OPPOSITION No B 3 053 704

Rancilio Group S.p.A., Viale della Repubblica, 40 - Frazione Villastanza, 20015 Parabiago (Milano), Italy (opponent), represented by Calvani, Salvi & Veronelli S.r.L., Piazza Luigi di Savoia, 2, 20124 Milano, Italy (professional representative)

a g a i n s t

Shenzhen ATC Network Scienology PLC., 8-9F, C1, Nanshan Zhiyuan, 1001 Xueyuan Rd, Nanshan Dist., Shenzhen 518000, People’s Republic of China (applicant), represented by Hortis Legal, Veraartlaan 8, 2288 GM, Rijswijk ZH, Netherlands (professional representative).

On 27/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 704 is upheld for all the contested goods, namely:

Class 7: Electric coffee grinders; grating machines for vegetables; electric fruit peelers; pepper mills, other than hand-operated; electric food blenders [for household purposes]; fruit presses, electric, for household purposes.

Class 11: Coffee machine; electric waffle maker; electric toasters; air fryers; fruit roasters; electric appliances for making yogurt; bread-making machines; ice machines; electrical ice cream makers; barbecues; barbecue grills.

2. European Union trade mark application No 17 794 116 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 (after a limitation of the extent of the opposition submitted on 26/09/2018) of the goods of European Union trade mark application No 17 794 116 for the word mark ‘RONCILLO’, namely against some of the goods in Classes 7 and 11. The opposition is based on, inter alia, European Union trade mark registration No 1 087 535 for the figurative mark . 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 above.

a) The goods

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

Class 7: Grinders/quantity gauges for electric coffee machines; dishwashers; cup washing machines and glass washers; automatic dishwashers; electric mixing machines; agitators; apparatus for crushing ice; automatic beaters; equipment including automatic citrus-fruit squeezers; automatic mixers; apparatus for containing, mixing and supplying beverages at a pre-set temperature.

Class 11: Espresso coffee machines, parts and accessories therefor; apparatus for cooking; electric plate warmers; electric deep fryers; electric toasters; electric and infra-red grills and hobs; refrigerating apparatus; machines for making edible ice; air purifiers; refrigerators; freezers, freezers for making ice cream.

The contested goods are the following:

Class 7: Electric coffee grinders; grating machines for vegetables; electric fruit peelers; pepper mills, other than hand-operated; electric food blenders [for household purposes]; fruit presses, electric, for household purposes.

Class 11: Coffee machine; electric waffle maker; electric toasters; air fryers; fruit roasters; electric appliances for making yogurt; bread-making machines; ice machines; electrical ice cream makers; barbecues; barbecue grills.

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

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).

Contested goods in Class 7

The contested electric coffee grinders overlap with the opponent’s grinders for electric coffee machines. Therefore, they are identical.

The contested electric food blenders [for household purposes] are included in the broad category of the opponent’s electric mixing machines. Therefore, they are identical.

The contested fruit presses, electric, for household purposes are included in the broad category of the opponent’s equipment including automatic citrus-fruit squeezers. Therefore, they are identical.

The opponent’s equipment including automatic citrus-fruit squeezers is a broad term that encompasses electrical household appliances. Consequently, the term includes the contested grating machines for vegetables; electric fruit peelers; pepper mills, other than hand-operated. Therefore, they are considered identical.

Contested goods in Class 11

Electric toasters are identically contained in both lists of goods.

The contested coffee machine includes, as a broader category, the opponent’s espresso coffee machines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested electric waffle maker; air fryers; fruit roasters; electric appliances for making yogurt; bread-making machines; barbecues; barbecue grills are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested ice machines overlap with the opponent’s freezers. Therefore, they are identical.

The contested electrical ice cream makers are included in the broader category of the opponent’s machines for making edible ice. Therefore, they are identical.

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 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

	RONCILLO
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.

For certain parts of the relevant territory, such as in Spain, the sound of the letters ‘LL’ differs from the letter ‘L’. As the similarity between the signs is greater where the signs do not have such noticeable differences, the Opposition Division finds it appropriate to focus the comparison of the signs on other parts of the relevant public, in this case the English-speaking part of the public such as consumers in Ireland, Malta and the United Kingdom.

The earlier mark is a figurative mark and includes the verbal element ‘RANCILIO’ in standard white upper-case letters. On the left side is an abstract figurative element of a white curved line. Both elements are placed within black backgrounds. The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign is a word mark that consists of the letters ‘RONCILLO’.

None of the verbal elements of the signs has any meaning and are, therefore, considered distinctive.

The abstract figurative element of the earlier mark will essentially be perceived as decorative, while the black frames mainly functions as a contrast to bring out the other elements of the sign. Therefore, these elements have limited impact on the assessment. Furthermore, 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).

Visually, both signs include verbal elements comprising of eight letters, namely ‘RANCILIO’ and ‘RONCILLO’, of which they coincide in six of the letters, ‘R*NCIL*O’, present identically in both signs. They only differ in their second and seventh letters, respectively ‘A’/’O’ and ‘I’/’L’, as well as the figurative elements of the earlier mark.

The signs have commonalties in their first and last letters, and in a substantial part of the remaining verbal elements. As a result, their similarities permeate both signs and the differing two letters that lie between the other letters are less perceptible. Furthermore, the additional figurative elements of the earlier mark have limited impact on the assessment as pointed out above.

Taking the above into account, the signs are considered similar to an above-average degree.

Aurally, it must first be remarked that the figurative elements of the earlier mark have no impact on its pronunciation. The signs coincide in the sound of the letters ‘R*NCIL*O’, present identically in both signs. They differ in the sound of their second letters ‘A’/‘O’, which are both vowels possessing sounds that, in the pronunciation of the signs, do not create significant differences.

Furthermore, for the relevant public there is no aural difference between the letter ‘L’ and the letters ‘LL’. Although the signs differ in their seventh letter, namely ‘I’/‘L’, the only letter of the earlier mark that will create an additional sound is the letter ‘I’, which has no counterpart in the contested sign. This is because the extra ‘L’ of the contested sign, due to the preceding letter ‘L’, does not have an aural impact in this sign.

Consequently, the signs are considered aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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).

In the present case, the goods are identical. The relevant public consists of the public at large and business customers, whose degree of attention varies from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness.

The signs are visually and aurally similar, since the verbal elements of the earlier mark and the contested sign have identical sequences at the beginning, in the middle and at the end (‘R*NCIL*O’). They only differ in their second and seventh letters ‘A’/‘O’ and ‘I’/‘L’ respectively, as well as the figurative elements of the earlier mark, which have limited impact. The conceptual aspect of the assessment remains neutral.

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).

Therefore, in view of all the relevant factors in the present case, the Opposition Division finds that the differences between the marks do not outweigh their striking similarities, especially taking into account that all of the contested goods are identical to the opponent’s goods. In other words, the differences between the signs are not considered sufficient to enable the consumer, even those paying a higher degree of attention, to safely distinguish between the signs.

Considering all the above, 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 trade mark registration No 1 087 535. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right examined 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 right 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

Renata COTTRELL

Tu Nhi VAN

Gonzalo BILBAO TEJADA

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.