OPPOSITION No B 3 052 277

The Cookware Company Global Sourcing Limited, Flat/RM 3201 32/F, Tower 1 Enterprise Square Five, 38 Wang Chiu Road, Kowloon Bay, Hong Kong (opponent), represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830, Sint-Martens-Latem, Belgium (professional representative)

a g a i n s t

Shen Zhen Shi Yi Bai Wang Luo Ke Ji You Xian Gong Si, 268 shi, 2 lou, B dong, qinghu kejiyuan, qingxiang lu, longhua jiedao, longhua qu, Shenzhen, GuangDong 518109, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 277 is partially upheld, namely for the following contested goods:

Class 21: Utensils for household purposes; containers for household or kitchen use; kitchen containers; cooking pot sets; kitchen utensils; drinking vessels; coffee grinders, hand-operated; carpet sweepers; heat-insulated containers; indoor terrariums [plant cultivation]; vegetable dishes; tableware, other than knives, forks and spoons; liqueur sets; trays [household]; tea services [tableware]; coffee services [tableware]; mess-tins.

2. European Union trade mark application No 17 870 904 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 870 904 for the word mark ‘Greensen’, namely all goods in Class 21. The opposition is based on European Union trade mark registration No 5 979 281 and on Benelux trade mark registration No 821 490 both for the word mark ‘GREENPAN’, as well as on European Union trade mark registration No 8 668 791 and on French trade mark registration No 4 165 896 both 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 No 5 979 281.

a) The goods

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

Class 8: Forks, knives and spoons; carving knives; flesh knives; vegetable choppers; vegetable slicers; oyster openers; non-electric can openers; non-electric cheese- and pizza knives.

Class 11: Electric fondue sets and water kettles (boilers).

Class 21: Cooking pots; pots; non-electric cooking utensils; fish pans; woks; non-electric fondue sets and water kettles; recipients for the kitchen and the household, not comprised in other classes; recipients for preparing, preserving, keeping warm and serving food products and drinks, not comprised in other classes.

The contested goods are the following:

Class 21: Utensils for household purposes; Containers for household or kitchen use; Kitchen containers; Cooking pot sets; Kitchen utensils; Drinking vessels; Wine tasters [siphons]; Coffee grinders, hand-operated; Cosmetic utensils; Toilet cases; Carpet sweepers; Heat-insulated containers; Mangers for animals [troughs for livestock]; Indoor terrariums [plant cultivation]; Indoor aquariums; Vegetable dishes; Powder compacts; Make-up removing appliances; Tableware, other than knives, forks and spoons; Liqueur sets; Trays [household]; Tea services [tableware]; Coffee services [tableware]; Cosmetic brushes; Litter boxes [trays] for pets; Litter trays for pets; Drinking troughs; Make-up sponges; Mess-tins.

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 contested utensils for household purposes; containers for household or kitchen use; kitchen containers; cooking pot sets; kitchen utensils include, as broader categories, the opponent’s cooking pots. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested drinking vessels; heat-insulated containers; vegetable dishes; tableware, other than knives, forks and spoons; liqueur sets; tea services [tableware]; coffee services [tableware]; mess-tins are included or, overlap with, the opponent’s recipients for preparing, preserving, keeping warm and serving food products and drinks, not comprised in other classes and are also identical.

The contested trays [household] are flat, shallow containers typically used for carrying food and drinks. Therefore, they are highly similar to the opponent’s recipients for preparing, preserving, keeping warm and serving food products and drinks, not comprised in other classes. These goods share the same purpose, are found in the same distribution channels and may be manufactured by the same companies. In addition, they are interchangeable to the extent that recipients for serving food products include dishes which may be used for the same purpose as trays.

The contested indoor terrariums [plan cultivation] are glass containers in which plants are grown. These goods are highly similar to the opponent’s pots; recipients for the household, not comprised in other classes which include plant pots and flower vases. These goods have the same purpose and nature, target the same public; are sold in the same distribution channels, and produced by the same manufacturers.

The contested coffee-grinders, hand operated are non-electric utensils for kitchen purposes which are similar to the opponent’s non-electric cooking utensils which include non-electric coffee pots. These goods are sold in the same distribution channels, target the same public and may be manufactured by the same companies. There are close links between them as regards their purposes, which is, broadly speaking, to prepare coffee.

The contested carpet sweepers refer to machines with a brush attached to the bottom for cleaning carpets. Given their inclusion in Class 21, they must be understood as being those not electrically operated. The opponent’s recipients for household purposes include buckets/pails/basins which are used for household cleaning purposes. These goods are available in the same section of supermarkets and target the same public. They are usually manufactured by the same producers which specialise in all kinds of household cleaning articles. Therefore, they are similar to a low degree.

The contested cosmetic utensils; toilet cases; powder compacts; make-up removing appliances; cosmetic brushes; make-up sponges are not similar to the opponent’s cutlery, kitchen knives, can openers, slicers, choppers in Class 8, electric kitchen appliances in Class 11 or recipients for kitchen and household purposes/kitchen utensils in Class 21. Although it is not excluded that the opponent’s goods may include recipients to store cosmetic utensils such as those for storing cosmetic brushes, the goods at issue are usually not displayed in the same sections of stores, have different manufacturers and natures and their purposes are not the same, hence they are not in competition. It may be considered that they share a link of complementarity (cosmetic brushes/recipients for cosmetic brushes) also considering the coincidence in the public. However, as emphasised in the guidelines of the Office (Trade mark guidelines, part C Opposition, Section 2 Double identity and likelihood of confusion, Chapter 2, Comparison of Goods and Services), complementarity is not usually conclusive of its own for finding similarity between goods and services. Even where a degree of complementarity exists, goods and/or services may be dissimilar. Therefore, the contested cosmetic goods are dissimilar to all of the opponent’s goods.

The opponent argues that the contested wine tasters [siphons] are identical to the opponent’s recipients for preparing and serving drinks. According to the Opposition Division’s research, and in particular, based on the translations of that expression in the Office’s TMClass tool, these goods are plastic hoses used to extract wines from a container in order to taste it. They are primarily intended for professionals of the wine-making sector, contrary to the opponent’s goods. The goods at issue are not available from the same distribution channels and do not have the same producers. Their purposes and their natures differ and they are neither complementary nor in competition. Therefore, these goods are not similar.

The contested indoor aquariums; litter trays for pets; litter boxes [trays] for pets are articles for animals rather than recipients for household use notwithstanding the fact that they are technically used to hold something (water/fish, litter). These goods and the opponent’s recipients for the household or pots are not sold in the same distribution channels and do not have the same manufacturers and purposes. They are neither complementary nor in competition. The contested goods mentioned are even further apart from the opponent’s remaining goods which are cutting tools and kitchen related goods. The opponent has not put forward any convincing argument in support of similarity, and limits itself to asserting that these goods are ‘highly similar’. Therefore, the abovementioned contested goods are dissimilar to all of the opponent’s goods.

The contested drinking troughs, mangers for animals [troughs for livestock] are intended for cattle farmers as opposed to the opponent’s goods in all 3 classes which target the general public. A trough is a long narrow container from which farm animals drink or eat/a long, narrow container without a lid that usually holds water or food for farm animals according to the online Collins and Cambridge dictionaries at https://www.collinsdictionary.com / https://dictionary.cambridge.org. The goods under comparison do not have the same producers or distribution channels, or the same purposes and natures. They are not in competition or complementary either. Therefore, 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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

GREENPAN	Greensen
Earlier trade mark	Contested sign

The relevant territory is the European Union

Given that word marks protect the word itself and not a specific depiction of it, whether they are written in upper or lower case letters, or in a combination thereof, is irrelevant for the sake of this comparison.

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.

Notwithstanding the fact that the average consumers normally do not proceed to analyse trade marks in their various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, they 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 English-speaking public will immediately perceive the earlier mark as meaning a green pan namely a metal container used for cooking food in, which is of a green colour or which is made from organic or environmentally-friendly materials (as the word ‘GREEN’ is commonly used in commerce within this meaning). This specific meaning of the earlier mark weighs against a likelihood of confusion as, according to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (12/01/2006, C-361/04, Picaro, EU:C:2006:25, § 20). Additionally, when understood as explained above, the meaning of the coinciding element of the signs, ‘GREEN’, is non-distinctive or at the very least weak in relation to the goods at issue, as it indicates their colour or the properties of the materials from which they are made. As a non-distinctive or weak element of a sign is not perceived by the public as an indication of the commercial origin of the goods, a coincidence in a weak element will not normally lead to a likelihood of confusion.

For the reasons above, the English-speaking part of the relevant public, and more generally the public who is likely to understand ‘green’ within the above mentioned meanings, or to associate the signs with different meanings or one sign with a meaning not conveyed by the other sign, is less prone to confusing the signs at issue than other parts of the public which would not perceive them in this manner.

In this respect, whether the English word ‘GREEN’ is understood by the public in the European Union other than the English-speaking public or with a good command of English has been addressed by the Boards of Appeal in some recent decisions. In their latest decisions concerning this issue (12/07/2018, R 288/2018-5, GREENIC (fig.) / GREENICE, § 25 and 31 to 34; 18/6/2018, R 97/2018-5, Greenic / DEVICE OF A RECTANGULAR LABEL WITH THE WORD 'GREENICE' AND A PICTURE OF A GREEN BUTTERFLY AND GRASS (fig.), § 26 and 32 to 35), the Boards of Appeal have reached the conclusion that part of the Spanish-speakers would not perceive the meaning of ‘GREEN’ in the terms ‘GREENICE’ and ‘GREENIC’ of the signs, in relation to drinks in Class 32. In the decision of 03/05/2017, R 2246/2016-2, GREEN MUSHROOM FARM INTERNATIONAL BUSINESS (fig.) / GREEN FARMS (fig.), the Boards of Appeal have also indicated that the word ‘GREEN’ is meaningless for the relevant non-English speaking public such as the Spanish, Italian or Portuguese public (in relation to mushrooms).

These conclusions can be extended by analogy to the public in other territories of the European Union in relation to the goods at issue.

In view of the above, the Opposition Division will focus the comparison of the signs on the non-English-speaking part of the public which will not attribute any meanings to the signs and which will perceive them as a whole. This includes a significant part of the public in, inter alia, Bulgaria, Spain, Estonia, France, Italy, Latvia, etc. It is true that ‘PAN’ means bread in Spanish, and refers to a part of a wall or a part of a shirt in French, or even to the name of a Greek God in many languages, but those meanings are not perceptible in the earlier mark as configured because this sequence of letters is commonly used in words of those languages and those meanings are not related to the goods at issue. Indeed the terms ‘Greenpan’ and ‘Greensen’, are more likely to be remotely associated by that part of the public, as a whole, with a name of Anglo-Saxon origin by reference to, for instance, the existing name ‘GREENWICH’ (of a borough in London, which is the site of the Greenwich meridian line, or of Greenwich village in Manhattan).

Conceptually, for the public under analysis, neither of the signs has a meaning. The fact that they are vaguely reminiscent of English names is not specific enough an association for them to convey a concept. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in their beginnings namely the five letters ‘Green’ which form their first syllables, as well as in their final letters/sounds ‘N’. They differ in the intermediate letters/sounds ‘PA’ and ‘SE’. They are the same length, namely eight letters forming two syllables. Their rhythm and intonation is the same aurally.

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

In addition, the parallelism in the structure/combination of the signs enhances the similarity which derives from the identical beginning ‘GREEN’.

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

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 claims that all of its earlier rights have acquired enhanced distinctiveness as a consequence of the use it has made of it. However, it has not submitted any evidence in this respect.

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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

For the part of the public considered, the signs are visually and aurally similar to an above average degree and do not convey concepts to which the public may resort as a means of differentiation.

The relevant public consists of the general public which displays a normal degree of attention in relation to the goods at issue.

The goods are partly identical and similar (to various degrees) and partly dissimilar.

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).

Bearing in mind the normal distinctive character of the earlier mark, which affords it a normal scope of protection, there is a likelihood of confusion for the public under analysis. The fact that the coincidences are not limited strictly to the beginning ‘GREEN’ but also encompass the marks as a whole in terms of their lengths, their structures and their final letters leads to the above conclusion. As regards the goods which are similar to a low degree, there is a likelihood of confusion on the basis of the abovementioned principle of interdependence given that the signs are visually and aurally similar to an above average degree.

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. As there is a likelihood of confusion on the part of public under analysis, including a significant part of the public in Bulgaria, Spain, Estonia, France, Italy, Latvia, Lithuania, etc., the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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 the goods found dissimilar cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

- European Union trade mark registration No 8 668 791 on the basis of the same goods as those invoked under the EUTM compared (with the difference that ‘non electric fondue sets’ are, as regards in this mark, classified in Class 21 instead of Class 11);

- Benelux trade mark registration No 821 490 for the word mark ‘GREENPAN’, for pans; pots; non electric cooking utensils; fish pans; woks, non-electric fondue sets and water kettles; boilers for steam machines; recipients for the kitchen and the household, not comprised in other classes, recipients for preparing, preserving, keeping warm and serving food products and drinks, not comprised in other classes, in Class 21;

- French trade mark registration No 4 165 896 for pottery; non-electric cooking utensils; non-electric pots, fondue sets, grills and kettles; fish pans; woks; containers for cooking and cleaning, not included in other classes; containers for preparing, storing, keeping warm and serving food and drink, not included in other classes.

The first two marks cover the same scope of goods as the one compared; the outcome cannot be different with respect to the goods for which the opposition has already been rejected because they are dissimilar.

The earlier French mark covers additional goods namely pottery (which refers to pots, dishes and other articles made of fired clay) and containers for cleaning. These goods differ from the remaining contested goods (cosmetic utensils, troughs, aquaria, litter trays, siphons to taste wine) in the relevant criteria of the comparison.

Therefore, no likelihood of confusion exists with respect to the remaining contested goods on the basis of the opponent’s other trade marks.

The opponent briefly mentions that it is the holder of a series of marks, including the marks ‘GreenChef’ and ‘GreenKitchen’ in addition to the marks invoked in the present proceedings. The proprietor of a series or family of trade marks must furnish proof of use of the marks belonging to the series (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65). In this case, the opponent has not submitted any evidence of use. In any case, the existence of a family of trade marks would not counteract the fact that the remaining contested goods are dissimilar, and that, therefore, one of the conditions under Article 8(1)(b) EUTMR is not fulfilled.

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

Boyana NAYDENOVA

Catherine MEDINA

Begoña URIARTE VALIENTE

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.