OPPOSITION No B 3 070 058

Somfy Activites SA, 50 Avenue du Nouveau Monde, 74300 Cluses, France (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

Entalpia Europe Spółka z ograniczoną odpowiedzialnością, Polskiej Organizacji Wojskowej 64A, 98-200 Sieradz, Poland (applicant), represented by Ewa Malewska & Partners, Klaudyny 32/299, 01-684 Warsaw, Poland (professional representative).

On 23/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 058 is partially upheld, namely for the following contested goods and services:

Class 7: Compressors for air conditioning apparatus, Compressors for air conditioning apparatus, Refrigerant compressors for cooling installations, Refrigerant compressors for heating installations; Compressors for recovering and recycling refrigerant gases; Refrigerant recovery pumps.

Class 9: Gas detecting apparatus, Gas sensors; Apparatus for analysing gases, Gasometers; Gas leak detectors; Refrigerant scales.

Class 11: Air conditioning installations, Air conditioning apparatus; Air conditioners (including central, automotive and portable air conditioners).

Class 37: Installation, maintenance and repair of air-conditioning apparatus; Providing information relating to the repair or maintenance of air conditioning apparatus.

2. European Union trade mark application No 17 934 717 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition initially against all the goods and services of European Union trade mark application No 17 934 717 . However, in its observations of 11/04/2019, the opponent explicitly limited the extent of the opposition to all the goods in Classes 7, 9 and 11, and all the services in Class 37. The opposition is based on European Union trade mark registration No 12 191 367 and French trade mark registration No 4 037 204, both for the word mark ‘SOMFY, and European Union trade mark registration No 12 191 383 and French trade mark registration No 4 037 206, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Within its observations, the applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Moreover, the date of filing of the contested trade mark is 25/07/2018, while the earlier marks were registered on 26/02/2014 (EUTM No 12 191 383), 27/02/2014 (EUTM No 12 191 367), 06/06/2014 (FR No 4 037 206) and 25/07/2014 (FR No 4 037 204) respectively. Consequently, the earlier marks had not been registered for at least five years at the filing date of the contested application.

Therefore, the request for proof of use is inadmissible.

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 No 12 191 367 ‘SOMFY’ which has the broader scope of protection.

1. The goods and services

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

Class 6: Metal fences; Gates of metal and doors of metal; Grilles of metal; Metal locks; Ironmongery, small items of metal hardware.

Class 7: Control mechanisms for machines, engines or motors; Electric devices for operating doors, windows, shutters, blinds, curtains, screens, vents, locks, doors, garage doors, gates, fences, grilles and retractable terminals; Electric or electronic motors for operating doors, windows, shutters, blinds, curtains, screens, vents, locks, doors, garage doors, gates, fences, grilles and retractable terminals; Geared motors for operating doors, windows, shutters, blinds, curtains, screens, vents, locks, doors, garage doors, gates, fences, grilles and retractable terminals.

Class 9: Electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data relating to automation and management of the household and household equipment; Interfaces for home automation applications; Electric or electronic remote control apparatus with home automation functions for equipment in the household and/or buildings, in particular via Internet communication and telecommunication networks including mobile telephones, enabling installation, configuration, control, management, surveillance, in particular from computers or mobile telephones, of home automation functions and applications for automation and/or motorisation of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance and alarm, fire detection systems, apparatus for measuring the quality of ambient air, controllers of electric (electronic apparatus for controlling energy supply for electric apparatus) and/or gas consumption, electricity, heat or other types of energy, automatic watering monitors, water consumption apparatus; Computer software enabling driving, automation and control of said electric, electronic and/or computer applications; Servers for home automation applications facilitating the reception and transmission of commands by remote control and the operation of data storage; Modems for home automation servers, connectors to a computer network or home automation network; Telecommunication terminals for automation and management of the household and household equipment; Computerised and communication transmitting and receiving apparatus for home automation; Electronic docking stations and electronic digital tablets for automation and management of the household and household equipment; Digital terminals for tertiary and residential buildings; Digital terminals for tertiary and residential buildings providing transmission, reception and decoding functions; Handheld electronic devices for the wireless receipt and/or transmission of data for remote automation and management of the household and household equipment; Brochures, guidebooks and instruction manuals on electronic media relating to household automation; Magnetic or encoded access control, identity and identification cards; Occupancy sensors, wind sensors, internal light sensors, sunlight sensors, temperature sensors, rain sensors, snow sensors for electrical lighting, alarm, blind, shutter or heating control apparatus; Smoke detectors; Detectors; Video telephones; Thermostats; Video surveillance cameras; Electrical sockets; plugs and jacks; Sirens; Electronic identification apparatus for use in the assistance of biometric identification techniques; Apparatus for biometric, visual and vocal recognition of people; batteries, including electric batteries and rechargeable batteries; Safety or signalling luminous beacons; Signals (luminous); Electric and electronic apparatus and installations for security and access supervision; Electronic keys; Electric and electronic control, signalling and measuring apparatus and instruments for electric and electronic data processing systems and data carriers, cash registers, automatic machines operating via banknotes, coins, magnetic or microprocessor cards or bank cards, for controlled access to restricted areas and parking areas; Encoded and pre-paid magnetic cards, magnetic access-control, identity and identification cards; Electric and electronic locks; Remotely controlled electric locks; Remotely controlled electric sockets.

Class 16: Publications, magazines, newsletters; Construction site logs, instruction manuals relating to electric or electronic apparatus and instruments for operating openings and remote control devices with home automation functions for household equipment.

Class 35: Arranging subscriptions to home automation databases; Arranging subscriptions to database servers relating to automation and management of the household and household equipment; Arranging subscriptions to assistance in the implementation of home automation goods; Registration and data processing, namely data entry, information, systemisation relating to automation and management of the household and household equipment; Computerised file management, in particular of image and sound files relating to automation and management of the household and household equipment; Compilation of data in computer databases relating to automation and management of the household and household equipment; Customer loyalty schemes, namely organisation of commercial operations for encouraging customer loyalty in the field of motorisation of openings, automation and management of the household and household equipment; Providing of business information and consultancy in the field of motorisation of openings, automation and management of the household and household equipment; Organisation, operation and supervision of incentive and loyalty schemes in the field of motorisation of openings, automation and management of the household and household equipment.

Class 37: Setup, installation assistance, diagnosis and repair of electric or electronic remote control apparatus and instruments with home automation functions for household equipment; Providing of information relating to home automation applications for automation of the household; Installation, programming and upkeep of home automation installations and programmable automated machines.

Class 38: Providing access to computer sites and portals for remote management enabling the installation, configuration, control, management, surveillance from a computer, touchscreen tablet or mobile telephone, with home automation, automation and/or motorisation functions for blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance and alarm, fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other types of energy monitors; Transmission of information, messages and images via computer, satellites, telecommunications networks including mobile telephones, telematic networks and Internet communications networks via radio communication gateways including 3G keys or gateways between communication protocols and/or other communication interfaces for remote control apparatus and installations for automation and/or motorisation for blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance and alarm and/or fire detection systems, controllers of electric and/or gas consumption, electricity, heat or other types of energy monitors; Facilitation of Internet chat for users; Telecommunications in the field of automation and management of the household and household equipment; Providing access wireless networks (including the Internet) or private or restrictedaccess networks (including intranets) in the field of automation and management of the household and household equipment; Providing of communication between computer terminals for automation and management of the household and household equipment; Rental of telecommunications apparatus and digiboxes in the field of motorisation of openings, automation and management of the household and household equipment; Rental of modems, digital communication terminals in the field of motorisation of openings, automation and management of the household and household equipment; Assistance in the event of a fault in telecommunications goods or services, namely rental of telecommunications apparatus for automation and management of the household and household equipment.

Class 41: Providing of training relating to assembly, installation, use and maintenance of electric or electronic remote control apparatus and instruments with home automation functions for equipment in the household and/or buildings; Providing of training relating to home automation applications for automation of the household and/or buildings; Organisation and conducting of conferences and seminars in the field of home automation.

Class 42: Rental of apparatus for recording, reproduction and processing of text, data, sound, images and moving images, computer database servers (software), personal digital assistants in the field of automation and management of the household and household equipment; Hosting of websites, secure messaging in the field of motorisation of openings, automation and management of the household and household equipment; Technical consultancy and expertise in the field of home automation; Consultancy (technical assistance) relating to computer systems in the field of motorisation of openings, automation and management of the household and household equipment; Remote management of computerised data in the field of motorisation of openings, automation and management of the household and household equipment; Computer systems facilitating remote access to telecommunications services in the field of motorisation of openings, automation and management of the household and household equipment; Conversion of data and computer programs (other than physical conversion) in the field of home automation; Conversion of documents from physical to electronic media in the field of home automation; Providing of technical information relating to home automation networks in the household.

Class 45: Surveillance, remote surveillance and video surveillance for the protection of people, goods and buildings; Security consultancy.

The contested goods and services are the following:

Class 7: Compressors for air conditioning apparatus, Compressors for air conditioning apparatus, Refrigerant compressors for cooling installations, Refrigerant compressors for heating installations; Compressors for recovering and recycling refrigerant gases; Refrigerant recovery pumps.

Class 9: Gas detecting apparatus, Gas sensors; Apparatus for analysing gases, Gasometers; Gas leak detectors; Refrigerant scales.

Class 11: Air conditioning installations, Parts/components for air conditioning installations; Air conditioning apparatus; Parts for air conditioners: Valves for air conditioners, Filters for air conditioning, Power filters for airconditioning, Air filters for air conditioning units, Filters for use with apparatus for air conditioning, Refrigerant condensers; Air conditioners (including central, automotive and portable air conditioners); Heat pumps; Heat regenerators and recuperators; Heat exchangers, other than parts of machines.

Class 37: Installation, maintenance and repair of air-conditioning apparatus; Providing information relating to the repair or maintenance of air conditioning apparatus.

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 goods in this Class are compressors used in air conditioning installations and refrigerant recovery pumps. As correctly pointed out by the opponent, compressors are essential parts of air conditioners and refrigerant recovery pumps are used to remove the refrigerants from the cooling equipment.

The opponent argues that control mechanisms for machines, engines or motors in Class 7 of the earlier mark are similar to the above-mentioned contested goods because they control the contested goods and are essential for their right functioning. Moreover, according to the opponent, they have the same manufacturers and target the same public. The applicant disagrees with the opponent’s submissions and argues that the goods at issue are not complementary as the contested goods can be operated without any control mechanisms. Moreover, the applicant argues the goods are directed at different publics.

The Opposition Division notes that the opponent’s goods cover, on one hand, control mechanisms for machines, engines or motors in Class 7, and electric or electronic remote control apparatus in Class 9. While the applicant’s submissions seem to relate to the opponent’s goods in Class 9 insofar as they are directly related to home-automation, the nature of the opponent’s goods in Class 7 is different. In fact, as parts of machines, for example control valves, they control the functioning of a compressor or a pump, and not necessarily of the air conditioning installation or even a ‘smart building’ as a whole. Mechanisms controlling the contested compressors and refrigerant recovery pumps are inseparable parts of the contested goods and are particularly important for their functioning. Therefore, contrary to the applicant’s assertions, the contested goods are considered similar to the opponent’s control mechanisms for machines, engines or motors, as the relevant public may expect these goods to be produced by, or under the control of, the same manufacturer. Moreover, these goods may target the same specialised public and are complementary to each other.

Contested goods in Class 9

The opponent’s detectors in Class 9 are instruments designed to detect the presence of a particular object or substance. Contrary to the applicant’s submissions, the contested gas detecting apparatus and gas leak detectors are clearly included in the broad category of these opponent’s goods. The same applies to the contested gas sensors which are devices that detect the presence of gases. Moreover, detectors function by measuring a given indicator and cannot be clearly separated from measuring devices. Accordingly, there is an overlap between the opponent’s detectors and the contested gasometers and apparatus for analysing gases insofar as they detect and measure gas presence, volume and/or concentrations. Therefore, these goods are identical.

The contested refrigerant scales are measuring devices used to calculate how much refrigerant should be placed or removed from the refrigeration unit. To the extent that they can also detect any kind of leak, their purpose is similar to the purpose of the opponent’s detectors. Contrary to the applicant’s arguments, these goods target the same specialised public, are distributed through the same channels and are manufactured by the same companies. Therefore, they are similar.

Contested goods in Class 11

The contested goods in Class 11 are air conditioning installations and their parts.

The opponent argues that there is a similarity between these goods and the opponent’s goods in Class 9, such as electric or electronic remote control apparatus with home automation functions for equipment in the household and/or buildings, in particular via Internet communication and telecommunication networks including mobile telephones, enabling installation, configuration, control, management, surveillance, in particular from computers or mobile telephones, of home automation functions and applications for automation and/or motorisation of (…) ventilation, air conditioning, heating (…), apparatus for measuring the quality of ambient air (…). According to the opponent, its goods control the contested goods in Class 11 ‘to the extent that the opponent’s goods are devices that perform control/command, and are an essential part of such apparatus’.

The Opposition Division considers that there is only a low degree of similarity between the above-mentioned opponent’s goods and the contested air conditioning installations; air conditioning apparatus and air conditioners (including central, automotive and portable air conditioners). Although the nature and purpose of these goods is different, they are complementary insofar as the use of the contested air conditioning installations or devices is indispensable for the use of the opponent’s remote control apparatus. They both target general public and professionals, and they are distributed through the same channels.

However, there is no similarity between these opponent’s goods in Class 9 and the remaining contested goods in Class 11, namely parts/components for air conditioning installations; parts for air conditioners: valves for air conditioners, filters for air conditioning, power filters for airconditioning, air filters for air conditioning units, filters for use with apparatus for air conditioning, refrigerant condensers; heat pumps; heat regenerators and recuperators; heat exchangers, other than parts of machines. These contested goods are specific components of the air conditioning and heating installations and there is no complementary relationship between these goods and the opponent’s remote control apparatus. These goods have different nature, purpose and method of use. Even though the public of these goods may coincide, at least as far as professionals are concerned, this is not enough to consider these goods similar. They are usually manufactured by different undertakings and their production involves totally different know-how. Finally, contrary to the opponent’s arguments, although stores specialised in air-conditioning may offer both sets of goods, they will be found in different sections and even the staff of such shops would need to have a different type of knowledge to be able to advice customers wishing to purchase the applicant’s and opponent’s goods. Therefore, these goods are dissimilar.

The same reasoning applies to the remaining opponent’s goods in Class 9 which are related to home automation, such as electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data relating to automation and management of the household and household equipment; Interfaces for home automation applications. Moreover, there is also no similarity with the opponent’s goods in Classes 7 and 9 which also may form part of air conditioning or heating installations, for example control mechanisms for machines, engines or motors or thermostats. The fact that some goods may be used in the production of the same final product is not in itself sufficient to find such goods similar. In the present case, there are no relevant criteria that would allow concluding that there is even a low degree of similarity. Furthermore, some of the opponent’s goods, such as those in Class 6, the remaining goods in Class 7 (which are only related to doors, windows, shutters, blinds, curtains, screens, vents, locks, doors, garage doors, gates, fences, grilles and retractable terminals), the remaining goods in Class 9 (for example, encoded and pre-paid magnetic cards, magnetic access-control, identity and identification cards), all the goods in Class 16, and all the opponent’s services in Classes 35, 37, 38, 41, 42 and 45, have no relevant link at all with the above-mentioned contested goods.

Therefore, the contested parts/components for air conditioning installations; parts for air conditioners: valves for air conditioners, filters for air conditioning, power filters for airconditioning, air filters for air conditioning units, filters for use with apparatus for air conditioning, refrigerant condensers; heat pumps; heat regenerators and recuperators; heat exchangers, other than parts of machines are dissimilar to all the opponent’s goods and services.

Contested services in Class 37

The contested services in this Class are installation, maintenance and repair of air-conditioning apparatus and providing information relating to the repair or maintenance of air conditioning apparatus. According to the applicant, they are dissimilar to the opponent’s services in Class 37, since the contested goods in Classes 7, 9 and 11 are also dissimilar to the opponent’s goods and services, and the parties operate in different market sectors.

However, the Opposition Division considers that there is a relation between the contested services and the opponent’s installation, programming and upkeep of home automation installations and programmable automated machines and providing of information relating to home automation applications for automation of the household.

As correctly pointed out by the opponent, air-conditioning apparatus function nowadays through remote control instruments. Moreover, they are often programmable and automated. Therefore, the contested services and the opponent’s services in Class 37 are at least similar. Contrary to the applicant’s submissions, these services can be provided to the same public and through the same distribution channels. Moreover, as the opponent claims, they are likely to be provided at the same time, by the same company.

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 and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, especially in the field of air-conditioning.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. Distinctiveness of the earlier mark and the comparison of signs

SOMFY
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).

In addition, 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 earlier mark, which is composed of a single element that will not be dissected by the public into different components, has no meaning for the relevant public in relation to the relevant goods and services. Therefore, in the absence of any claim regarding the enhanced distinctive character of the sign, it is considered of a normal inherent distinctiveness in relation to the relevant goods and services.

The contested mark consists of the verbal element ‘comfy’ written in a fairly standard script, except for the letter ‘m’ which has a highly stylised form and may be perceived, as claimed by the applicant, as representing the contours of overlapping houses. The element ‘comfy’ is meaningless, and therefore distinctive, for part of the relevant public. However, in English, ‘comfy’ is an informal word for ‘comfortable’ (information extracted on 20/12/2019 from Oxford English Dictionary at https://www.lexico.com/definition/comfy).

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.

Taking into account that in the present case a clear meaning of the contested sign can reduce or even exclude the likelihood of confusion for part of the relevant public, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Polish- and Slovak-speaking part of the public for which both signs are meaningless. In fact, the English word ‘comfy’ is not a basic English word or a term commonly used in commerce and cannot be considered as generally known throughout the whole European Union.

As regards the figurative representation of the letter ‘m’ in the contested sign, although it is distinctive, due to its stylisation, it may be perceived as slightly allusive taking into account that the goods and services in question are related to household equipment. Moreover, it has to be noted that 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).

The applicant claims that “the original graphic form of the letter ‘m’ dominates the contested sign”. However, the Opposition Division is of the opinion that there is no element in the contested sign that could be considered as clearly more dominant (visually eye-catching) than other elements, because of a similar size of the stylised letter ‘m’ and the remaining letters composing the mark.

Visually, both signs contain the string of letters ‘omfy’ which occupies the same position within the marks. They differ in their first letters, ‘S’ in the earlier mark and ‘c’ in the contested sign, as well as in the stylisation of the letters, especially the letter ‘m’, in the contested sign, which is however clearly legible despite its unusual representation. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /OMFY/. The pronunciation differs in the sound of the first letters of the signs /S/ vs /C/. However, account is taken of the fact that in the relevant languages, namely Czech, Polish and Slovak, these initial letters produce similar sounds /s/ and /ts/. Moreover, both signs are composed of two syllables of an identical length and, consequently, they have the same rhythm and intonation. Therefore, the signs are aurally highly similar.

Conceptually, while the earlier mark does not convey any meaning, a part of the public may perceive the stylisation of the letter ‘m’ in the contested sign as representing the contours of overlapping houses. Therefore, for this part of the public the signs are not conceptually similar.

For the remaining part of the public, 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.

4. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to those covered by the earlier mark. The relevant goods and services are directed at the general public and professionals whose degree of attention will vary from average to high. The earlier mark enjoys an average degree of inherent distinctiveness which affords it a normal scope of protection.

The similarity between the signs ranges from an average degree on a visual level, to a high degree from an aural perspective. Since the signs are meaningless for the Czech-, Slovak- and Polish-speaking public on which the analysis has focussed, the conceptual aspect does not influence the assessment of the similarity of the signs for at least the part of the public that does not perceive any concept in the figurative element of the contested mark. For the part of the public that will interpret it as a stylised representation of houses, the signs are not conceptually similar. However, the concept conveyed by the figurative elements alludes to the goods and services in question, and has a limited weight in the overall assessment.

Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Therefore, the fact that the signs only differ in the first letter, which is aurally highly similar, and in the figurative element of the contested mark, is particularly relevant in the assessment of a likelihood of confusion.

Under these circumstances and contrary to the applicant’s arguments, it is highly conceivable that the relevant consumer may confuse the marks and assume that the goods and services covered, even those similar to a low degree, are from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Czech-, Polish- and Slovak-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, including those similar to a low degree, to those of the earlier trade mark.

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)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

• European Union trade mark registration No 12 191 383 in Classes 6, 7 and 9;

• French trade mark registration No 4 037 206 in Classes 6, 7 and 9;

• French trade mark registration No 4 037 204 ‘SOMFY’, in Classes 6, 7, 9, 16, 35, 37, 38, 41, 42 and 45.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those remaining 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Nicole CLARKE

Zuzanna STOJKOWICZ

Christophe DU JARDIN

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.