OPPOSITION No B 3 059 633

Weland AB, Box 503, 333 28 Smålandsstenar, Sweden (opponent), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative)

a g a i n s t

Shenzhen City Aidi Gifts Company Limited, Rm. 410, Bldg. B, Jinguang Technology Park, No.17-1 South Pingxi Rd., Pingdi St., Longgang Dist., Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 16/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 633 is partially upheld, namely for the following contested goods:

Class 7: Dust exhausting installations for cleaning purposes.

2. European Union trade mark application No 17 887 808 is rejected for the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 887 808 ‘Welland’ (word mark). The opposition is based on European Union trade mark registration No 444 182 ‘WELAND’ (word mark) and European Union trade mark registration No 15 769 813  (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.

1. The goods and services

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

European Union trade mark registration No 444 182

Class 6: Metal building materials, including fencing, railings, fences, grilles, staircases and balconies of metal; metal grilles; sheets and plates of metal including those coated in zinc and rolled metal, but not including articles in copper and/or plated in copper.

Class 11: Air treatment devices.

Class 19: Building materials (non-metallic), including fencing, fences, railings, staircases and grilles, not of metal; invalid ramps.

Class 20: Furniture including metal furniture.

Class 40: Hot zinc coating and rustproofing of metal objects; surface coating of metal objects; laser cutting of metal objects.

European Union trade mark registration No 15 769 813

Class 6: Grilles of metal; Grills of metal for safety purposes; Grilles of metal for pavements; Gratings of metal for false ceilings; Grilles of metal for roads; Shutter grilles of metal; Louvre vents (Metal -) for buildings; Latticework of metal; Ramps of metal; Ramps being structures of metal; Pallet racks of metal; Platforms, prefabricated, of metal; Portable metal levees; Portable shelters of metal; Protective screens of metal; Guard rails of metal; Crash barriers of metal; Metal railings for fences; Fences of metal; Fence links of metal; Metal fence stays; Metal fence posts; Roof coverings of metal; Roofing materials of metal; Soffit boards (Metal -); Eaves of metal; Roof components of metal; Roofing panels of metal; Metal roofing; Parapets of metal; Bannisters of metal.

Class 20: Shelves for storage; Shelving units.

Class 40: Metal treating.

The contested goods are the following:

Class 7: Mixing machines; kneading machines; grating machines for vegetables; juice extractors, electric; beverage preparation machines, electromechanical; ironing machines; sewing machines; rotary steam presses, portable, for fabrics; bottle filling machines; bottle sealing machines; crushers for kitchen use, electric; beaters, electric; mills [machines]; rinsing machines; dust exhausting installations for cleaning purposes.

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

The term ‘including’, used in the opponent’s list of goods and services, 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).

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 7

The contested dust exhausting installations for cleaning purposes have some similarities with the opponent’s air treatment devices in Class 11. They have the same purpose in a broad sense, to provide better or clean air, and can have the same producers, distribution channels and relevant public. Therefore, they are similar to at least a low degree.

However, the contested mixing machines; kneading machines; grating machines for vegetables; juice extractors, electric; beverage preparation machines, electromechanical; ironing machines; sewing machines; rotary steam presses, portable, for fabrics; bottle filling machines; bottle sealing machines; crushers for kitchen use, electric; beaters, electric; mills [machines]; rinsing machines are various machines intended for, inter alia, food and beverage processing, laundry and packaging industry, and do not have any relevant points in common with any of the opponent’s goods and services in Classes 6 and 19, which are building materials, in Class 11, air treatment devices, in Class 20, furniture, and in Class 40, which are services in relation to treatment and coating of metal. These opponent’s goods and services do not have the same nature, purpose, producers/providers, distribution channels or relevant public as the contested goods. They are neither complementary nor in competition. Therefore, they are dissimilar.

As similarity between the goods and services has been found only on account of the opponent’s word mark, the comparison will continue only on the base of this trade mark, European Union trade mark registration No 444 182 ‘WELAND’.

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 similar to at least a low degree 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.

3. The signs

WELAND	Welland
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).

Both marks are word marks, ‘WELAND’ and ‘Welland’ respectively.

In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

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, the signs coincide in the distinctive verbal element ‘WELAND’, which constitutes the entire earlier mark. However, they differ in an additional letter ‘L’ in the middle of the contested sign, which however it is the part of the sign where the public does not focus their attention, as described above.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛WELAND’, present identically in both signs and distinctive. The pronunciation differs in the sound of the additional letter ‘L’ in the middle of the contested sign, where it however is not likely to change the pronunciation significantly for at least a part of the public, such as the Swedish- and French-speaking public.

Therefore, the signs are aurally at least highly similar.

Conceptually, neither of the signs has a meaning. 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.

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

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).

As seen above in the comparison of signs, they are visually similar to a high degree and aurally at least highly similar, for a part of the public even aurally identical. The conceptual aspect does not influence the assessment of the similarity of the signs. Due to the quasi-identity feature of the verbal elements in the marks, as these differ in only one letter, consumers will believe that the goods found to be similar to at least a low degree offered under the signs in dispute originate from the same or economically linked undertakings.

Account is also taken of the fact that 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 444 182.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to at least a low degree to those of the earlier trade mark. The high similarity of the marks outweighs the low similarity between these goods.

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.

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

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

Martin MITURA

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.