OPPOSITION No B 3 103 510

Prealpina S.r.l., Viale Venezia, 50, 31015, Conegliano Veneto (TV), Italy (opponent), represented by Internazionale Brevetti Ingg. Zini, Maranesi & C. S.r.l., Piazza Castello, 1, 20121, Milan, Italy (professional representative)

a g a i n s t

Kemper GmbH, Von-Siemens-Straße 20, 48691, Vreden, Germany (applicant), represented by Habbel Und Habbel Patentanwälte PartG mbB, Am Kanonengraben 11, 48151, Münster, Germany (professional representative).

On 22/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 103 555 is partially upheld, namely for the following contested goods and services:

Class 7: All the contested goods in this class.

Class 35: Retail services in relation to extracting machines; Wholesale services in relation to extracting machines; Retail services in relation to air suction machines; Wholesale services in relation to air suction machines; Retail services in relation to blowing machines for the compression, exhaustion and transport of gases; Wholesale services in relation to blowing machines for the compression, exhaustion and transport of gases; Retail services in relation to suction machines for industrial purposes; Wholesale services in relation to suction machines for industrial purposes; Retail services in relation to fans being parts of machines; Wholesale services in relation to fans being parts of machines; Retail services in relation to blowing machines; Wholesale services in relation to blowing machines; Retail services in relation to portable filtration units [machines]; Wholesale services in relation to portable filtration units [machines]; Retail services in relation to welding and soldering equipment; Wholesale services in relation to welding and soldering equipment; Retail services in relation to control mechanisms for machines, engines or motors; Wholesale services in relation to control mechanisms for machines, engines or motors; Retail services in relation to industrial robots; Wholesale services in relation to industrial robots; Retail services in relation to air purifying apparatus; Wholesale services in relation to air purifying apparatus; Retail services in relation to air filtering installations; Wholesale services in relation to air filtering installations; Retail services in relation to air purifiers; Wholesale services in relation to air purifiers; Retail services in relation to filters for industrial and household use; Wholesale services in relation to filters for industrial and household use; Retail services in relation to suction ventilators; Wholesale services in relation to suction ventilators; Retail services in relation to extraction columns [other than laboratory apparatus]; Wholesale services in relation to extraction columns [other than laboratory apparatus]; Retail services in relation to hoods incorporating extractor fans; Wholesale services in relation to hoods incorporating extractor fans; Retail services in relation to air filters for use as dust extractors in industrial processes; Wholesale services in relation to air filters for use as dust extractors in industrial processes; Retail services in relation to ventilating fans; Wholesale services in relation to ventilating fans; Retail services in relation to hVAC systems (heating, ventilation and air conditioning); Wholesale services in relation to hVAC systems (heating, ventilation and air conditioning); Retail services in relation to industrial ventilation apparatus; Wholesale services in relation to industrial ventilation apparatus; Retail services in relation to apparatus for ventilating; Wholesale services in relation to apparatus for ventilating; Retail services in relation to flues and installations for conveying exhaust gases; Wholesale services in relation to flues and installations for conveying exhaust gases.

2. European Union trade mark application No 18 083 817 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 some of the goods and services of European Union trade mark application No 18 083 817 for the figurative mark . namely against all the goods and services in Classes 6, 7, 9, and 35. The opposition is based on European Union trade mark registration No  17 916 818 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: Matrices (Boxes for -) [printing]; Electric shears; Rolling mill cylinders; Knives [parts of machines]; Automatic vending machines; Vending machines; Die-cutting and tapping machines; Milling machines; Blades [parts of machines]; Saw blades [parts of machines]; Paring machines; Threading machines; Stropping machines; Metalworking machines; Shredders [machines] for industrial use; Chucks [parts of machines]; Handling machines, automatic [manipulators]; Hammers [parts of machines]; Sharpening wheels [parts of machines]; Paring machines; Drilling machines; Blade holders [parts of machines]; Drill chucks [parts of machines]; Holding devices for machine tools; Punching machines; Punches for punching machines; Trueing machines; Robots [machines]; Saws; Brushes [parts of machines]; Die-stamping machines; Moulds [parts of machines]; Tables for machines; Lathes; Metal drawing machines; Drills (Electric hand -); Feeders [parts of machines]; Tools [parts of machines]; Hand-held tools, other than hand-operated.

Class 8: Reamers; Cutter bars [hand tools]; Graving tools [hand tools]; Screwdrivers; Emery boards; Spanners; Glaziers' diamonds [parts of hand tools]; Diggers [hand tools]; Irons [non-electric hand tools]; Goffering irons; Dies [hand tools]; Scissors; Milling cutters [hand tools]; Tap wrenches; Extension pieces for braces for screwtaps; Blades [hand tools]; Shear blades; Saw blades [parts of hand tools]; Files [tools]; Needle files; Emery files; Expanders [hand tools]; Reamer sockets; Hammers [hand tools]; Taps [hand tools]; Mallets [hand instruments]; Wheels (Sharpening -) [hand tools]; Vices; Bench vices [hand implements]; Perforating tools [hand tools]; Sharpening stones; Tweezers; Drill holders [hand tools]; Riveting hammers [hand tools]; Paring irons [hand tools]; Saws [hand tools]; Embossers [hand tools]; Stamping-out tools [hand tools]; Abrading instruments [hand instruments]; Blade sharpening instruments; Sharpening instruments; Tube cutters [hand tools]; Bits [hand tools]; Hand tools, hand-operated.

The contested goods and services are the following:

Class 6: Metal building materials; Flexible tubes of metal; Structures of metal in the form of cabins; Transportable cabins of metal, including being soundproof; Cabin walls of metal; Bastion defence walls of metal materials; Transportable buildings of metal; Racks of metal for goods in the form of automated high-bay racks for sheet materials; Shelving frames of metal [other than furniture]; Storage racks of metal, in particular for pallets; Ducts of metal for ventilating and air-conditioning installations; Metal rods for brazing and welding; Soldering wire of metal; Tool boxes of metal, empty; Bottles (metal containers) for compressed gas or liquid air; Reels of metal, non-mechanical, for flexible hoses.

Class 7: Mechanical hose reels; Extracting machines; Machine parts, Namely air filters, gas filters, Dust separators; Air suction machines; Blowing machines for the compression, exhaustion and transport of gases; Suction machines for industrial purposes; Suction machines for industrial purposes; Filters [parts of machines or engines]; Suction installations and suction apparatus for craft businesses and manufacturing companies, consisting predominantly of air suction machines, filters featuring mechanical and/or electrostatic cleaning, suction arms and/or suction crane arms; Exhaust gas suction installations for craft businesses and manufacturing companies, consisting predominantly of air suction machines, filters, suction arms and/or suction crane arms and suction hoods; Exhaust gas suction installations for vehicles; Suction arms, including in the form of hoses, suction cranes and telescopic suction arms for suction installations and exhaust gas installations; Suction hoods for industrial purposes, in particular for welding workstations; Fans being parts of machines; Blowing machines; High-vacuum suction installations; Filtering machines; Portable filtration units [machines]; Mobile filter apparatus (machines); Welding machines, Robots for welding; Cubicles for welding, in particular robot welding cubicles; Welding and soldering equipment; Suction tables, grinding tables and welding tables for industrial purposes; Rack control apparatus; Rack control apparatus, namely rack-guided or floor-guided, pneumatic, hydraulic, electric or otherwise motorised apparatus for the storage and retrieval of goods from racks, in particular high-bay racks; Elevating apparatus, lifting apparatus; Hydraulic, pneumatic and electric lifting apparatus and installations; Control mechanisms for machines, engines or motors; Industrial robots; Robots [machines].

Class 9: Face protection shields, Safety goggles; Visors and protective screens for use in helmets; workmen's protective masks; Solderers' helmets; Respirators for filtering air; Eye-shades; Filters for respiratory masks and for protective masks for workers; Glare and light filters; Clothing for protection against accidents, including shoes; Special clothing for life-saving purposes, helmets; Welding helmets; Protective welding covers; Computer software; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Fire-extinguishing apparatus; Automatic control apparatus.

Class 35: Retail services in relation to building materials of metal; Wholesale services in relation to building materials of metal; Retail services in relation to flexible tubes of metal; Wholesale services in relation to flexible tubes of metal; Retail services in relation to cabin walls of metal; Wholesale services in relation to cabin walls of metal; Retail services in relation to bastion defence walls of metal materials; Wholesale services in relation to bastion defence walls of metal materials; Retail services in relation to buildings, transportable, of metal; Wholesale services in relation to buildings, transportable, of metal; Retail services in relation to shelving frames of metal [other than furniture]; Wholesale services in relation to shelving frames of metal [other than furniture]; Retail services in relation to ducts of metal for ventilating and air-conditioning installations; Wholesale services in relation to ducts of metal for ventilating and air-conditioning installations; Retail services in relation to metal rods for brazing and welding; Wholesale services in relation to metal rods for brazing and welding; Retail services in relation to soldering wire of metal; Wholesale services in relation to soldering wire of metal; Retail services in relation to tool boxes of metal, empty; Wholesale services in relation to tool boxes of metal, empty; Retail services in relation to extracting machines; Wholesale services in relation to extracting machines; Retail services in relation to air suction machines; Wholesale services in relation to air suction machines; Retail services in relation to blowing machines for the compression, exhaustion and transport of gases; Wholesale services in relation to blowing machines for the compression, exhaustion and transport of gases; Retail services in relation to suction machines for industrial purposes; Wholesale services in relation to suction machines for industrial purposes; Retail services in relation to fans being parts of machines; Wholesale services in relation to fans being parts of machines; Retail services in relation to blowing machines; Wholesale services in relation to blowing machines; Retail services in relation to portable filtration units [machines]; Wholesale services in relation to portable filtration units [machines]; Retail services in relation to welding and soldering equipment; Wholesale services in relation to welding and soldering equipment; Retail services in relation to control mechanisms for machines, engines or motors; Wholesale services in relation to control mechanisms for machines, engines or motors; Retail services in relation to industrial robots; Wholesale services in relation to industrial robots; Retail services in relation to solderers' helmets; Wholesale services in relation to solderers' helmets; Retail services in relation to respirators for filtering air; Wholesale services in relation to respirators for filtering air; Retail services in relation to welding helmets; Wholesale services in relation to welding helmets; Retail services in relation to computer software; Wholesale services in relation to computer software; Retail services in relation to fire extinguishers; Wholesale services in relation to fire extinguishers; Retail services in relation to automatic control apparatus; Wholesale services in relation to automatic control apparatus; Retail services in relation to air purifying apparatus; Wholesale services in relation to air purifying apparatus; Retail services in relation to air filtering installations; Wholesale services in relation to air filtering installations; Retail services in relation to air purifiers; Wholesale services in relation to air purifiers; Retail services in relation to filters for industrial and household use; Wholesale services in relation to filters for industrial and household use; Retail services in relation to suction ventilators; Wholesale services in relation to suction ventilators; Retail services in relation to extraction columns [other than laboratory apparatus]; Wholesale services in relation to extraction columns [other than laboratory apparatus]; Retail services in relation to hoods incorporating extractor fans; Wholesale services in relation to hoods incorporating extractor fans; Retail services in relation to air filters for use as dust extractors in industrial processes; Wholesale services in relation to air filters for use as dust extractors in industrial processes; Retail services in relation to ventilating fans; Wholesale services in relation to ventilating fans; Retail services in relation to hVAC systems (heating, ventilation and air conditioning); Wholesale services in relation to hVAC systems (heating, ventilation and air conditioning); Retail services in relation to industrial ventilation apparatus; Wholesale services in relation to industrial ventilation apparatus; Retail services in relation to apparatus for ventilating; Wholesale services in relation to apparatus for ventilating; Retail services in relation to flexible tubes, not of metal; Wholesale services in relation to flexible tubes, not of metal; Retail services in relation to buildings (Non-metallic -) in the form of cabins; Wholesale services in relation to buildings (Non-metallic -) in the form of cabins; Retail services in relation to portable cabins (Non-metallic -); Wholesale services in relation to portable cabins (Non-metallic -); Retail services in relation to buildings, transportable, not of metal; Wholesale services in relation to buildings, transportable, not of metal; Retail services in relation to air ducts of non-metallic materials for buildings; Wholesale services in relation to air ducts of non-metallic materials for buildings; Retail services in relation to furniture; Wholesale services in relation to furniture; Retail services in relation to racks [furniture]; Wholesale services in relation to racks [furniture]; Retail services in relation to shelves for storage; Wholesale services in relation to shelves for storage; Retail services in relation to furniture of metal; Wholesale services in relation to furniture of metal; Retail services in relation to curtains of plastic; Wholesale services in relation to curtains of plastic; Retail services in relation to flues and installations for conveying exhaust gases; Wholesale services in relation to flues and installations for conveying exhaust gases.

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 ‘in particular’, used in the applicant’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).

The term ‘namely’, used in the applicant’s list of goods and services 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 and services 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 6

The contested Metal building materials; Flexible tubes of metal; Structures of metal in the form of cabins; Transportable cabins of metal, including being soundproof; Cabin walls of metal; Bastion defence walls of metal materials; Transportable buildings of metal; Racks of metal for goods in the form of automated high-bay racks for sheet materials; Shelving frames of metal [other than furniture]; Storage racks of metal, in particular for pallets; Ducts of metal for ventilating and air-conditioning installations; Metal rods for brazing and welding; Soldering wire of metal; Tool boxes of metal, empty; Bottles (metal containers) for compressed gas or liquid air; Reels of metal, non-mechanical, for flexible hoses include metal building and construction materials, elements of metal, metal containers and metal hardware. They can be used in variety of industries and can be intended, in general, for the production of sophisticated and complicated industrial finished goods, which may even be intended for the creation of other goods. The customers of the contested goods are usually companies that use them for the creation/production of their own finished goods that are then sold to third parties. The mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials in nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary on the ground that one is manufactured with the other, and raw or semi-processed material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). Moreover, the contested unprocessed and semi-processed materials of metal do not have the same distribution channels as the opponent’s goods since they require different and specific equipment for their delivery. The Opposition Division cannot speculate if the producers, distribution channels and relevant clients of the goods under comparison are the same, neither can it make assumptions as to the importance of the different elements and parts in the construction of multi-functional, complicated machines that are used in very specific areas. It cannot be concluded that the opponent’s clients are the same as the applicant’s clients because there is no relevant information in the opponent’s arguments and this is not usual market practice. Therefore, the relevant consumers are not the same. Therefore, any relevant degree of similarity between the contested goods in Class 6 and the opponent’s goods in classes 7 and 8 cannot be established, and consequently they are dissimilar.

Contested goods in Class 7

The contested Mechanical hose reels; Extracting machines; Machine parts, Namely air filters, gas filters, Dust separators; Air suction machines; Blowing machines for the compression, exhaustion and transport of gases; Suction machines for industrial purposes; Suction machines for industrial purposes; Filters [parts of machines or engines]; Suction installations and suction apparatus for craft businesses and manufacturing companies, consisting predominantly of air suction machines, filters featuring mechanical and/or electrostatic cleaning, suction arms and/or suction crane arms; Exhaust gas suction installations for craft businesses and manufacturing companies, consisting predominantly of air suction machines, filters, suction arms and/or suction crane arms and suction hoods; Exhaust gas suction installations for vehicles; Suction arms, including in the form of hoses, suction cranes and telescopic suction arms for suction installations and exhaust gas installations; Suction hoods for industrial purposes, in particular for welding workstations; Fans being parts of machines; Blowing machines; High-vacuum suction installations; Filtering machines; Portable filtration units [machines]; Mobile filter apparatus (machines); Rack control apparatus; Rack control apparatus, namely rack-guided or floor-guided, pneumatic, hydraulic, electric or otherwise motorised apparatus for the storage and retrieval of goods from racks, in particular high-bay racks; Elevating apparatus, lifting apparatus; Hydraulic, pneumatic and electric lifting apparatus and installations; Control mechanisms for machines, engines or motors; Automated sheet metal rack storage units are machines for treatment of materials and manufacturing and for moving and handling equipment, and parts of machines. They are at least similar to the opponent’s Tools [parts of machines] as they can be produced by the ‘original’ manufacturer or by a manufacturer under their control. In this case, the goods under comparison can coincide in producer as well as end user. Furthermore, some of them can be complementary.

The contested Welding machines, Robots for welding; Cubicles for welding, in particular robot welding cubicles; Welding and soldering equipment; Industrial robots; Robots [machines] are at least similar to the opponent’s Robots [machines] which are machine[s] capable of carrying out a complex series of actions automatically. They can have a similar nature and purpose. Furthermore, they can coincide in commercial origin, relevant public and distribution channels.

The contested Suction tables, grinding tables and welding tables for industrial purposes are at least similar to the opponent’s tables for machines as they can have a similar nature and purpose. Furthermore, they can coincide in commercial origin, relevant public and distribution channels.

Contested goods in Class 9

The contested Face protection shields, Safety goggles; Visors and protective screens for use in helmets; workmen's protective masks; Solderers' helmets; Respirators for filtering air; Eye-shades; Filters for respiratory masks and for protective masks for workers; Glare and light filters; Clothing for protection against accidents, including shoes; Special clothing for life-saving purposes, helmets; Welding helmets; Protective welding covers; Computer software; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Fire-extinguishing apparatus; Automatic control apparatus include protective and safety equipment, computer software, fire-extinguishing apparatus, apparatus and instruments for conduction, switching, transforming, accumulating, regulating or controlling electricity, and controlling devices. Although some of the opponent’s goods are mechanical devices which may need electricity or computer control to run, this mere fact does not render these goods similar. They are not used for the same purpose and are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). The Opposition Division takes note that the opponent has not submitted any specific reasoning or evidence that would explain any purported similarity in this regard. Indeed, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T-106/12, Alpharen, EU:T:2013:340, § 51). Therefore, these goods are dissimilar to all the opponent’s goods.

Contested services in Class 35

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being 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 and the other goods may be sufficient to find a low degree of similarity with the retail 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 consumers.

Therefore, the contested Retail services in relation to extracting machines; Wholesale services in relation to extracting machines; Retail services in relation to air suction machines; Wholesale services in relation to air suction machines; Retail services in relation to blowing machines for the compression, exhaustion and transport of gases; Wholesale services in relation to blowing machines for the compression, exhaustion and transport of gases; Retail services in relation to suction machines for industrial purposes; Wholesale services in relation to suction machines for industrial purposes; Retail services in relation to fans being parts of machines; Wholesale services in relation to fans being parts of machines; Retail services in relation to blowing machines; Wholesale services in relation to blowing machines; Retail services in relation to portable filtration units [machines]; Wholesale services in relation to portable filtration units [machines]; Retail services in relation to welding and soldering equipment; Wholesale services in relation to welding and soldering equipment; Retail services in relation to control mechanisms for machines, engines or motors; Wholesale services in relation to control mechanisms for machines, engines or motors; Retail services in relation to industrial robots; Wholesale services in relation to industrial robots; Retail services in relation to air purifying apparatus; Wholesale services in relation to air purifying apparatus; Retail services in relation to air filtering installations; Wholesale services in relation to air filtering installations; Retail services in relation to air purifiers; Wholesale services in relation to air purifiers; Retail services in relation to filters for industrial and household use; Wholesale services in relation to filters for industrial and household use; Retail services in relation to suction ventilators; Wholesale services in relation to suction ventilators; Retail services in relation to extraction columns [other than laboratory apparatus]; Wholesale services in relation to extraction columns [other than laboratory apparatus]; Retail services in relation to hoods incorporating extractor fans; Wholesale services in relation to hoods incorporating extractor fans; Retail services in relation to air filters for use as dust extractors in industrial processes; Wholesale services in relation to air filters for use as dust extractors in industrial processes; Retail services in relation to ventilating fans; Wholesale services in relation to ventilating fans; Retail services in relation to hVAC systems (heating, ventilation and air conditioning); Wholesale services in relation to hVAC systems (heating, ventilation and air conditioning); Retail services in relation to industrial ventilation apparatus; Wholesale services in relation to industrial ventilation apparatus; Retail services in relation to apparatus for ventilating; Wholesale services in relation to apparatus for ventilating; Retail services in relation to flues and installations for conveying exhaust gases; Wholesale services in relation to flues and installations for conveying exhaust gases are at least similar to a low degree with the opponent’s Tools [parts of machines].

However, the remaining services are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods sold at retail are dissimilar to the other goods.

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 at least to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

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 expression ‘we clean air’ of the contested sign is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both signs are figurative marks. The earlier mark consists of a white block letter ‘K’ cut vertically by a back line, against a circular black background. The contested sign consists of a white block letter ‘K’ cut diagonally by a black line which form a shape that may call into mind the shape of a stylised extractor hood, against a circular black background and below the wording ‘we clean air.’.

In its judgment of 09/09/2010, C-265/09 P, α, EU:C:2010:508, the Court held that the

distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Although that judgment deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter components in trade marks.

Regarding the distinctive character of a single letter, according to the General Court, a single letter or a single number can be inherently distinctive ((08/05/2012, - 101/11, G, EU: T: 2012: 223, § 50; 06/10/2011, - 176/10, Seven for all mankind, EU: T: 2011: 577, § 36; 05/11/2013, - 378/12, X, EU: T: 2013: 574 , § 37-51). Distinctness has to be appreciated with reference to the products and services in question. The letter ‘K’ has no meaning in relation to the relevant goods and services, therefore it is distinctive.

As mentioned above, at least part of the public may recognise a stylised extractor hood. For that part of the public this shape is considered weak for some of the relevant goods and services which can be related with purifying, sucking and filtering. For the remaining part of the public which will not associate it with any meaning, and the remaining goods and services, it is distinctive. The Opposition Division will continue the examination in relation with the part of the public which will not recognise a stylised extractor hood in the contested sign.

The expression ‘we clean air’ of the contested sign will be perceived by the relevant public as a promotional slogan and conveys information about the goods and services for which protection is sought, e.g. that they are related with air purifying or highlighting the positive aspect of the goods that they are environment friendly. Therefore, this wording has a limited distinctiveness if any. The dot at the end of the wording is non-distinctive as it will be perceived as a mere punctuation mark and cannot indicate the commercial origin.

The marks have has no element that could be considered clearly more dominant than other elements, although in the contested sign the expression ‘we clean air.’ Is placed in a secondary position below the letter ‘K ‘ that will catch first the consumer’s attention.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (or from the top to the bottom), which makes the part placed at the left of the sign (the initial part or the top) the one that first catches the attention of the reader.

Visually, the signs coincide in existence of the letter ‘K’. Both letters ‘K’ are stylized in very similar ways, namely a white block letter ‘K’ positioned in a black circle. The different position of the back cutting line in the letter ‘K’ it is visually not sufficiently prominent in order to distract the consumer from the important similarities in the depiction of the letter ‘K’. However, the key point is how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylizations and draw comparisons between them (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 49). Furthermore, the expression ‘we clean air’ which is placed in secondary position and has a limited distinctiveness, if any, and the dot is non-distinctive.

Therefore, the signs are visually similar to an average degree.

Aurally, both signs consist in the depiction of the single letter ‘K’ and will be pronounced accordingly. The pronunciation differs in the sound of the expression ‘we clean air’ of the contested sign which has a limited distinctness, if any.

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. both signs refer to the same letter in the alphabet they are conceptually similar to an average degree.

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). 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).

Also, the global assessment of likelihood of confusion implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods and services covered. Accordingly, a lesser degree of similarity between these 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

The marks are visually, aurally and conceptually similar to an average degree.

The public will perceive the letter ‘K’ as an essential element of the contested sign despite the presence of the wording ‘we clain air.’ (which is has a limited distinctiveness and is placed in secondary position) and will undoubtedly attract the consumers’ attention.

Furthermore, the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (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 public will not necessarily see the two trade marks at the same time, with the result that they will not be compared directly and the comparison will instead be based on their imperfect recollection. Therefore the public will rather memorize the rough features of the signs which consist of a white block letter ‘K’ cut by a line within a circular black background. The differences in the graphic stylisation of the line such as the direction in which it is oriented or the contour it has, are minor elements that the relevant public is not likely to remember over time (17.04.2008, T 389/03, Pelican, EU:T:2008:114, § 79). The main difference between the signs consists of the additional wording ‘we clean air.’ in the contested sign which however is not sufficient to counteract the striking similarities consisting of the overall similar depiction of the letter K’, especially taking into account that this wording is placed in secondary position and has a limited distinctiveness, if any.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the examined 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 and services found to be at least similar to the goods of the earlier trade mark. In the present case, it is considered that the similarities between the signs are sufficient to compensate the low degree of similarity of some of the goods and services.

The rest of the contested goods and services 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 and 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

Aldo BLASI

Francesca CANGERI

Andrea VALISA

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.