OPPOSITION No B 3 075 040

Sanko Holding Anonim Sirketi, Sani Konukoglu Bulvari Üzeri, Sehitkamil - Gaziantep, Turkey (opponent), represented by Inlex IP Expertise, Plaza San Cristobal 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Anko Food Machine Co. LTD. No. 351 Sec. 1 Zhongzheng RD. Sanxia Dist. 237 New Taipei City, Taiwan (applicant), represented by Horak. Rechtsanwälte Partnerschaft mbB, Georgstr. 48, 30159 Hannover, Germany (professional representative).

On 23/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 040 is partially upheld, namely for the following contested goods and services:

Class 7: Food and beverage processing and preparation machines and apparatus; food processors; machines for food preparation [electric]; machines for mixing foodstuffs; machines for processing foodstuffs; machines for slicing food [electric, kitchen]; processing machines for use in the food industry.

Class 35: Wholesale and retail store services for food processing machinery.

2. European Union trade mark application No 17 949 719 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 949 719 for the figurative mark , namely against all the goods and services in Classes 7 and 35. The opposition is based on international trade mark registration No 895 889 designating Germany and France 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.

a) The goods and services

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

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; regulating accessories for water or gas apparatus and pipes, taps and valves for water and gas installations, electric and gas apparatus used for cooking and boiling; bath tubs, hydro massage baths, bidets, shower and bath cubicles, water-closets, wash basins, sinks; flushing apparatus, flushing tanks, toilet bowls, toilet seats, siphons, photocell faucets, lighters for household purposes; lighters (parts of the cooking and heating installations), water purifying apparatus, water softening apparatus and installations; electric blankets, not for medical purposes, electric or non electric foot warmers, drying apparatus and instruments; air dryers, hand driers, hair dryers, laundry dryers; incandescent burners, acetylene burners; furnaces for iron melting; fuel economizers; filters (parts of household or industrial installations); heating apparatus for defrosting windows of vehicles, installations for processing nuclear fuel and nuclear moderating material; dust-elimination and dust-collection installations for industrial purposes, pasteurizers and sterilizers.

The contested goods and services are the following:

Class 7: Food and beverage processing and preparation machines and apparatus; food processors; machines for food preparation [electric]; machines for mixing foodstuffs; machines for processing foodstuffs; machines for slicing food [electric, kitchen]; processing machines for use in the food industry.

Class 35: Import-export agencies; wholesale and retail store services for food and food processing machinery.

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 food and beverage processing and preparation machines and apparatus; food processors; machines for food preparation [electric]; machines for mixing foodstuffs; machines for processing foodstuffs; machines for slicing food [electric, kitchen]; processing machines for use in the food industry are usually manufactured by the same undertakings and distributed through the same commercial channels to the same relevant public as the opponent’s apparatus for cooking in Class 11, which cover a variety of apparatus targeting the general public (e.g. electric rice cookers, bread makers, electric deep fryers) or professionals (e.g. bakers’ ovens). Therefore, they are similar.

Since the comparison of goods and services is based on the goods and services as registered/applied for and not on the actual use of the marks in the course of trade, the applicant’s arguments in relation to the different markets targeted by the conflicting marks are irrelevant for the present assessment. On the basis of the specification of the goods and services listed above, it cannot be concluded that the public targeted by both marks is different. As explained above, the opponent’s apparatus for cooking may target both the general public and the professionals in the food industry. Therefore, the relevant public may coincide because most of the contested goods target the general public and the contested processing machines for use in the food industry target the professional public.

Contested services in Class 35

There is a low degree of similarity between the retail and wholesale services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the consumers’ perspective. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. A low degree of similarity between the goods sold at retail or wholesale and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail or wholesale services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

Following the above reasoning, the contested wholesale and retail store services for food processing machinery are similar to a low degree to the opponent’s apparatus for cooking in Class 11.

However, when goods sold at retail are dissimilar to the actual goods themselves, no similarity can be found between them. Therefore, the contested wholesale and retail store services for food are dissimilar to all the opponent’s goods, since food is not usually sold in the same store as the opponent’s goods in Classes 7 and 11.

The contested import-export agencies are not considered to be a sales service and therefore cannot be subject to the same rules for finding similarity as in the comparison of goods with retail or wholesale services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are intended for supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods, they do not relate to the actual retail or wholesale of the goods. For these reasons, import and export services are considered dissimilar to the goods that could be imported or exported. Therefore, the contested import-export agencies are dissimilar to the opponent’s goods in Classes 7 and 11.

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 and services found to be similar are directed at the public at large as well as business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high depending on the specialised nature of the goods and services. For instance, the contested processing machines for use in the food industry in Class 7 target business customers, whose degree of attention will be higher as the goods concerned are expensive machines that influence the customers’ businesses.

c) The signs

Earlier trade mark	Contested sign

The relevant territories are Germany and France.

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 signs are figurative marks. Their verbal elements, ‘SANKO’ in the earlier mark and ‘ANKO’ in the contested sign, are depicted in standard upper-case letters. They have no meaning for the relevant public and are distinctive.

The figurative element of the earlier mark is a blue and red oval divided vertically in three parts by wavy lines, and that of the contested sign is a spiral-shaped device. Both elements are abstract stylised devices with no particular relation to the relevant goods and services. Although these figurative elements are distinctive, 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). Consequently, the figurative elements do not detract the public’s attention away from the conflicting signs’ distinctive verbal elements, which have a stronger impact on consumers than their figurative elements.

Neither the earlier mark nor the contested sign has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘ANKO’. The earlier mark includes the additional letter ‘S’ at the beginning of the verbal element. Although the initial part of the verbal component of a mark may be liable to attract the consumer’s attention more than the following parts, the difference in one letter at the beginning of the earlier mark is not enough to counteract the coincidences in all the other letters (23/10/2013, T‑417/12, Aqua flow, EU:T:2013:550, § 64). The signs further differ in their additional abstract figurative elements, which however have a lower impact on consumers than their verbal elements, as explained above.

Considering all the above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, both marks are pronounced in two syllables: ‘SAN-KO’ and ‘AN-KO’, the first of which sounds similar, due to the shared phonemes ‘AN’, and the second of which is identical. Consequently, the rhythm and intonation of both signs are nearly identical. The pronunciation differs in the sound of the first letter of the earlier mark, ‘S’, which has no counterpart in the contested sign.

Therefore, the signs are 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.

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 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

The contested goods and some of the contested services are similar to varying degrees to the opponent’s goods. They target the public at large as well as business customers. The degree of attention of the relevant public varies from average to high. Furthermore, the distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree and aurally similar to a high degree since they share the sequence of four letters/sounds ‘ANKO’ (which constitutes the entire verbal element of the contested sign) and four out of five letters of the earlier mark’s verbal element. The signs do not convey any meaning for the relevant public, and therefore a conceptual comparison is not possible and does not affect the assessment of similarity. The additional letter ‘S’ at the beginning of the earlier mark and the presence of figurative elements in both signs are not sufficient to counteract the visual and aural similarities, including for the goods and services that are similar to a low degree.

In fact, 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).

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).

The applicant argues that its contested mark has been already registered in various countries and used on the market. The applicant submitted evidence to prove these claims. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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 on international trade mark registration No 895 889 designating Germany and France.

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

The rest of the contested services 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 services 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 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

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Birgit Holst FILTENBORG

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.