OPPOSITION No B 3 094 428

Gürok Turizm Ve Madencilik Anonim Sirketi, Inköy Mahallesi, Eskisehir Karayolu Bulvari, No 96, Merkez, Kütahya, Turkey (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative)

a g a i n s t

Olav UG (haftungsbeschränkt), Fleher Str. 3, 40223 Düsseldorf, Germany (applicant), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern MBb, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative).

On 20/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 428 is upheld for all the contested goods.

2. European Union trade mark application No 18 072 410 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 072 410 for the figurative mark , namely against all the goods in Classes 8 and 21. The opposition is based on, inter alia, European Union trade mark registration No 11 224 771 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.

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 11 224 771.

a) The goods

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

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors; table cutlery made of precious metals or coated therewith, namely, knives, spoons and forks; non-electric egg and cheese slicers, non-electric pizza cutters, non-electric vegetable and fruit peelers.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; dishes, jars, cookie jars, glasses, cups, trays, egg cups, coffee cups, saucepans, carafes, cake molds, teapots, tableware (other than knives, forks and spoons) made of glass and porcelain, namely, bowls, mugs, plates, salt and pepper shakers, gravy boats, jugs and vases; statuettes, statues and works of art of glass and porcelain.

The contested goods are the following:

Class 8: Kitchen knives; chef knives; cutlery.

Class 21: Cooking pot sets; cooking pots; skillets; pot lids; tableware, except forks, knives and spoons.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’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.

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 8

The contested kitchen knives; chef knives; cutlery are identical to the opponent’s hand tools and implements (hand-operated); cutlery, because cutlery is identically contained in both lists and the opponent’s hand tools and implements (hand-operated) include, or overlap with, the contested kitchen knives; chef knives, which are cutting tools for food preparation.

Contested goods in Class 21

The contested tableware, except forks, knives and spoons includes, as a broader category, or overlap with, the opponent’s tableware (other than knives, forks and spoons) made of glass and porcelain, namely, bowls, mugs, plates, salt and pepper shakers, gravy boats, jugs and vases; statuettes, statues and works of art of glass and porcelain. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cooking pot sets; cooking pots; skillets; pot lids are at least similar to the opponent’s household or kitchen utensils and containers as they have the same purpose, usually coincide in their producer and relevant public, and are distributed through the same channels. Furthermore, they 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 at least similar are directed at the public at large and at business customers, such as chefs and the owners of restaurants or cafeterias. The degree of attention is considered to be average.

c) The signs and the distinctiveness of the earlier mark

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 earlier mark is a figurative mark ‘Lav’, depicted in fairly standard title-case letters. The contested sign is a figurative mark ‘Olav’, with stylised first letter and the remaining letters depicted in a fairly standard typeface.

As pointed out by both parties, the verbal element ‘Lav’ of the earlier mark may be perceived by, for example, the English-speaking part of the public as an abbreviation of ‘lavatory’. However, this verbal element is meaningless for the remaining part of the public. The applicant claims that the contested sign may be perceived as a first name in some territories, but does not provide any further information in this regard. However, at least part of the relevant public will perceive it as a meaningless word. When perceived as meaningless, the verbal elements ‘Lav’ of the earlier mark and ‘Olav’ of the contested sign have an average degree of distinctiveness.

Taking into account all the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive both signs as meaningless, as, in the absence of any meanings that could differentiate them, this part of the public is more likely to confuse the signs.

As the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se and, in the absence of any meaning of the sole element it is composed of, the distinctiveness of the earlier mark must be seen as normal.

Visually, the signs coincide in the sequence of letters ‘lav’, which constitute all the letters of the earlier mark and three out of four letters of the contested sign. The signs differ in the first letter ‘O’ of the contested sign, which has no counterpart in the earlier mark, as well as its stylisation.

The Opposition Division agrees with the applicant that since the earlier mark is a short three-letter sign, the relevant consumers will notice the addition of the stylised letter ‘O’ at the beginning of the contested sign. However, contrary to the applicant’s assertions, the stylisation of the letter ‘O’ is not particularly striking, since it is limited to the simple addition of a curved line, which will be seen by the relevant consumers as a decorative feature, and does not preclude them from perceiving the contested sign as composed of the single verbal element ‘Olav’. Since the addition of graphic features have only a limited impact on the relevant consumers’ perception, they will not attribute any indication of the commercial origin of the goods in question to the stylisation of one letter. Moreover, contrary to the applicant’s arguments, there is nothing to suggest that the letter ‘O’ will be perceived as a separate letter, since the contested sign is depicted as one word, without spaces or other indications that could lead the relevant public to believe that it is made up of two elements.

Visual perception of the signs is almost fully determined by the letters composing them and not by the stylisation (which has a decorative purpose and will not attract much attention). Therefore, the difference in the additional stylised letter ‘O’ at the beginning of the contested sign cannot outweigh the similarity created by the coinciding three letters – especially since these letters ‘lav’ constitute the entire earlier mark.

Taking into account all the above, the signs are considered visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘lav’, which form the entire earlier mark and three letters out of four of the contested sign. The pronunciation differs in the sound of the first letter ‘O’ of the contested sign, which has no counterpart in the earlier mark.

Even taking into account the short length of the earlier mark, the addition of a phoneme ‘O’ at the beginning of the contested sign will not prevail over the aural similarities created by the coinciding three letters ‘lav’. Although, as pointed out by the applicant, the earlier mark will be pronounced in one syllable and the contested sign in two, the second syllable of the contested sign will be pronounced identically to the earlier mark. Therefore, despite the difference in pronunciation created by the additional vowel at the beginning of the contested sign, the signs are aurally similar to at least an average degree.

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) 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).

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.

The contested goods are partly identical and partly at least similar to the opponent’s goods and they target the public at large and professionals with an average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and the conceptual aspect plays no role in the assessment of likelihood of confusion. The contested sign reproduces the entire earlier mark, and the difference in the first letter ‘O’ and the stylisation of the contested sign are not sufficient to distract consumers’ attention from the abovementioned commonality.

The earlier mark is a short sign, and the differing stylised first letter ‘O’ of the contested sign creates a perceptible difference between them. However, neither of the signs conveys any meaning that could clearly differentiate them. It is therefore highly conceivable that, due to the abovementioned commonalities between the earlier mark and the contested sign, the relevant consumers will make a connection between them and assume that the goods in question are from the same undertaking or economically linked undertakings. Consequently, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier mark, configured in a different way according to the type or line of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Taking into account the abovementioned principle of interdependence and 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), the identity or at least similarity between the goods offsets a somewhat lesser degree of visual and aural similarity between the signs. The overall similarity between the signs is therefore sufficient for a finding of a likelihood of confusion or, at least, likelihood of association between them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will perceive both marks as meaningless. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 224 771. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 11 224 771 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Marine DARTEYRE

Rasa BARAKAUSKIENE

Cristina CRESPO MOLTÓ

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.