OPPOSITION Nо B 3 083 067

Modelo Continente Hipermercados, S.A., Rua João Mendonça, 505, 4464‑503 Senhora da Hora, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249‑103 Lisboa, Portugal (professional representative)

a g a i n s t

TP-Link International Limited, Room 901,9/f, New East Ocean Centre, 9 Science Museum Road, Tsim Sha Tsui, Kowloon, Hong Kong, (applicant), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 Munich, Germany (professional representative).

On 23/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 067 is partially upheld, namely for the following contested goods:

Class 7: Vacuum cleaners; floor cleaning machines; electric machines for carpet shampooing; floor polishers; dry cleaning machines for carpets; floor machines for applying cleaning preparations to floors and carpets; steam cleaners; handheld vacuum cleaners; stick-vacs in the nature of vacuum cleaners; cordless vacuum cleaners; robotic vacuum cleaners.

Class 9: Scales; scales with body mass analysers; scales with body mass analyzers; bathroom scales; digital bathroom scales; electronic weighing scales for kitchen use; weighing scales; wireless electronic scales; alarm sensors; electric sensors; electrical sensor apparatus for sensing the presence or absence of individuals or objects by contact or pressure; pressure sensors; proximity sensors; temperature sensors.

Class 11: LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED lighting fixtures for indoor and outdoor lighting applications; LED lighting systems, namely, LED modules, power supplies, and wiring; LED luminaires; electric bulbs; electric light bulbs; fluorescent electric light bulbs; halogen light bulbs; LED light bulbs; light bulbs; light bulbs, electric; miniature light bulbs.

2. European Union trade mark application No 18 015 313 is rejected for all the above goods. It may proceed for the remaining contested goods, namely:

Class 9: Camera hardware systems for IP (Internet protocol) video surveillance; cameras; day and night vision systems primarily comprising day and night sensors, day and night cameras, power sources, communication means, monitors and operating software; light emitting diodes (LEDs); remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; wireless communication devices for transmitting images taken by a camera; doorbells; LED lighting controls for energy management, computer environment illumination, color energy, and lighting schedule; plug adaptors; plug connectors; adapter plugs; electric plugs; electrical outlets; electrical plug device enabling connection and disconnection of power and/or control cables; electrical plugs; electrical plugs and sockets; home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications.

3. Each party bears its own costs.

REASONS

On 13/05/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 015 313 ‘Kasa’ (word mark). The opposition is based on European Union trade mark registration No 11 877 172 (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 and services on which the opposition is based are the following:

Class 3: Deodorants; air fresheners.

Class 4: Bougies; perfumed candles; lighting fuel; church candles; candles, nightlights and wicks for lighting.

Class 5: Air-freshening preparations.

Class 6: Outdoor blinds of metal; clothes hooks of metal; flexible tubes of metal; statuettes of common metal; preserving foils of aluminium.

Class 8: Scissors; cutlery; tableware (cutlery); planes.

Class 9: Precision balances; scales, electronic scales and mechanical scales, dosage dispensers.

Class 10: Air mattresses for medical purposes; cushions for medical purposes; water bags for medical purposes.

Class 11: Lamps; table lamps; desk lamps; high-intensity light projectors, more precisely spotlights; showers; shower fittings; taps [faucets]; water filter; kettles, electric; electric grilling apparatus; electric deep fryers; electric pressure cooking saucepans; roasting apparatus; ice boxes; toilet seats, toilets; lava rocks for use in barbecue grills; rotisseries; rice cookers; coffee brewers; electric coffee pots (jugs for coffee); water heaters; kettles; grilling apparatus; fryers; deep fat fryers.

Class 12: Shopping trolleys [carts (Am)].

Class 14: Watches.

Class 16: Engravings; paper serviettes; tablecloths of paper; printed invitations; paper washcloths; drink mats of paper; cooking paper; paper coffee filters; silver paper; plastic trash bags; garbage bags of paper (for household use); food preservation bags, of paper or plastic, plastic film for wrapping food for household use; paper baking cups.

Class 19: Outdoor blinds, not of metal and not of textile.

Class 20: Pillows and cushions; air cushions, not for medical purposes; pillows, mattress toppers; seat cushions; indoor window shades [furniture]; slatted indoor blinds; woven timber blinds [furniture]; pulleys of plastics for blinds; picture frames; picture frames; curtain rods; chairs and stools; tables; kitchen furniture; bookcases; furniture, sofas, sofa beds; writing desks, cupboards, kitchen cabinets, beds; chests of drawers, furniture, parts for furniture; garden furniture; bathroom furniture; living room furniture; clothes hooks; racks [furniture]; chests; coathooks; bottle racks; desks (furniture); statues of wood, wax, plaster or plastic; spring mattresses; mattress toppers; mattresses; air mattresses, not for medical purposes; spring mattresses, spring mattresses, shelves for filing-cabinets (furniture); bookshelves; furniture shelves, racks [furniture], shelves for storage; office shelves; mirrors [looking glasses]; mirrors (furniture), hampers (baskets); fishing baskets; baskets, not of metal; chests for toys; non-metal lock boxes; letter boxes (not of metal); wood boxes; toy boxes and chests; bins of wood or plastic; closets (towel -) [furniture].

Class 21: Trivets; cups and plates; plastic plates; paper plates; vegetable dishes; table plates; platters; salad bowls, not of precious metal; cups of paper; drinking-cups, plastic cups, beer steins; porcelain mugs; basins [bowls]; fruit cups; salad bowl; tea pots; goblets; champagne flutes; cups of paper or plastic; wine glasses; drinking glasses; stew-pans; cake molds [moulds]; cookery molds [moulds]; jugs; bottles; toothpicks; earthenware saucepans; cooking pots, cooking pots; steamers; non-electric pressure cookers; non-electric coffee pots; household or kitchen utensils and containers (not of precious metals or coated therewith); frying pans; non-electric kettles; deep-fryers, non-electric; pails; plastic buckets; clothes racks [for drying], clothes racks [for drying]; ironing boards; domestic bread baskets; wastepaper baskets; picnic baskets (fitted), including dishes; waste baskets; bowls; cookie jars; money boxes; lunchboxes; bread bins; boxes for soap (soapboxes); toilet roll stands; serviette holders, knife rests for the table; breadboards; washing boards; chopping boards; plastic coasters; plastic cups; paper or plastic cups; plastic plates; cabarets (trays); salt cellars; pepper pots; butter dishes; cheese cover; cruet sets for oil and vinegar; jam jars; garlic presses (kitchen utensils); salad bowls, not of precious metal; ice buckets; ice pails; champagne buckets; stands for tooth brushes, toilet brush holders; holders for toilet paper; holders for flowers (flower arranging); trivets (table utensils); glass holders for candles, sponge holders; bottle stands; napkin holders; towel holders; dishes for soap; clothes-pegs, statues of porcelain, earthenware or glass; candle sticks; candle sticks of glass; candle sticks not of precious metal; household gloves.

Class 23: Sewing yarns; knitting yarn; yarns and threads, for textile use.

Class 24: Protective covers for furniture; curtains of textile or plastic; towels of textile; face towels of textile; table cloths made of textile; towels of textile; cloth coasters; bed and table covers; covers for furniture; protective covers for mattresses; unfitted fabric furniture covers; fitted toilet lid covers (made of fabric or fabric substitutes); serviettes, table mats, not of paper; kitchen linen; sheets [textile]; stitched sleeping bags, as a substitute for sheets; shams; duvets; quilts; bed blankets; bed blankets; bed blankets, travelling rugs [lap robes]; bath linen except clothing; bathroom linen; blinds of textile material.

Class 25: Aprons [clothing]; dressing gowns; bath robes.

Class 26: Needles; pins; buttons; hook and loop fasteners; sewing baskets; sewing boxes; boxes for needles.

Class 27: Rugs; floor mats; door mats; carpet runners; non-slip mats, bathmats.

Class 28: Games; balloons; toys; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 34: Ashtrays for smokers.

Class 42: Interior decoration.

The contested goods are the following:

Class 7: Vacuum cleaners; floor cleaning machines; electric machines for carpet shampooing; floor polishers; dry cleaning machines for carpets; floor machines for applying cleaning preparations to floors and carpets; steam cleaners; handheld vacuum cleaners; stick-vacs in the nature of vacuum cleaners; cordless vacuum cleaners; robotic vacuum cleaners.

Class 9: Camera hardware systems for IP (internet protocol) video surveillance; cameras; scales; scales with body mass analysers; scales with body mass analyzers; alarm sensors; bathroom scales; day and night vision systems primarily comprising day and night sensors, day and night cameras, power sources, communication means, monitors and operating software; digital bathroom scales; electric sensors; electrical sensor apparatus for sensing the presence or absence of individuals or objects by contact or pressure; electronic weighing scales for kitchen use; light emitting diodes (LEDs); pressure sensors; proximity sensors; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; temperature sensors; weighing scales; wireless communication devices for transmitting images taken by a camera; wireless electronic scales; doorbells; LED lighting controls for energy management, computer environment illumination, color energy, and lighting schedule; plug adaptors; plug connectors; adapter plugs; electric plugs; electrical outlets; electrical plug device enabling connection and disconnection of power and/or control cables; electrical plugs; electrical plugs and sockets; home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications.

Class 11: LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED lighting fixtures for indoor and outdoor lighting applications; LED lighting systems, namely, LED modules, power supplies, and wiring; LED luminaires; electric bulbs; electric light bulbs; fluorescent electric light bulbs; halogen light bulbs; led light bulbs; light bulbs; light bulbs, electric; miniature light bulbs.

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

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

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 vacuum cleaners; floor cleaning machines; electric machines for carpet shampooing; floor polishers; dry cleaning machines for carpets; floor machines for applying cleaning preparations to floors and carpets; steam cleaners; handheld vacuum cleaners; stick-vacs in the nature of vacuum cleaners; cordless vacuum cleaners; robotic vacuum cleaners are all different kind of cleaning machines for the household and they are similar to the opponent’s grilling apparatus in Class 11. The goods in question may coincide in manufacturers, distribution channels and end users, for example consumers who want to furnish a flat with domestic appliances used for routine housekeeping tasks (by analogy decision of 03/03/2011, R 643/2010-4, AQUA SENSE/ AQUA SENSOR; § 14).

Contested goods in Class 9

Scales are identically contained in both lists of goods.

The contested scales with body mass analysers (listed twice); bathroom scales; digital bathroom scales; electronic weighing scales for kitchen use; weighing scales; wireless electronic scales are included in the broad category of the opponent’s scales. Therefore, they are identical.

The contested alarm sensors; electric sensors; electrical sensor apparatus for sensing the presence or absence of individuals or objects by contact or pressure; pressure sensors; proximity sensors; temperature sensors are at least similar to the opponent’s scales. They have the same general purpose of measuring, for example temperature, distance, weight. They also coincide in producers, distribution channels and relevant public.

The rest of the contested goods, namely camera hardware systems for IP (Internet protocol) video surveillance; cameras; day and night vision systems primarily comprising day and night sensors, day and night cameras, power sources, communication means, monitors and operating software; light emitting diodes (LEDs); remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; wireless communication devices for transmitting images taken by a camera; doorbells; LED lighting controls for energy management, computer environment illumination, color energy, and lighting schedule; plug adaptors; plug connectors; adapter plugs; electric plugs; electrical outlets; electrical plug device enabling connection and disconnection of power and/or control cables; electrical plugs; electrical plugs and sockets; home and office electrical power automation systems comprising wireless and wired controllers, controlled devices, and software for appliances, lighting, HVAC, security and other home and office electrical power monitoring and control applications are dissimilar to the opponent’s goods and services. The contested goods encompass, broadly speaking, different kinds of plugs, cameras and related goods, doorbells, LEDs and LED lighting controls. These goods differ entirely in nature, purpose and methods of use from the opponent’s goods and services. They also have different producers/providers and distribution channels. They are neither complementary nor in competition.

Contested goods in Class 11

The contested LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED lighting fixtures for indoor and outdoor lighting applications are all different kinds of lighting fixtures. A lighting fixture is part of a light that is attached to the wall or ceiling in which the light bulb or other lighting element is inserted, and which cannot be easily removed (information extracted from Collins Dictionary on 23/03/2021 at https://www.collinsdictionary.com/dictionary/english/lighting-fixture). These goods, together with LED luminaires, overlap with the opponent’s lamps, which are any of a number of devices that produce illumination (information extracted from Collins Dictionary on 23/03/2021 at https://www.collinsdictionary.com/dictionary/english/lamp). Therefore, they are identical.

The contested LED lighting systems, namely, LED modules, power supplies, and wiring; electric bulbs; electric light bulbs; fluorescent electric light bulbs; halogen light bulbs; LED light bulbs; light bulbs; light bulbs, electric; miniature light bulbs are at least similar to the opponent’s lamps because they typically coincide in manufacturers, relevant public, distribution channels, and are complementary.

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 or similar are directed at the public at large and at specialised customers with specific professional knowledge or expertise.

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

c) The signs

	Kasa
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).

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.

The common verbal element ‘KASA’ is not meaningful in certain territories, for example in those countries where English is spoken and understood. Since this has an impact on the degree of distinctiveness of this element and the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The common verbal element ‘KASA’ has no meaning for the relevant public and therefore it has a normal degree of distinctiveness. It is also the element with the strongest impact in the earlier sign. 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). Furthermore, the figurative element (a black square) is a simple geometric form, which only highlights the verbal element depicted on it.

The verbal element ‘KASA’ in the earlier sign is depicted in standard upper-case letters and, on its own, its stylisation is devoid of any inherent capacity to designate the commercial origin of the opponent’s goods and services.

The earlier sign has no element that is more dominant (eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘KASA’ contained in both signs. They differ in its stylisation in the earlier sign as well as the earlier sign’s figurative element, which has no counterpart in the contested sign. However, for the reasons set out above, the stylisation of the verbal element ‘KASA’ in the earlier sign is non-distinctive and the figurative element has less impact than the verbal element ‘KASA’.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical because they coincide in the pronunciation of the verbal element ‘KASA’ contained in both signs. The figurative element of the earlier sign has no impact on the aural comparison of the signs since it will not be pronounced.

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.

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 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

This global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks, and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar and partly dissimilar. The signs are visually highly similar, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention varies from average to higher than average and the distinctiveness of the earlier sign is normal.

The contested sign is the verbal element ‘KASA’, which is also the element with the strongest impact in the earlier sign.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive one mark as a sub-brand or a variation of the other mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

On account of the strong visual similarity and aural identity of the signs at issue, the relevant public is likely to confuse them, or at least make an association as regards the commercial origin of the goods in question, namely, to believe that the identical and similar goods bearing the marks in question originate from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 found to be identical or similar 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

Gueorgui IVANOV

Ivo TSENKOV

Tobias KLEE

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.