OPPOSITION No B 3 071 133

Vitacom Electronics S.R.L., Str. Buna Ziua, F.N, 400495 Cluj-Napoca, Romania (opponent), represented by Maria Magdalena Raskai, Str. Unirii Nr. 3, Bl. D8, Ap. 31, 405200 Dej, Romania (professional representative)

a g a i n s t

Wellfresh Co. Ltd., Room 501, No.36, BoAi 3rd Rd., Shiqi, Zhong Shan Guang Dong, People’s Republic of China (applicant), represented by Carolina Maria Sanchez Margareto, Calle Guardia Civil Num. 22, Esc 6, 2º, pta 5, 46020 Valencia, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 071 133 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 950 814 for the figurative mark , namely against some of the goods in Class 11. The opposition is based on Romanian trade mark registration No 110 823 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

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

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, (excepted appliances use for hair care).

The contested goods are the following:

Class 11: Light-emitting diodes [LED] lighting apparatus; Lighting apparatus and installations; Air purifying apparatus and machines; Cooking apparatus and installations.

The Opposition Division notes that the goods of the opponent’s earlier mark, include the following limitation ‘excepted appliances use for hair care’. Since the Opposition Division has difficulties to see the meaning of this limitation in relation to the said goods, but especially to some of them such as apparatus for lighting, for cooking or for ventilating purposes, and since this limitation does not affect the scope of protection of the those goods significantly, it will not be mentioned in the following comparisons.

The contested light-emitting diodes [LED] lighting apparatus; lighting apparatus and installations overlap with the opponent’s apparatus for lighting purposes, the contested cooking apparatus and installations overlap with the opponent’s apparatus for cooking purposes and the air purifying apparatus and machines overlap with the opponent’s apparatus for ventilating purposes. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 earlier mark is a figurative mark consisting of the word ‘well’ written in rather ordinary lower-case letters. It includes the registered trade mark symbol, ®. However, this is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The contested sign is a figurative mark, consisting of the verbal element ‘Wellfresh’ depicted in the stylized title-case letters in black while framed by white lines. The last letter ‘h’ finishes with a wavy line. The whole verbal element is placed within a grey ribbon-like figurative element.

The word ‘WELL’ is an English adverb that has no meaning in Romanian. It is not a basic English word and it will be perceived as meaningless by an average consumer in the relevant territory. Therefore it is distinctive.

When it comes to the contested sign, it has been established by the case-law that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, EU:C:1999:323, § 25; 22/10/2015, C-20/14, BGW, EU:C:2015:714, § 35).

Possible exceptions to the above rule are situations where a verbal element is broken down into elements which, for the relevant consumers, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Moreover, words can also be visually broken down through use of specific punctuation marks (e.g. hyphens, dots). This is not the case of the contested sign.

As explained above, the word ‘Well’ is meaningless and the word ‘fresh’ has no meaning in Romanian either. In addition, it is not similar to any Romanian word as to be able to conclude with sufficient certainty that it will be dissected from the contested sign. Therefore, contrary to the opponent’s claim, the contested sign’s verbal element ‘Wellfresh’ will be perceived in its entirety as a meaningless verbal element. It also is considered as distinctive for the relevant goods.

Contrary to the opponent’s arguments, the Opposition Division finds that the earlier mark has no element that could be considered clearly more dominant than other elements.

While it is true 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 (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37), however, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). The Opposition Division considers that in the case of the contested sign, the ribbon-like figurative device forms, together with the verbal element, its co-dominant elements.

Visually, the signs coincide in the four letters ‘well’ which is the entire verbal element of the earlier mark and which is included at the beginning of the verbal element of the contested sign. However, they differ in the additional letters ‘fresh’ as well as the additional figurative element of the contested sign and the overall stylization of the two marks.

Besides, the sequence of letters ‘well’ in the contested sign is a part of the verbal element ‘Wellfresh’, which as explained above, will not be dissected. As such it does not play an independent distinctive role in the contested sign, which consequently will be not perceived as containing this element.

Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛W-E-L-L’, present identically in both signs. The pronunciation differs in the sound of the letters ‛F-R-E-S-H’ of the contested mark, which have no counterparts in the earlier mark. Although the marks coincide in their beginnings, the fact remains that in the contested sign, the part ‘well’ does not play an independent distinctive role and that the verbal element ‘Wellfresh’ has a different number of syllables (two), and therefore, a different rhythm and intonation than the earlier mark, which will be pronounced with one syllable.

Therefore, the signs are aurally to a below average degree.

Conceptually, neither of the verbal elements in the signs has a meaning for the public in the relevant territory. The ribbon-like device will be taken into account, however its impact in the conceptual comparison is not significant. Therefore, the conceptual comparison remains neutral.

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 claimed that the ‘WELL brand has gained notoriety in Romania and is well known outside of the country also’ [sic]. The Opposition Division interprets this statement as a claim that the earlier trade mark enjoys enhanced distinctiveness. However, the opponent did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods at issue were found identical. The degree of attention of the relevant public varies from average to high and the inherent distinctiveness of the earlier mark is normal.

It should be recalled that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 61).

The signs coincide in four letters ‘Well’. However, the verbal element of the contested sign as a whole is meaningless for an average consumer in the relevant territory, which will perceive that element in its entirety without breaking it down into several elements. Hence, the coinciding element/sequence of letters (well) does not have an independent distinctive role in the contested sign. Due to this fact and to their differing stylisation along with the additional elements of the contested sign, the signs have significant visual and aural differences. In addition, the marks have no concept in common that would lead the public to associate one with the other.

Taking into account the differences between the signs described above, it is considered that the mere fact that the contested sign contains the letters ‘Well’ at the beginning of its verbal element is not sufficient to conclude that a significant part of the relevant public may confuse the signs or make a connection between them so as to assume that the relevant goods are produced by the same or economically linked undertakings.

Hence, notwithstanding the identity found in respect of the goods in question, the Opposition Division finds that the differences between the signs prevail over their similarities and the contested sign does not bring to mind the earlier mark.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tu Nhi VAN

Renata COTTRELL

Marta Maria CHYLIŃSKA

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.