OPPOSITION No B 3 016 345

Teka Industrial S.A., Cajo 17, 39011 Santander (Cantabria), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Haimin Zheng, Panyangqianheng village, liushi Town, 325600 Yueqing, People’s Republic of China (applicant), represented by Ardeshir Matini, Lower Ground Floor 26, Finsbury Square, EC2A 1DS London United Kingdom (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 016 345 is upheld for all the contested goods.

2. European Union trade mark application No 17 558 214 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 17 558 214 . The opposition is based on, inter alia, European Union trade mark registration No 1 207 703 and international trade mark registration No 913 241 designating the Benelux and Croatia, both for the figurative mark . The opponent invoked Article 8(1)(b) in relation to both earlier marks and Article 8(5) EUTMR in relation to the earlier European Union trade mark.

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.

a) The goods

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

European Union trade mark registration No 1 207 703

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs and in particular washing machines.

Class 11: Cookers, ovens, sinks and extractor hoods, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

International trade mark registration No 913 241 designating the Benelux and Croatia

Class 7: Washing machines, dishwashers and drying machines.

Class 9: Scientific, nautical and surveying apparatus and instruments, scientific, nautical, surveying, electric (including radio), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; automatic coin or token-operated apparatus; speaking machines; cash registers, calculating machines; fire extinguishers; radios and tv apparatus, electric irons, recorders, electrical vacuum cleaners, record players, electric lighters, waxing machines and electric machines for polishing floors, electric trouser presses rheostats, batteries and electrical condensers, relays, electric resistances.

The contested goods are the following:

Class 9: Cell switches [electricity]; circuit breakers; electrical adapters; light regulators [dimmers], electric; switches, electric; remote control apparatus; regulating apparatus, electric; thermostats; monitoring apparatus, electric; radios.

class 11: heating apparatus; heating apparatus, electric; thermostatic valves [parts of heating installations]; air-conditioning apparatus; ventilation [air-conditioning] installations and apparatus; light-emitting diodes [led] lighting apparatus; lighting apparatus and installations; heating installations; central heating radiators; water heaters.

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.

The applicant argues that the goods and services are not similar, because ‘the opponent’s mark is probably more known among the general public as a household appliance brand and their finished products are mainly concentrating in the kitchen appliances, whereas the applicant’s goods can be the components of some of the household appliances’. In this respect it must be pointed out that for the purpose of these proceedings, it is irrelevant which goods the parties actually manufacture.

The goods have to be compared as they appear on the register and as they are applied for before the Office (see, for example, 11/11/2010, R1327/2010 MONELLA VAGABONDA VIP (Fig. Mark)/VAGABOND et al., at §25). The reasoning behind this is that during the first five years of registration of a EUTM, the trade mark owner may diversify production or commercialization of goods or services within the limits of his specification.

Contested goods in Class 9: (comparison with international trade mark registration No 913 241 designating the Benelux and Croatia)

The contested radios identically appear on both lists.

The contested monitoring apparatus, electric overlap with the opponent’s measuring instruments and appliances. Therefore, these goods are identical.

The contested cell switches [electricity]; circuit breakers; electrical adapters; light regulators [dimmers], electric; switches, electric are at least similar to an average degree to the opponent’s relays, which are electrical devices in which a small change in current or voltage controls the switching on or off of circuits or other devices. The goods are closely related as they are all electrical components. Consequently, they have similar natures and are likely to be manufactured and sold though the same undertakings. Finally, they can also have the same end consumers.

The contested remote control apparatus; regulating apparatus, electric; thermostats are apparatus and devices for controlling and regulating, for example temperature. These goods are at least similar to a low degree to the opponent’s measuring and checking (supervision) instruments and appliances as they may be sold through the same channels, be produced by the same companies, and they may target same relevant publics.

Contested goods in Class 11: (comparison with European Union trade mark registration No 1 207 703)

The contested heating apparatus are identically contained in both lists of goods.

The contested ventilation [air-conditioning] installations and apparatus are included in the broad category of the earlier apparatus for ventilating. Therefore, they are identical.

The contested heating apparatus, electric; air-conditioning apparatus; heating installations; central heating radiators; water heaters are included in, or overlap with, the broad category of the earlier apparatus for heating. Therefore, they are identical.

The contested light-emitting diodes [LED] lighting apparatus; lighting apparatus and installations are included in the broad category of the earlier apparatus for lighting. Therefore, they are identical.

The contested thermostatic valves [parts of heating installations] are similar to the opponent’s apparatus for heating. These goods are complementary; they share the same distribution channels, target the same relevant public and are produced by the same undertakings.

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 various degrees) are directed at the public at large and at customers with specific professional knowledge or expertise.

The impact on safety of goods covered by a trade mark (e.g. electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

Therefore, the degree of attention may vary from average to high, depending on the specialised or hazardous nature of the goods, the frequency of purchase and their price, or the expertise of the relevant public.

c) The signs

Earlier trade marks	Contested sign

The relevant territory is the Benelux and Croatia for the earlier international trade mark and the European Union for the earlier European trade mark.

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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Dutch- and Croatian-speaking part of the public also in relation to the earlier European trade mark. This is because ‘TEKA’ and ‘TEKAÍBIN’ are meaningless terms for this part of the public and the distinctiveness of these terms is thus normal.

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 signs consist of the term ‘TEKA’ written in standard black lower and upper case letters. The horizontal line forming the top of the letter ‘T’ is extended to cover the entire verbal element ‘TEKA’. There is a black dot placed at the top of the letter ‘T’, which is a simple, and thus non-distinctive, geometric shape.

The contested mark consists of the term ‘TEKAÍBIN’ written in standard blue upper case letters.

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 initial letters/sounds ‘TEKA’. The signs differ in the additional letters ‘ÍBIN’ in the contested mark. The marks also differ visually in their colour and stylisation, although these are quite standard, and the dot in the earlier mark, which is non-distinctive.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The dot in the earlier mark is non-distinctive and cannot indicate the commercial origin. 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 marks

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 European Union mark No 1 207 703 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’).

The opponent did not explicitly claim that its international trade mark registration No 913 241 designating the Benelux and Croatia is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of a non-distinctive element in the marks, as stated above in section c) of this decision.

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 services covered are from the same or economically linked undertakings.

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 with 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, the goods are identical or similar, to at least an average or low degree. The signs coincide in all the letters or sounds of the earlier mark, placed in the beginning of the contested sign where they first catch the attention. The signs are thus visually and aurally similar to an average degree, and none of them presents a concept that could help consumers to set the signs apart.

Consequently, it cannot be excluded that even a more attentive public would assume that the identical or similar, even lowly similar goods come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the French-, Dutch- and Croatian-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 1 207 703 and international trade mark registration No 913 241 designating the Benelux and Croatia. 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 European Union trade mark registration No 1 207 703, there is no need to assess the enhanced degree of distinctiveness of this 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 earlier European Union trade mark registration No 1 207 703 and international trade mark registration No 913 241 lead 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Sandra IBAÑEZ

Marianna KONDAS

Aldo BLASI

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.