OPPOSITION No B 3 080 943

Ginsa Electronic, S.L., Carrer Atenes, 9, 08006 Barcelona, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Vectair Systems Limited, Unit 3 Trident Centre, Armstrong Road, Basingstoke RG24 8NU, United Kingdom (applicant), represented by Michael Philip Downing, Suite 87, 20 Harcourt Street, D02 PF99, Dublin 2, Ireland (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 943 is partially upheld, namely for the following contested goods:

Class 11: Apparatus for heating, steam generating, refrigerating, drying, ventilating purposes; air deodorising apparatus; air freshening instruments; air freshening apparatus and devices; air purifying apparatus; apparatus for neutralising odour; space fragrancing instruments; space fragrancing apparatus and devices; air sanitizing apparatus; dryers; hand dryers; hair dryers; apparatus and appliances all for use in purifying or deodorising air; air conditioning apparatus; apparatus and devices for the automatic dispensing of air freshening and deodorizing preparations; air freshening and deodorising devices for toilet bowls and other surfaces; clip-on air freshening and deodorising devices for toilet bowls and other surfaces; parts and fittings for all the aforesaid.

2. European Union trade mark application No 18 006 422 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 18 006 422 for the word mark ‘V-AIR’ namely, against all the goods in Class 11. The opposition is based on Spanish trade mark registration No 3 728 652 for the word mark ‘U - AIR’. 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

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

Class 11: Apparatus, machines and equipment for purifying air; air filtering facilities; air cleaners apparatus; apparatus for regulating air flow (parts of ovens); equipment for the treatment of air; air filters; filtration and air extraction facilities.

The contested goods are the following:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air deodorising apparatus; air freshening instruments; air freshening apparatus and devices; air purifying apparatus; apparatus for neutralising odour; space fragrancing instruments; space fragrancing apparatus and devices; air sanitizing apparatus; dryers; hand dryers; hair dryers; apparatus and appliances all for use in purifying or deodorising air; air conditioning apparatus; apparatus and devices for the automatic dispensing of air freshening and deodorizing preparations; automatic taps; automatic urinal flushes; splash proofing products being urinal sanitiser units; air freshening and deodorising devices for toilet bowls and other surfaces; clip-on air freshening and deodorising devices for toilet bowls and other surfaces; parts and fittings for all the aforesaid.

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.

Air purifying apparatus are contained in both lists of goods with slightly different wording (apparatus for purifying air).

The contested apparatus for heating, steam generating, refrigerating, drying, ventilating purposes are included or overlap with the opponent’s equipment for the treatment of air. Therefore, they are identical.

The contested dryers; hand dryers; hair dryers are similar to the opponent’s apparatus, machines and equipment for purifying air because they coincide in distribution channels and relevant public. Moreover, they can be manufactured by the same producers.

The contested air deodorising apparatus; air freshening instruments; air freshening apparatus and devices; apparatus for neutralising odour; space fragrancing instruments; space fragrancing apparatus and devices; air sanitizing apparatus; apparatus and appliances all for use in purifying or deodorising air; air conditioning apparatus; apparatus and devices for the automatic dispensing of air freshening and deodorizing preparations; air freshening and deodorising devices for toilet bowls and other surfaces; clip-on air freshening and deodorising devices for toilet bowls and other surfaces are at least similar to the opponent’s apparatus, machines and equipment for purifying air. Even if it cannot be excluded that some of the contested goods would coincide in numerous relevant criteria, such as their nature, purpose, method of use, and are competing goods, or that they might even be considered as identical, these goods clearly belong to one homogeneous sector of apparatus and instruments for the treatment of air.

The contested parts and fittings for all the aforesaid (apparatus for heating, steam generating, refrigerating, drying, ventilating purposes; air deodorising apparatus; air freshening instruments; air freshening apparatus and devices; air purifying apparatus; apparatus for neutralising odour; space fragrancing instruments; space fragrancing apparatus and devices; air sanitizing apparatus; dryers; hand dryers; hair dryers; apparatus and appliances all for use in purifying or deodorising air; air conditioning apparatus; apparatus and devices for the automatic dispensing of air freshening and deodorizing preparations; air freshening and deodorising devices for toilet bowls and other surfaces; clip-on air freshening and deodorising devices for toilet bowls and other surfaces) are produced and sold by the same undertaking that manufactures the final products mentioned in brackets and target the same relevant public. Furthermore, they are complementary. Therefore, these contested parts and fittings are similar at least to a low degree to the corresponding opponent’s goods.

The contested apparatus for lighting, cooking, water supply and sanitary purposes; automatic taps; automatic urinal flushes; splash proofing products being urinal sanitiser units; parts and fittings for all the aforesaid are dissimilar to all the goods covered by the earlier right since they have nothing relevant in common. While the contested goods are essentially apparatus for lighting, cooking, water supply and sanitary purposes, the opponent’s goods are mainly devices for cleaning and purifying the air. Therefore, they have different purposes and methods of use. They do not coincide in their producer and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target a different relevant public.

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 identical or similar 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 and distinctiveness of the earlier mark

U - AIR	V-AIR
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 and the contested sign are word marks, ‘U - AIR’ and ‘V-AIR’ respectively. The common verbal element ‘AIR’ will be understood as referring to aire by the relevant public due to its similarity to this equivalent Spanish word. Bearing in mind that the goods in question are for ventilating, heating, refrigerating, cleaning or otherwise purifying or treating the air, this term is considered to have a weak distinctive character. Moreover, both first letters of the marks ‘U’ and ‘V’ have a normal degree of distinctiveness since no link can be established between the goods in question.

As a whole, neither of the signs have a clear or specific meaning for the relevant public. Therefore, since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the weak element ‘AIR’ in the mark.

Visually, the signs coincide in their endings, ‘AIR’, however, this term has a weak distinctive character. In addition, the signs coincide in their structures, that is to say, a first letter separated by a hyphen and followed by a three-letter word. Although, the signs differ in their first letters, U and V, respectively, these letters are visually similar. Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the earlier mark is ‘U-AIR’ while the pronunciation of the contested sign is ‘U-VE-AIR’, therefore, they coincide in the two syllables that form the earlier mark. However, the pronunciation differs in the sound of the second syllable ‘VE’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the semantic content of aire, which has a weak distinctive character, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 set out above, the goods are partly identical, partly similar (to varying degrees) and partly dissimilar. The degree of attentiveness of the relevant public varies from average to high. The earlier mark has a normal degree of inherent distinctive character. The signs are visually similar to a high degree, aurally similar to an average degree and conceptually similar to a low degree.

In spite of the differences in the first letters of the signs, there is a likelihood of confusion, in particular, because the signs are visually similar to a high degree on account of their identical structures and the visual similarities of the initial letters. Moreover, 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).

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including 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) 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

Angela DI BLASIO

María del Carmen COBOS PALOMO

Claudia SCHLIE

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.