OPPOSITION No B 3 028 753

Hansa Armaturen GmbH, Sigmaringer Str. 107, 70567, Stuttgart, Germany (opponent), represented by Ostertag & Partner, Patentanwälte mbB, Epplestr. 14, 70597, Stuttgart, Germany (professional representative)

a g a i n s t

Isam Kudsi, via Alla Bozzoreda 43, 6963 Pregassona, Switzerland and Mohamed Loai Kudsi, via Carlo Alberto Della Chiesa n 46, Capriate San Gervasio, Italy (applicants).

On 22/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 028 753 is partially upheld, with the exception of the following goods:

Class 11: Regulating and safety accessories for gas installations; water filtration bottles sold empty; fireplaces; flues and installations for conveying exhaust gases; igniters; molten metal filter chambers; adjustable coated baffle grease filters [parts of cooker hoods]; filters for gases [household or industrial installations]; grease filters [parts of extractor fans]; filters for cleaning gases [parts of household or industrial installations]; filters for waste gas purification.

2. European Union trade mark application No 17 356 411 is rejected for all the contested goods, with the exception of the above goods, for which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 356 411 ‘HansaSwitch’ (word). The opposition is based on, inter alia, European Union trade mark registration No 10 094 415 ‘HANSAPRIMO’ (word). 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.

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 European Union trade mark registration No 10 094 415.

a) The goods

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

Class 11: Fixtures and fittings for water supply, water heating, bathing, shower, flushing, bidet and washing installations, namely manually, thermostatically and electronically controlled mixer taps, non-contact sanitary fittings, mixer valves, control valves, being parts of sanitary installations; Showers, overhead showers, lateral-jet showers, spray nozzles, being parts of sanitary installations, including in the form of shower fittings and shower combinations; Shower mounts, shower hoses, shower rods; Tub handles, being parts for sanitary installations; Water inlets and water outlets, being parts of sanitary installations; Cartridges and upper parts for sanitary fittings; Mechanical safety valves of metal, the aforesaid goods being connecting, regulating and safety accessories for sanitary installations; Cooling, ventilating and water supply apparatus and sanitary installations; Water treatment plants; Light fixtures; Ultra-violet light apparatus, not for medical purposes; Parts for all the aforesaid goods, included in class 11.

Class 20: Mirrors, bath robe hooks, not of metal, included in class 20, supports and brackets (furniture) of glass and/or plastic; Parts for the aforesaid goods, not of metal and included in class 20.

Class 21: Accessories for the bath and shower, namely glass, soap, towel, bath towel, toilet paper, spare paper, sponge and toilet brush holders, towel hooks, towel rails and towel rings, soap dispensers, soap dishes, toilet brush sets; The aforesaid goods of metal and/or glass and/or plastic; Parts for the aforesaid goods, included in class 21.

The contested goods are the following:

Class 11: Regulating and safety accessories for water and gas installations; Heating, ventilating, and air conditioning and purification equipment (ambient); Burners, boilers and heaters; Filters for industrial and household use; Sanitary installations, water supply and sanitation equipment; Industrial treatment installations; Personal heating and drying implements; Terminal water supply fittings; Hot water apparatus; Appliances for water distribution [automatic]; Aquarium heaters; Swimming pool heaters; Electric water heating apparatus; Fumigation apparatus, not for medical purposes; Drinking water supply apparatus; Water intake apparatus; Hot water heaters; Hydrants; Water heaters and boilers; Water filtration bottles sold empty; Gas boilers for the heating of swimming pools; Gas fired boilers for producing domestic hot water; Gas boilers for water heating; Gas fired back boiler units for domestic hot water systems; Electric boilers; Boilers for hot water supply installations; Hot water boilers; Spray fittings [parts of shower installations]; Spray fittings [parts of sanitary installations]; Waste fittings for sanitary ware; Aerators for faucets [plumbing fittings]; Valves [plumbing fittings]; Fittings for bidets; Shower fittings; Fittings for sanitary purposes; Lavatory installations; Fittings for basins; Sanitary water fittings; Fittings for massage baths; Faucet aerators; Water-saving aerators for faucets; Shower installations; Sanitary apparatus and installations; Electric shower apparatus; Bath fittings; Apparatus for the supply of water for sanitary purposes; Appliances for bathing the feet; Cabinets for washing bedpans [parts of water supply installations]; Stainless steel sanitary ware; Sanitary ware made of stoneware; Sanitary ware made of porcelain; Shower apparatus; Sun tanning appliances; Food and beverage cooking, heating, cooling and treatment equipment; Refrigerating and freezing equipment; Fireplaces; Flues and installations for conveying exhaust gases; Igniters; Lighting and lighting reflectors; Laundry room boilers; Clean chambers [sanitary installations]; Cylinders for the heating of water; Cisterns; Water cisterns; Solar thermal collectors [heating]; Air purgers for use with water distribution installations; Air purgers for use with water supply installations; Heaters for sink water; Water treatment units for aerating and circulating water; Chilled purified water dispensers; Water dispensers; Filter elements for the overflows of water supply tanks; Filter elements for the air vents of water supply tanks; Filters for use with apparatus for water supply; Filters for sanitary water distribution apparatus; Strainers for water lines; Filters for drinking water; Filters for use with apparatus for sanitary purposes; Ionic water generators; Fire hydrants; Hydrants for water supply; Automatic watering installations for cattle; Automatic watering apparatus for livestock; Automatic watering installations for pigs; Automatic watering installations for poultry; Automatic watering installations for plants; Watering installations, automatic; Water conduits installations; Water distribution installations; Heating installations [water]; Hot water installations; Drinking water supply installations; Installations for heating swimming pools; Water supply installations; Vortex inhibitors; Shampoo bowls; Cistern levers; Cistern lever handles; Shower screens; Water coolers; Cooling installations for water; Water heaters [apparatus]; Fitted liners for hot tubs; Water heaters; Circulators [water heaters]; Water heaters for shower baths; Hot water cylinders; Pressure water tanks; Electrically heated hot water tanks; Coils [parts of distilling, heating or cooling installations]; Ballast water treatment systems; Water mixing appliances; Toilet bowls and seats sold as a unit; Water cooling towers; Spray units being parts of water supply installations; Valves being parts of sprinkler systems; Water control valves; Temperature control valves [parts of water supply installations]; Water control valves for water cisterns; Portable foot baths; Apparatus for filtering drinking water; Filter apparatus for water supply installations; Molten metal filter chambers; Filter boxes for water purification; Filter-motor combinations for aquariums; Dust cyclone filters; Dust filters; Tea filters [machines]; Adjustable coated baffle grease filters [parts of cooker hoods]; Water filters; Air filters; Electrostatic air filters; Air filters for use as dust arrestants in industrial processes; Air filters for air conditioning units; Air filters for use as dust extractors in industrial processes; Electric water purification filters for household purposes; Light filters [other than for medical or photographic use]; Power filters for airconditioning; Power filters for water purification [other than machines]; Electrostatic filters for water filtration; Filters for use in aquariums; Filters for use with apparatus heating; Filters for use with apparatus for ventilating; Filters for ice making apparatus; Filters for use with lighting apparatus; Filters for exhaust extractors [parts of household or industrial installations]; Filters for air extractor hoods; Filters for air purifiers; Filters for gases [household or industrial installations]; Grease filters [parts of extractor fans]; Electric coffee filters; Filters for air conditioning; Water treatment filters; Filters for industrial installations; Water filters [installations] for agricultural purposes; Water filters for industrial purposes; Filters for cleaning gases [parts of household or industrial installations]; Filters for water purifiers; Filters for cleaning air; Air cleaning filters [parts of air cleaning machines or installations]; Filters for waste gas purification; Filters for use with lamps; Filters for use with swimming pools; Faucet filters [plumbing fittings]; Filters for ponds; Air filtering installations; Membranes for the filtration of water.

An interpretation of the wording of the list of goods is required to determine the scope of their protection.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Sanitary installations are identically included in both lists of goods.

The opponent’s water supply apparatus is a very broad category, which at least overlaps with the following contested goods: shampoo bowls; water supply equipment; hot water apparatus; drinking water supply apparatus; electric shower apparatus; apparatus for the supply of water for sanitary purposes; shower apparatus; automatic watering installations for cattle; automatic watering apparatus for livestock; automatic watering installations for pigs; automatic watering installations for poultry; automatic watering installations for plants; watering installations, automatic; drinking water supply installations; water supply installations; hydrants; fire hydrants. These goods are therefore identical.

The following contested goods are or may be used, inter alia, as components of sanitary installations: fumigation apparatus, not for medical purposes; water conduits installations; water distribution installations; hot water installations; sanitation equipment; appliances for water distribution [automatic]; water intake apparatus; appliances for bathing the feet; cabinets for washing bedpans [parts of water supply installations]; ionic water generators; shower screens; lavatory installations; shower installations; sanitary apparatus and installations; clean chambers [sanitary installations]; portable foot baths; fitted liners for hot tubs; cisterns; water cisterns; cistern levers; cistern lever handles; toilet bowls and seats sold as a unit; hot water heaters; boilers and heaters; water heaters and boilers; gas boilers for the heating of swimming pools; gas fired boilers for producing domestic hot water; gas boilers for water heating; gas fired back boiler units for domestic hot water systems; electric boilers; boilers for hot water supply installations; hot water boilers; heating installations [water]; installations for heating swimming pools; water heaters [apparatus]; water heaters; circulators [water heaters]; water heaters for shower baths; hot water cylinders; electrically heated hot water tanks; aquarium heaters; swimming pool heaters; laundry room boilers; solar thermal collectors [heating]; heaters for sink water; cylinders for the heating of water; regulating and safety accessories for water installations; terminal water supply fittings; spray fittings [parts of shower installations]; spray fittings [parts of sanitary installations]; waste fittings for sanitary ware; aerators for faucets [plumbing fittings]; valves [plumbing fittings]; fittings for bidets; shower fittings; fittings for sanitary purposes; fittings for basins; sanitary water fittings; fittings for massage baths; faucet aerators; water-saving aerators for faucets; bath fittings; air purgers for use with water distribution installations; air purgers for use with water supply installations; water treatment units for aerating and circulating water; chilled purified water dispensers; water dispensers; filter elements for the overflows of water supply tanks; filter elements for the air vents of water supply tanks; filters for use with apparatus for water supply; filters for sanitary water distribution apparatus; strainers for water lines; filters for drinking water; filters for use with apparatus for sanitary purposes; hydrants for water supply; water mixing appliances; spray units being parts of water supply installations; valves being parts of sprinkler systems; water control valves; temperature control valves [parts of water supply installations]; water control valves for water cisterns; pressure water tanks; vortex inhibitors; apparatus for filtering drinking water; filter apparatus for water supply installations; filter boxes for water purification; water filters; electrostatic filters for water filtration; water treatment filters; water filters [installations] for agricultural purposes; water filters for industrial purposes; filters for water purifiers; faucet filters [plumbing fittings]; electric water purification filters for household purposes; membranes for the filtration of water; power filters for water purification [other than machines]; stainless steel sanitary ware; sanitary ware made of stoneware; sanitary ware made of porcelain; coils [parts of distilling installations]. Accordingly, they at least overlap with the opponent’s sanitary installations, the latter being a very broad category, encompassing all types of apparatus, appliances, equipment, fixtures and fittings, parts of installations used for sanitary purposes. These goods are, hence, identical.

Sun tanning appliances of the contested sign overlap with the opponent’s ultra-violet light apparatus not for medical purposes. They are therefore identical.

The opponent’s water treatment installations are included in the contested industrial treatment installations. Since the Opposition Division may not dissect ex officio the broad category of the opponent’s goods, they are considered identical. Further, the contested ballast water treatment systems are included in the opponent’s water treatment installations and hence – these goods are identical. As for the contested filters for industrial installations; filters for use in aquariums; filters for ponds; filters for use with swimming pools; filters for industrial and household use; filter-motor combinations for aquariums, these are a broad range of filters designated, inter alia, to filter water in different environments, for household and/or industrial purposes. The opponent’s water treatment installations is a broad category, encompassing all types of apparatus, appliances, equipment, fixtures and fittings, components for installations for water treatment for household or industrial purposes. Accordingly, these goods at least overlap and are therefore identical.

The opponent’s cooling apparatus in this class is a broad category, including apparatus for cooling the air, as well as apparatus used for storing food, such as refrigerators. Therefore, they are considered identical to refrigerating and freezing equipment; water coolers; cooling installations for water; water cooling towers; air conditioning equipment (ambient) and food and beverages cooling equipment of the applicant, since, the opponent’s goods either include them or overlap with them. Further, the opponent’s cooling apparatus are at least lowly similar to the following contested goods: heating, ventilating, and purification equipment (ambient); food and beverage cooking, heating and treatment equipment; filters for ice making apparatus; tea filters [machines]; electric coffee filters; electric water heating apparatus; personal heating and drying implements. This is because they may be produced by the same undertakings, target the same consumers and be distributed via identical distribution channels.

The contested lighting and lighting reflectors are broad categories, which include the opponent’s light fixtures. Since the Opposition Division may not dissect ex officio the contested broad categories, these goods are considered identical. Furthermore, the contested filters for use with lighting apparatus; light filters [other than for medical or photographic use]; filters for use with lamps are similar to the opponent’s light fixtures, as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested coils [parts of cooling installations] are identical to parts for all the aforesaid goods, included in class 11 (cooling apparatus). The contested coils [parts of heating installations] are therefore considered similar to parts for all the aforesaid goods, included in class 11 (cooling apparatus), the latter including, among others, coils for cooling installations. Consequently, the nature and purpose of the goods is the same, and their distribution channels may coincide, as well.

The contested air filters; electrostatic air filters; air filters for use as dust arrestants in industrial processes; air filters for air conditioning units; air filters for use as dust extractors in industrial processes; power filters for airconditioning; filters for use with apparatus for ventilating; filters for air extractor hoods; filters for exhaust extractors [parts of household or industrial installations]; filters for air purifiers; filters for use with apparatus heating; filters for air conditioning; filters for cleaning air; air cleaning filters [parts of air cleaning machines or installations]; air filtering installations; dust filters; dust cyclone filters are similar to ventilating apparatus of the opponent as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested burners are a broad category that includes, inter alia, burners for heating installations. As such, these goods are considered similar to the earlier ventilating apparatus, since they may be produced by the same manufacturer and also share the same end-users and distribution channels.

The remaining contested goods, namely regulating and safety accessories for gas installations; water filtration bottles sold empty; fireplaces; flues and installations for conveying exhaust gases; igniters; molten metal filter chambers; adjustable coated baffle grease filters [parts of cooker hoods]; filters for gases [household or industrial installations]; grease filters [parts of extractor fans]; filters for cleaning gases [parts of household or industrial installations]; filters for waste gas purification do not share any relevant point of similarity to the goods of the opponent. In particular, the contested are quite specialised goods, such as fireplaces, as well as goods intended to be used for ignition, for gas installation, for cleaning or conveying gases, or for filtering other specific substances. When compared to the goods of the opponent in Class 11, which are generally water supply apparatus, sanitary installations, ventilating apparatus, lightning and cooling apparatus, they are quite distinct. The same applies regarding the opponent’s goods in Class 20 and 21, which include articles for the bathroom and parts thereof. Consequently, the goods under comparison have different nature, purposes and methods of use. Their manufacturers are quite distinct, and they are neither in competition nor complementary. Furthermore, their consumers and sales points are different. Therefore, the contested goods listed in that paragraph are dissimilar to all the opponent’s goods.

b) 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 to varying degrees 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, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

HANSAPRIMO	HansaSwitch
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 light of the above considerations, it is considered appropriate that the analysis focusses on the perception of the German public, since as it will be explained below, the signs under comparison will be seen as composed of meaningful words at least by a significant part of the German consumers, which in this case is the most advantageous scenario for the opponent.

Although it is true that consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that they will break down a word into elements which, for them, have a concrete meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Upon taking into account the mentioned specifics of the perception of a sign, it is considered that the earlier mark is likely to be broken down by the German public into ‘HANSA’ and ‘PRIMO’, because these two elements have a clear meaning for them. In particular, ‘HANSA’ is likely to be seen as a reference to the Hanseatic League, which was a commercial union existing in the Middle Ages, in which union the German cities had an important role (‘die Hanse’ or ‘die Hansa’ in German – source: www.duden.de). ‘PRIMO’ will be understood by the German public as meaning ‘first’ (it exists in the German phrase ‘pro primo’, as well as ‘primo’ is used in the field of music to refer to the first, leading musician, dancer, etc.). Moreover, ‘PRIMA’ in German means ‘of the best quality’ (source: www.duden.de). While the meaning of ‘HANSA’ is not related to the goods at issue in any manner, it is considered that ‘PRIMO’ might create laudatory connotations for part of the public, in particular as referring to the first-class quality of the goods, given its closeness to ‘PRIMA’ (24/09/2015, T-195/14, PRIMA Klima, EU:T:2015:681, § 60). Consequently, for part of the public ‘HANSA’ will carry more weight in the consumer’s perception, given the laudatory connotations ‘PRIMO’ may create.

As for the contested sign, it is considered that the German public will break it down into the components ‘HANSA’ and ‘SWITCH’. The above-said on the perception of ‘HANSA’ is fully applicable regarding this component in the contested sign. As for ‘SWITCH’, this is an English word having the meaning, inter alia, of ‘a device for making and breaking the connection in an electric circuit’ and ‘to change’ (Oxford Living Dictionaries). Given that the German consumers have a good understanding of the English language (16/12/2015, T-128/15, RED RIDING HOOD, EU:T:2015:977, § 31) and moreover that the verb ‘switchen’ is also a dictionary term in the German language (meaning to change the channels on a TV – source www.duden.de), the component is likely to evoke a meaning for a significant part of the public. These components are of normal distinctiveness for the relevant goods, since the associations they would or may create, are not related to them in any manner.

Visually and aurally, the signs coincide in ‘HANSA’, which identically represents the first five letters of the signs that will likely be seen as a separate component by the relevant consumers for the reasons explained above. They differ in their ending or second components, which are ‘PRIMO’ and ‘SWITCH’, respectively.

Account is also taken of the fact that it is usually the beginning of the signs which primarily catches the consumer’s attention, given that they read from left to right. In this particular case while consumers will notice the differing parts of the signs, the identical five letters at their beginning, which are moreover meaningful and unrelated to the goods at issue, will lead to an average degree of visual and aural similarity. Moreover, the second part of the earlier mark will be less influential for part of the public, due to its laudatory connotations. Even for those, for whom the distinctiveness of the components of the signs is not impaired, there will be an average degree of visual and aural similarity, because the differing components of the same or very similar length (five letters in the earlier mark versus six letters in the contested one) compared to the coinciding ones, are not capable of counteracting the identical beginnings, which moreover will be seen as a separate word.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On account of the meaning that the relevant public will see in the signs’ identical element, the signs will be conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) 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.

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).

It has been established above that the goods are partially identical, partially similar to varying degrees and partially dissimilar. The earlier mark is of a normal degree of distinctiveness and the signs have been found to be similar to an average degree in all three aspects of comparison. The relevant public is the general public and the professional public, with an attention that varies from average to high upon purchase of the respective goods.

It is to be specifically noted that the coincidence in the first part of the signs ‘HANSA’, that is of five letters in the same sequence, which moreover will be seen as a separate word by the relevant consumers, is considered to cause a likelihood of confusion. In particular, while the consumers might not necessarily confuse the marks themselves, they are likely to make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings. This is because the branding strategy of many companies nowadays includes using the same distinctive word (the house mark) in combinations with other words, to designate different products from their portfolios. The meaning of ‘HANSA’ for the relevant public does not create any associations with the goods at issue, i.e. it is of normal distinctiveness and it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, irrespective of whether the differing elements of the marks are seen as related to the goods at issue or as distinctive, they are not capable of outweighing the coincidence in one, out of two components, which moreover is positioned at the beginning of both signs (i.e. the same structure used in both signs and the consumers will first encounter the coinciding element).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 094 415. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar at varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the claim of the opponent for a family of marks. The result would be the same with respect to the goods found identical or similar to varying degrees.

Likewise, there is no need to assess the claimed family of marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the opponent had a family of marks.

The opponent has also based its opposition on the following earlier trade marks:

(i) European Union trade mark registration No 17 676 495 ‘HANSAMIX’, registered for goods in Class 11;

(ii) European Union trade mark registration No 9 095 852 ‘HANSALIGNA’, registered for goods in Classes 11, 20 and 21;

(iii) European Union trade mark registration No 13 643 093 ‘HANSABLUEBOX’, registered for goods in Classes 11, 20 and 21;

(iv) European Union trade mark registration No 17 676 438 ‘HANSARONDA’, registered for goods in Class 11;

(v) European Union trade mark registration No 8 379 935 ‘HANSADESIGNO’, registered for goods in Class 11;

(vi) European Union trade mark registration No 15 718 241 ‘HANSAPRADO’, registered for goods in Class 11;

(vii) German trade mark registration No 2 910 538 ‘HANSATWIST’, registered for goods in Class 11;

(viii) German trade mark registration No 30 086 880 ‘HANSAVANTIST’, registered for goods in Classes 6, 9, 11, 20 and 21;

(ix) German trade mark registration No 30 012 241 ‘HANSAPOLO’, registered for goods in Class 11.

In its submission of 14/08/2018, the opponent also refers to additional earlier rights. However, since these earlier rights were not invoked within the opposition term (expired on 24/01/2018), these rights may not serve as basis for the present opposition proceedings and will not be reviewed.

The scope of the goods covered by the above-listed registrations is mainly identical or narrower than the one of the earlier right already reviewed above (Classes 11, 20 and 21). As for German trade mark registration No 30 086 880 ‘HANSAVANTIST’, which is registered for the additional Classes 6 and 9, its registered goods and services are all related to water supply devices and sanitary installations and hence – do not reveal any point of similarity with the goods of the applicant, found dissimilar to those of European Union trade mark registration No 10 094 415. Accordingly, the outcome on the basis of any of these additional earlier rights cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Teodora Valentinova TSENOVA-PETROVA

Vita VORONECKAITE

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.