OPPOSITION No B 3 000 778

Casa Prem, S.L., calle Gamonal, 45, Pol Ind. Vallecas - Nave A/B, 28031 Madrid, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative)

a g a i n s t

Melitta Europa GmbH & Co. KG, Ringstr. 99, 32427 Minden, Germany (applicant), represented by Frank Reese, Marienstr. 88, 32425 Minden, Germany (professional representative).

On 24/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 000 778 is upheld for all the contested goods.

2. European Union trade mark application No 17 362 823 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 362 823 for the word mark ‘CoolTouch’. The opposition is based on, inter alia, Spanish trade mark registration No 2 666 077 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

On 10/05/2018 the opponent submitted facts, evidence and arguments in support of the opposition, including some documents as proof of use of the earlier marks. On 17/08/2018, the applicant submitted observations in reply to the opposition and to the supporting facts, evidence and arguments presented by the opponent and challenged the proof of use filed by the opponent.

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant must submit a request for proof of use by way of a separate document as required by Article 10(1) EUTMDR and according to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s observations do not constitute a request by way of separate document and are not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use. Consequently, the applicant’s argument vis-à-vis the use of the earlier marks should be set aside.

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 Spanish trade mark registration No 2 666 077.

a) The goods

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

Class 11: Lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water distribution and sanitary equipment.

The contested goods are the following:

Class 7: Electric milk frothers.

Class 11: Water heaters; coffee machines, electric; electric coffee brewers.

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 7

The contested electric milk frothers are similar to the opponent’s cooking equipment in Class 11 because they have the same nature. They coincide in distribution channels/outlets and relevant public. Moreover, they coincide in producer.

Contested goods in Class 11

The contested water heaters are included in the broad category of the opponent’s water distribution equipment. Therefore, they are identical.

The contested coffee machines, electric; electric coffee brewers are similar to the opponent’s cooking equipment because they have the same nature and coincide in distribution channels/sales outlets and relevant public. Moreover, they coincide in producer.

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 are directed at the public at large. The degree of attention is average.

c) The signs

	CoolTouch
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark consisting of the sole word ‘KOOLTECH’ written in standard italic upper-case letters against a rectangular background. The letters ‘O’ are depicted as terrestrial globe hemispheres. It should be noted that the depiction of the letters ‘O’ as figurative elements will not alter the public’s perception of these elements as letters, given that they are depicted as part of a word. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case. Even though the sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). The component ‘TECH’, although it has no direct meaning in Spanish, for the vast majority of the public will be associated with the word ‘technology’ given the consumers’ overexposure to such abbreviation and due to the similarity with the equivalent abbreviation ‘TEC’ in Spanish language. Since a clear link will be established with the goods at issue it is consequently of limited distinctiveness. The component ‘KOOL’ will not be understood by the Spanish public and it is, therefore, distinctive to a normal degree. Furthermore, the sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Therefore, this will not be taken into consideration for the purposes of comparison.

The contested mark is a word mark, ‘CoolTouch’. In the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether the mark is depicted in lower- or upper-case letters, or in a combination thereof. It has no meaning for the relevant public and is, therefore, fully distinctive.

Visually, the signs coincide in the string of letters ‘(*)OOLT(**)CH’. However, they differ in the first letters of the signs (‘K’ v ‘C’) and the sixth, namely (‘E’ v ‘O’) and the additional letter ‘U’ of the contested sign. Consequently, the signs coincide in a total of six letters out of eight of the earlier mark and nine of the contested sign. Regarding the figurative components of the earlier mark, although they are not negligible in the overall impression created by the trade mark, they are not such as to divert the public’s attention from the verbal element that they merely embellish.

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

Aurally, the pronunciation of the signs coincides in the first syllable ‘KOOL’, present identically in both signs and in the sound of the letters ‘T-(**)-C-H’. The pronunciation differs in the sound of the vowels (‘E’ v ‛OU’) at the second syllable of the signs. Account must be taken that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Considering that the signs fully coincide at the beginning (which is the part that catches most of the consumers’ attention), the signs are aurally similar to an above average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the component ‘TECH’ of the earlier mark will evoke a concept, it is not sufficient to establish any conceptual dissimilarity, as this element is of limited distinctiveness and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal components and elements, which have no meaning. 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a component of a limited distinctiveness in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 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, Sàbel, EU:C:1997:528, § 22).

As has been concluded above, the goods are identical and similar. They target the general public whose degree of attention is average. The earlier mark has a normal degree of distinctiveness. The marks in dispute are visually similar to an average degree and aurally to an above average degree while a conceptual comparison is not possible, consequently, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account 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) and that the differences between the signs do not suffice to overweight their coincidences, a likelihood of confusion exists.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 666 077. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the Spanish trade mark registration No 2 666 077 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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 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

Boyana NAYDENOVA

María del Carmen COBOS PALOMO

Helen Louise MOSBACK

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.