OPPOSITION No B 3 050 404

Tammer Brands Oy, Viinikankatu 36, FI-33800 Tampere, Finland (opponent), represented by Berggren Oy, Tampere, Visiokatu 1, FI-33720 Tampere, Finland (professional representative)

a g a i n s t

Shenzhen Jidihuo Beilian Clothing Co., Ltd., 2C208, Blk.2, Longxing Commercial Plaza Longcheng Subdist., Longgang Dist., , Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 20/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 404 is upheld for all the contested goods, namely

Class 11: Searchlights; diving lights.

2. European Union trade mark application No 17 493 602 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 493 602 ‘polar fire’, namely against some of the goods in Class 11. The opposition is based on European Union trade mark registration No 10 594 539 ‘POLAR’. 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, inter alia, the following:

Class 11: Apparatus for lighting; lanters.

The contested goods are the following:

Class 11: Searchlights; diving lights.

The contested searchlights; diving lights are included in the broader category of the opponent’s apparatus for lighting. Therefore, they are identical.

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.

The degree of attention is considered to be average.

3. The signs

POLAR	polar fire
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.

Both word marks contain English words and, bearing in mind, in particular, the conceptual comparison between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The marks are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the marks are depicted in upper- or lower-case letters.

The coinciding element ‘POLAR’ will be understood by the English-speaking part of the public as ‘relating to the North or South Pole of the earth (or another celestial object), or the poles of the celestial sphere’ (information extracted from Oxford English Dictionary on 14/05/2019 at https://www.oed.com/view/Entry/146742?redirectedFrom=polar - eid). Bearing in mind the relevant goods, it is considered distinctive to an average degree.

The element ‘fire’ of the contested sign will be understood by the English-speaking part of the public as referring to ‘the physical manifestation of combustion, characterized by flames and the production of (intense) heat, light, and (typically) smoke, and caused by the ignition and burning of flammable material in the presence of oxygen’ (information extracted from Oxford English Dictionary on 14/05/2019 at https://www.oed.com/view/Entry/70512?rskey=q2UXsM&result=1&isAdvanced=false - eid). As it does not directly describe or allude to any characteristics of the goods in question, it has an average degree of distinctiveness.

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.

Visually and aurally, the signs coincide in the distinctive element ‘POLAR’, which constitutes the entire earlier mark and is the first element of the contested sign. The marks differ in the additional word ‘fire’ of the contested sign.

Although the additional word ‘fire’ creates some visual and aural differences between the signs, the fact remains that the entire earlier mark is incorporated at the beginning of the contested sign, which usually attracts more of the consumers’ attention. Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the marks will be associated with the same meaning on account of the common element ‘POLAR’ and differ only in the additional concept conveyed by the second element ‘fire’ of the contested sign, the signs are conceptually similar to at least 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.

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

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the goods at issue are identical. The similarities and differences between the signs have been established. The degree of attention of the relevant public is considered to be average.

The signs are similar to the extent that they coincide in the element ‘POLAR’, which constitutes the entire earlier mark and is wholly reproduced at the beginning of the contested sign as its distinctive element. This coincidence is even more obvious taking into account that this verbal element will be the first noticed by the consumers when they encounter the contested sign. Although the verbal element ‘fire’ in the contested sign creates some visual, aural and conceptual differences between the marks, it cannot outweigh the abovementioned commonality.

Taking into account the principle of interdependence indicated above and the fact that there is a clear conceptual link between the signs, it cannot be safely excluded that the relevant consumers, relying on their imperfect recollection, will confuse the marks or, alternatively, perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 10 594 539. 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

Rasa BARAKAUSKIENE

Birgit FILTENBORG

Erkki MÜNTER

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.