OPPOSITION No B 3 036 103

Somfy Activites Sa, 50 Avenue du Nouveau Monde, 74300 Cluses, France (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

TCL Air Conditioner (Zhongshan) Co. Ltd., 59, Nantou Road West, Nantou, Zhongshan, Guangdong, China (applicant), represented by Global IP Law LTD., Wisteria House, Clarendon Road, South Woodford, London E18 2AW, United Kingdom (professional representative).

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

DECISION:

1. Opposition No B 3 036 103 is partially upheld, namely for the following contested goods:

Class 7: Elevating apparatus; dynamos.

Class 9: Computer software applications, downloadable; computers; computer programs [downloadable software]; computer peripheral devices; navigational instruments; electronic publications, downloadable; computer software, recorded; time switches, automatic; transformers [electricity]; switches, electric; lighting ballasts; electrical adapters.

2. European Union trade mark application No 17 438 623 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent initially filed an opposition against all the goods of European Union trade mark application No 17 438 623 for the figurative mark ; however, at a later stage, it limited the opposition, which is now directed against all the goods in Classes 7 and 11 and some of the goods in Class 9. The opposition is based on, inter alia, international trade mark registration No 1 365 013 designating the European Union for the word mark ‘WINWOW’. 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 international trade mark registration No 1 365 013 designating the European Union for the word mark ‘WINWOW’.

a) The goods

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

Class 7: Control mechanisms for motors and engines; electric devices for operating doors, windows, shutters, awnings, indoor window blinds and indoor and outdoor sun awnings; electronic or electric motors for operating doors, windows, shutters, awnings, indoor window blinds and indoor and outdoor sun awnings.

Class 9: Wind sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors, air quality sensors, indoor light sensors, sunshine sensors; electric apparatus sensors for controlling doors, windows, shutters, awnings, indoor window blinds and indoor and outdoor sun awnings; smoke detectors; detectors; electric and electronic control devices for opening and closing windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings; remote controls for opening and closing windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings; wall-mounted remote controls and switches for the remote control of windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings; timers for controlling the opening and closing of windows, shutters, doors, indoor blinds and indoor and outdoor sun awnings; computer interfaces for controlling the opening and closing of windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings.

The contested goods, after a limitation of the opponent of 22/06/2018, are the following:

Class 7: Washing machines [laundry]; kitchen machines, electric; blenders, electric, for household purposes; beverage preparation machines, electromechanical; coffee grinders, other than hand-operated; food processors, electric; dishwashers; mixers [machines]; vacuum cleaner attachments for disseminating perfumes and disinfectants; shoe polishers, electric; agricultural machines; food preparation machines, electromechanical; elevating apparatus; dynamos; wringing machines for laundry.

Class 9: Computer software applications, downloadable; computers; computer programs [downloadable software]; computer peripheral devices; navigational instruments; cameras [photography]; electronic publications, downloadable; computer software, recorded; time switches, automatic; transformers [electricity]; switches, electric; lighting ballasts; electrical adapters; battery jars.

Class 11: Refrigerators; air cooling apparatus; lamps; coffee machines, electric; microwave ovens [cooking apparatus]; cooking utensils, electric; ice machines and apparatus; extractor hoods for kitchens; electric fans for personal use; air purifying apparatus and machines; air dryers; disinfectant apparatus; water purification installations; heating apparatus; air conditioners for vehicles; laundry dryers, electric; kettles, electric.

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 9

As the opponent suggested, the contested switches, electric at least overlap with the opponent’s wall-mounted remote controls and switches for the remote control of windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings. Furthermore, the contested time switches, automatic are devices in which a timer operates an electric switch controlled by the timing mechanism. These goods overlap with the opponent’s timers for controlling the opening and closing of windows, shutters, doors, indoor blinds and indoor and outdoor sun awnings. These goods are identical.

The contested navigational instruments overlap with the opponent’s detectors. They are considered identical.

The contested computer software applications, downloadable; computer programs [downloadable software]; computer software, recorded generally consist of a set of instructions for a computer to perform some task. The opponent’s computer interfaces for controlling the opening and closing of windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings may refer to the layouts or designs of the interactive elements of a computer program, an online service or an electronic device that may be applied in the particular field. Since these goods may overlap to a certain extent, they are considered identical.

Conversely, the opponent’s computer interfaces, for the purposes mentioned above, may also be defined as devices, such as cables, network cards, monitors or keyboards that enable interaction or communication between a computer and another entity. Consequently, the contested computer peripheral devices overlap with the opponent’s computer interfaces. They are identical.

Likewise, the opponent’s goods have to be considered at least similar to the contested computers, as at some point they will be essential to each other’s functionality. Further, the goods target the same consumers and share the same commercial channels and origin. Some of them may serve the same purposes and have similar method of use.

The contested transformers [electricity] are static electrical devices that transfer electrical energy between two or more circuits. The contested electrical adapters are special devices for connecting electrical equipment to a power supply, or for connecting different pieces of electrical or electronic equipment together. The contested lighting ballasts are electric components that help to safely start and operate lamps such as HID and fluorescent lamps since they provide the correct voltage for the start-up and running of the lamp. All these goods are considered at least similar to a low degree to the opponent’s electric and electronic control devices for opening and closing windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings to the extent that they may be essential components for the normal operating activities of the opponent’s goods, in particular by regulation electricity. These goods have may have the same purpose and they coincide in their target public and distribution channels.

The contested electronic publications, downloadable may concern the manuals or instructions needed alongside the performance of software products and to that extent are also considered at least similar to a low degree to the opponent’s computer interfaces for controlling the opening and closing of windows, shutters, doors, awnings, indoor blinds and indoor and outdoor sun awnings. They may have a complementary character, target the same public and be distributed through the same channels.

The contested battery jars are devices in which two or more primary cells are connected together, usually in series, to provide a source of electric current. The contested cameras [photography] are pieces of equipment used for taking photographs, making films or producing television pictures. Unlike the contested goods above, these goods have nothing in common with any of the opponent’s goods, and particularly the goods in Class 9, which comprise various sensors, detectors, remote control apparatus and interface thereof, or any of the opponent’s goods in Class 7. These goods serve different purposes, target a different general public, they are manufactured by different undertakings and use distinct distribution networks. No complementarity or competition relationship exists between them either. They are therefore dissimilar.

Contested goods in Classes 7 and 11

The remaining opponent’s goods in Class 7 are electric devices generally used to operate mechanisms such as on doors, windows and blinds. Given their function as, inter alia, lifting mechanisms, they are considered similar to the contested elevating apparatus; the reason being that the contested goods also include platforms, compartments or other types of mechanical hoists used to raise or lower items in a vertical shaft. These goods may then coincide in their purposes and, to some extent, method of use (lifting objects), as well as in their target public and distribution channels. They could easily be produced by the same manufacturers familiar with the functioning of said lifting mechanisms.

The contested dynamos, which are generally speaking machines for generating electricity, are considered at least similar to a low degree to the opponent’s electronic or electric motors for operating doors, windows, shutters, awnings, indoor window blinds and indoor and outdoor sun awnings to the extent that these goods may have similar functions, may target the same public and have the same distribution channels.

In its observations, the opponent referred generally to the fact that many of its products may be incorporated in the contested goods in Classes 7 and 11. In that respect the Opposition Division notes that the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). Therefore, the opponent’s allegations that some of the contested goods may integrate, by way of example, the opponent’s sensors or detectors, is in itself insufficient to raise some degree of similarity.

The contested washing machines [laundry]; kitchen machines, electric; blenders, electric, for household purposes; beverage preparation machines, electromechanical; coffee grinders, other than hand-operated; food processors, electric; dishwashers; mixers [machines]; vacuum cleaner attachments for disseminating perfumes and disinfectants; shoe polishers, electric; food preparation machines, electromechanical; wringing machines for laundry (Class 7) are all various types of cleaning, washing and laundering machines, as well as machines and apparatus for food and beverage processing and preparation. These goods have the character of domestic appliances and serve various household purposes, as listed above.

Furthermore, the contested refrigerators; air cooling apparatus; lamps; coffee machines, electric; microwave ovens [cooking apparatus]; cooking utensils, electric; ice machines and apparatus; extractor hoods for kitchens; electric fans for personal use; air purifying apparatus and machines; air dryers; disinfectant apparatus; water purification installations; heating apparatus; air conditioners for vehicles; laundry dryers, electric; kettles, electric in Class 11 are various household apparatus used for the purposes of refrigerating, lighting, cooking, heating, ventilating, water supply and so on.

All the above goods usually have their own specific distribution channels, such as stores and outlets for home appliances and/or interior design, and they target particular groups of end consumers interested in electro-domestic apparatus, devices and machines.

The opponent argued that there is a close link between the contested machines and apparatus listed above and its goods in Classes 7 and 9 as the opponent ‘develops products that enable the control, management and programming of home apparatus’, that is to say, the incorporation of various sensors, detectors and remote controls, for instance, may ensure the automation of the contested goods above. First, the Opposition Division notes that while most of the opponent’s goods are specified as implements for the remote control and operation of windows, doors, blinds, awnings and shutters, the contested goods have no points in common with any of these. Second, facilities such as ‘home monitoring’, ‘building automation’ or ‘smart home/office’ are offered on the market providing efficient remote control of home appliances and building systems. Notwithstanding the fact that all these goods may relate to the comprehensive automation of household or industrial premises, in the real market environment consumers will not normally expect the above goods to originate from the same undertakings (in particular, manufacturers of electronics or controls and operating mechanisms for doors, windows, blinds, etc., versus manufacturers of domestic appliances). These goods still have different purposes, publics and distribution networks; they are not interchangeable or complementary to each other and, in light of all the above findings, they are considered globally dissimilar.

The opponent’s control mechanisms for motors and engines in Class 7 are devices such as switches or levers used to operate a piece of equipment or, as in the present case, motors and engines. Therefore, it is obvious that none of the contested goods in Classes 7 or 11 are related to motors or engines and the controls applied thereof, and no similarity can be established in that direction either.

Finally, the contested agricultural machines encompass a different type of equipment and implements used for the purposes of farming and agriculture, such as tractors, combine harvesters and winnowing machines. These goods belong to a completely different commercial sector when compared to the opponent’s goods in Classes 7 and 9. It is evident that they target different publics, have different distribution channels and manufacturers and have no complementary relationship. They are dissimilar.

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, as well at business customers with specific professional knowledge or expertise in electric instruments and devices.

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

WINWOW
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, for which none of the verbal elements will bring into mind any clear concept or possible association.

The elements ‘WINWOW’ or ‘WISNOW’ have no meaning for the relevant public and are, therefore, distinctive.

The figurative element of the contested sign, representing a mountain range, has no direct relation to the goods in question and, consequently, it is distinctive. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the contested sign contains an additional grey rectangular background and a plain stylisation of its font; these features will nevertheless have a very limited impact on the perception of the sign.

Visually, the signs coincide in the sequence of letters ‘WI**OW’, which are the beginning and the endings of the signs. They differ in their middle parts ‘NW’ and ‘SN’, respectively, as well as in the additional device of the contested sign and its stylisation and background. Account is taken of the fact 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 reader’s attention. Therefore, especially bearing in mind the identical beginnings and endings, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘WI**OW’, present identically in both signs, and differs in the middle parts ‘NW’ and ‘SN’, respectively. The figurative element of the contested sign will have no impact from an aural perspective and, as above, the signs are considered similar to at least an average degree from an aural perspective.

Conceptually, although the public in the relevant territory will perceive the meaning of the mountain-device in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

The goods in the present case are partly identical and similar to various degrees and partly dissimilar, the degree of attention will vary depending on the goods concerned. The earlier mark has a normal degree of distinctiveness.

Although the contested sign is a complex mark, as explained above, the impact of a sign’s verbal element is usually greater than that of its figurative elements, since consumers are accustomed to using them to refer to signs orally. As has been established, the signs’ verbal elements coincide in their initial and final sequences of letters, namely ‘WI’ and ‘OW’. The differing sequence of the signs ‘NW’ and ‘SN’ are presented in the middle of each sign. 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 who pay 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, bearing in mind that the verbal elements of the signs will be perceived as a whole, without dissecting the parts that are meaningless for the consumers, the differing letters, which are in a non-prominent position and between other identical letters, may be easily overlooked by the relevant public. This is reinforced by the fact that the signs also coincide in the presence of the letter ‘N’, albeit in a reversed position.

Furthermore, 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). In the present case, the average similarity between the signs will be sufficient to compensate for some of the goods found only similar to a low degree.

For the sake of completeness, in its observations the applicant claimed to rely on its good faith by applying for the contested sign. The claim of having good faith, however, remains irrelevant to the present proceedings in which the examination is, in particular, based on predating (earlier) rights falling into conflict with the application.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 to 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.

The opponent has also based its opposition on the earlier French trade mark registration No 4 323 801 for the word mark ‘WINWOW’. However, since this mark covers exactly the same scope of goods, the outcome cannot be different with respect to 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

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Teodora TSENOVA-PETROVA

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.