

The contested goods are the following:

Class 9: Alarms.

The contested alarms include, as a broader category, the opponent’s passive infra red motion sensor alarms. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s 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 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 deemed to be at least higher than average, since the relevant goods are specialised and technologically sophisticated, and their use can have a significant impact on the consumer’s property or safety.

3. The signs

KASP
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 earlier mark is the word mark ‘KASP’.

The contested sign is a figurative mark consisting of the verbal element ‘CASP’, written in slightly stylised black upper case letters with grey borders.

The signs in conflict have no elements that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘*ASP’. However, they differ in their first letters, ‘K’ in the earlier mark versus ‘C’ in the contested sign, and in the slight stylisation of the contested sign, as described above.

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

Aurally, depending on the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier mark, /KASP/, coincides with the pronunciation of the contested sign, /CASP/, for a significant part of the public, for example the Dutch-, English-, French-, German-, Italian-, Portuguese- and Spanish-speaking parts.

Therefore, the signs are aurally identical for a significant part of the relevant public.

Conceptually, neither of the signs has a meaning, at least for a significant part of the relevant public, for example the Dutch‑, English‑, French‑, German‑, Italian‑ and Spanish‑speaking parts. 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, at least for a significant part 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. 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).

The goods are identical and the relevant public’s degree of attention is at least higher than average.

The signs are visually similar, as they coincide in most of their letters, namely ‘*ASP’. The differing letters, ‘K’ in the earlier mark versus ‘C’ in the contested sign, result, nonetheless, in the signs having identical pronunciations for a significant part of the relevant public. The figurative elements of the contested sign are confined to a slight stylisation of the verbal element.

Although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account is 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, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, taking into account that the goods at issue are identical, the Opposition Division considers that the differences between the signs are not sufficient to safely exclude the likelihood of confusion, even if a higher degree of attention is displayed in relation to the goods at issue.

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 European Union trade mark registration No 4 738 613. It follows that the contested sign 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, he 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

Cynthia DEN DEKKER

Marta GARCÍA COLLADO

Natascha GALPERIN

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.