OPPOSITION No B 2 934 548

Higi-Alcanede - Sistemas de Higiene, Lda., Rua Cidade de Santarém, Nº. 55; 2025-034, Alcanede, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103, Lisboa, Portugal (professional representative)

a g a i n s t

Micro System Duotex AB, Industrivägen 1, 171 48, Solna, Sweden (applicant), represented by Ewa Malewska & Partners, Klaudyny 32/299, 01-684, Warszawa, Poland (professional representative).

On 25/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 934 548 is upheld for all the contested goods.

2. European Union trade mark application No 15 999 014 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 999 014 for the word mark ‘DUOTEX’. The opposition is based on European Union trade mark registration No 9 808 478 for the word mark ‘DUTEX’. 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 3: Detergents; Bars of soap; Soaps in liquid form; Cloths impregnated with detergent for cleaning.

Class 16: Serviettes of paper, toilet paper, towels of paper, toilet tissues of paper, rolls of paper for industrial use, rolls of paper for use on examination tables, tablecloths of paper.

Class 21: Brushes, cleaning cloths, plastic buckets, brooms, mops, dust-pans, gloves for household use, cleaning materials, pads for cleaning, abrasive pads for the kitchen.

The contested goods are the following:

Class 12: Mop trolleys.

Class 21: Washing and cleaning apparatus; Goods of materials, fabric and knitted fabric of unwoven cloth, for cleaning and washing; Cleaning rags; Wipes; Cloths for spectacle lenses; Gloves for cleaning and washing purposes; Dishcloths; Cleaning pads; Facecloths; Microfibre gloves; Mops; Microfibre mops; Mops for polishing; Mops for shining; Mop handles; Telescopic mop handles; mop handles.

The Office notes a slight, obvious error in the translation of the contested goods in English in class 21 above, as the term ‘textile’ is missing between the words ‘goods of’ and ‘materials,..’. This becomes clear when reviewing the Spanish, French and German translations of the same goods which are the following ‘productos de materiales textiles, tejidos y punto de hilos, para limpiar y lavar’; ‘produits en tissus, en textiles et en étoffes non tissées destinés au nettoyage et au lavage’ and ‘Erzeugnisse aus Geweben, Stoffen und Nähwirkwaren zum Reinigen und zum Waschen’. Therefore, in the comparison of the goods below, the Office will take into account the additional word ‘textile’ which has been omitted in the English translation.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

Contested goods in Class 12

The contested mop trolleys are similar to the opponent’s mops. The goods under comparison have the same purpose. They can also be manufactured by the same undertakings, be distributed through the same channels and target the same public. Furthermore, they are complementary, or at least often used in combination .

Contested goods in Class 21

The contested cleaning pads and mops are identically contained in both lists of goods, despite a slight difference in wording.

The contested goods of [textile] materials, fabric and knitted fabric of unwoven cloth, for cleaning and washing include, as broader categories, or overlap with, the opponent’s cleaning cloths. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested cleaning rags and wipes are included in the broad category of, or overlap with, the opponent’s cleaning cloths. Therefore, they are identical.

The contested cloths for spectacle lenses, dishcloths; facecloths are included in the broad category of, or overlap with, the opponent’s cleaning cloths. Therefore, they are identical.

The contested gloves for cleaning and washing purposes; microfibre gloves include, as broader categories, or overlap with, the opponent’s gloves for household use. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested microfibre mops; mops for polishing; mops for shining are included in the broad category of, or overlap with, the opponent’s mops. Therefore, they are identical.

The contested cleaning apparatus are similar to the opponent’s mops. These goods can coincide in purpose (cleaning and/or hygienic purpose), distribution channels, producers and relevant public.

The contested washing apparatus are similar to the opponent’s brushes. The goods under comparison have the same purpose and can also be distributed through the same channels. Additionally they target the same public.

The contested mop handles (mentioned twice); telescopic mop handles are similar to the opponent’s mops. They have the same purpose and can be manufactured by the same undertakings, be distributed through the same channels and target the same public. 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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

DUTEX	DUOTEX
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 Italian-speaking part of the relevant public for whom the signs have no meaning.

Both signs are word marks consisting of a single element. Neither ‘DUTEX’ in the earlier sign, nor ‘DUOTEX’ in the contested sign has any meaning for the relevant public as a whole and they are, therefore, distinctive.

The signs have no elements that could be considered clearly more dominant than other elements, as they are word marks.

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.

Visually, the signs coincide in the letter sequence ‘DU*TEX’, that constitutes the earlier mark in its entirety. They signs only differ in the additional letter ‘O’ of the contested sign. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the sound of five out of six letters, namely in the ‘DU*TEX’. The signs only differ in the sound of the additional letter ‘O’ placed in the third position of the contested sign. In view of the fact that the pronunciation of the signs only differs in one single letter placed in the middle of the contested mark, which is the least noticeable part of the sign, the signs are aurally highly 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

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).

The goods covered by the trade marks in dispute are identical or similar. The distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

The signs are visually and phonetically similar to a high degree and the conceptual comparison does not influence the comparison of the marks. The marks differ only in the letter ‘O’ of the contested sign which is not shared by the earlier mark. That is not sufficient to clearly differentiate between the marks. 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).

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 9 808 478. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Michele M. BENEDETI-ALOISI

Riccardo RAPONI

Birgit FILTENBORG

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.