OPPOSITION No B 3 101 839

Sunnex Products Limited, 20/F, Sunbeam Plaza, 1155 Canton Road, Mong Kok, Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (opponent), represented by Marks & Clerk LLP, Alpha Tower, Suffolk Street, Queensway, B1 1TT Birmingham, United Kingdom (professional representative)

a g a i n s t

Velkoobchod Orion, spol. s r.o., Nedošín 132, 57001 Litomyšl, Czech Republic (applicant), represented by Michal Novák, Tyršova 231, 57001 Litomyšl, Czech Republic (professional representative).

On 24/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 839 is partially upheld, namely for the following contested goods:

Class 21: Dishes [household utensils]; graters [non-electric household utensils]; household or kitchen utensils; sieves [household utensils]; graters; tableware, other than knives, forks and spoons; household utensils for cleaning, brushes; tableware, cookware and containers; glasses [receptacles]; glasses [drinking vessels]; cups; mason jars; basting spoons [cooking utensils]; cutting boards for the kitchen; cooking strainers; cooking pot sets; cooking pots; cookery moulds; kitchen containers; kitchen utensils; cooking utensils, non-electric; combs; sponges.

2. European Union trade mark application No 18 097 900 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 18 097 900 (figurative mark), namely against all the goods in Class 21. The opposition is based on European Union trade mark registration No 6 257 571 ‘ORION’ (word mark) and the United Kingdom non-registered trade mark ‘ORION’. The opponent invoked Article 8(1)(b), Article 8(4) And Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

Class 21: Ceramic tableware; drinking vessels; glass containers; glass tableware, glass stemware; small domestic utensils and containers.

The contested goods are the following:

Class 21: Dishes [household utensils]; graters [non-electric household utensils]; household or kitchen utensils; sieves [household utensils]; graters; tableware, other than knives, forks and spoons; household utensils for cleaning, brushes and brush-making materials; tableware, cookware and containers; glasses [receptacles]; glasses [drinking vessels]; cups; mason jars; basting spoons [cooking utensils]; cutting boards for the kitchen; cooking strainers; cooking pot sets; cooking pots; cookery moulds; kitchen containers; kitchen utensils; cooking utensils, non-electric; combs; sponges.

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.

The contested tableware includes, as a broader category the earlier glass tableware. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested tableware, other than knives, forks and spoons overlap with the earlier glass tableware. Therefore, they are identical.

The contested containers include, as a broader category, the opponent’s glass containers. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested brushes; household utensils for cleaning overlap with small domestic utensils covered by the trade on which the opposition is based. Therefore, they are identical.

The contested dishes [household utensils]; graters [non-electric household utensils]; household utensils; kitchen utensils [listed twice]; sieves [household utensils]; graters; cookware; glasses [receptacles]; cups; mason jars; basting spoons [cooking utensils]; cutting boards for the kitchen; cooking strainers; cooking pot sets; cooking pots; cookery moulds; kitchen containers; cooking utensils, non-electric; combs; sponges are identical to the earlier small domestic utensils and containers because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested glasses [drinking vessels] are included in the broad category of the earlier drinking vessels. Therefore, they are identical.

The contested brush-making materials are dissimilar to all goods covered by the earlier right because they have nothing in common. Brush-making materials are goods used in the production of other goods, and they are therefore aimed at the industry and professionals. On the contrary, the opponent’ goods are finished goods aimed at the general public. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

ORION
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 earlier mark is a word mark, ‘ORION’. The contested sign is a figurative mark composed of the word ‘ORION’, written in fairly standard, lower-case, light blue letters. Underneath, in much smaller letters and under an horizontal light beige thin line, appears the word ‘group’, written in standard white letters. All these element are placed on a rectangular dark blue background.

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 verbal elements of both marks are 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 public.

The word ‘ORION’, which appears in both signs, will be perceived as referring to a Boeotian giant famed as a great hunter, who figures in several tales or a conspicuous constellation near Canis Major containing two first magnitude stars (Betelgeuse and Rigel) and a distant bright emission nebula (the Orion Nebula) associated with a system of giant molecular clouds and star formation (information extracted from Collins English Dictionary on 04/11/2020 at https://www.collinsdictionary.com/dictionary/english/orion). As this word is not related to the relevant goods, it has a normal degree of distinctiveness in both marks.

The word ‘group’ of the contested sign refers to, inter alia, ‘an association of companies under a single ownership and control, consisting of a holding company, subsidiary companies, and sometimes associated companies’ (information extracted from Collins English Dictionary on 04/11/2020 at https://www.collinsdictionary.com/dictionary/english/group). This element is, at most, weak, since it refers to the applicant’s company structure. Furthermore, the thin light beige line and the background in the contested sign is more of a decorative nature and the public will not pay as much attention to this element, which, therefore, has less impact on the overall impression.

In the contested sign, the word ‘ORION’ could be considered clearly more visually dominant (eye-catching) than the other element ‘group’.

Visually, the signs are similar to the extent that they coincide in the word ‘ORION’, which is distinctive in both and dominant in the contested sign, with the only difference being the typefaces and colours used in the contested sign. However, these typefaces, being fairly standard, will not divert the consumer’s attention from the elements they embellish; the same applies to the colours that are used.

The marks differ in the verbal element ‘group’, at most weak and visually secondary in the contested sign and in the figurative elements of the contested sign, the latter being merely decorative.

Furthermore, 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 top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the first verbal element of contested sign coincides with the whole verbal element of the earlier mark is relevant for the comparison.

Therefore, for all the aforementioned reasons and also taking into account the issues of distinctiveness and dominance, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘ORION’, which is present identically in both marks and in the contested sign is the dominant element. The pronunciation differs in the sound of the weak and secondary element ‘group’ of the contested sign, if pronounced.

Therefore, for all the aforementioned reasons and also taking into account the issues of distinctiveness and dominance, the signs are aurally similar to at least a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with an identical meaning on account of the distinctive word ‘ORION’, the signs are conceptually similar to at least a high degree. As the additional meaning of the word ‘group’ is at most weak, this word has a (very) limited impact.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with ceramic tableware; drinking vessels; glass containers; glass tableware, glass stemware; small domestic utensils and containers in Class 21. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Annex A – Witness Statement signed by the opponent’s Export Sales Manager on 09/04/2020 in which it is claimed that the opponent operates in the market since 1972 and exports to more than 70 countries worldwide catering and household products, and in particular uses the mark ‘ORION’ in the European Union since at least the year 2008.

 Exhibit 1: Six pages taken from the opponent’s website containing information about the company’s activities.

 Exhibit 2: Sales figures for the period 2015-2019 regarding sales of ‘Orion goods’ in the United Kingdom, Cyprus, Czech Republic, Greece and Sweden.

 Exhibit 3: Invoices issued by the opponent to clients in the United Kingdom (2), Greece (1), Cyprus (1), Sweden (1), in the period comprised between 08/06/2016 and 17/10/2019. The lists of goods include, inter alia, ‘Orion Whiteware goods’.

 Exhibits 4-5: Extracts from the 2011, 2015 and 2019 catalogues of ‘Orion’ tableware products.

 Exhibit 6: WHOIS extract of the opponent’s domain name sunnex.com.hk.

 Exhibits 7-8: Extracts from the opponent’s webpages.

 Exhibit 9: Four pages of extracts form social media pages in which ‘Orion’ tableware is displayed.

 Exhibit 10: Printouts taken from different European versions of an American e-commerce webpage, including French, German, Italian and Spanish in which ‘Orion’ goods such as cake stands, saucers or butter dishes are offered for purchase.

 Exhibit 11: Several pictures taken at events and fairs in countries such as Germany, Spain or the United Kingdom in the period comprised between the years 2007 and 2019 in which the opponent participated presenting ‘Orion’ goods such as tableware.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, which apparently started at least in 2007, the evidence provides no indications whatsoever in relation to the extent of recognition of ‘ORION’ by the consumers in the European Union.

The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. The opponent could have filed more supporting documentation, for example, declarations made by independent parties attesting to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, independent certifications and awards, and other commercial documents, audits and inspections. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark acquired a high degree of distinctiveness through its use.

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 goods are identical and target the public at large, who will pay an average level of attention. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually, aurally and conceptually similar to at least a high degree.

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).

Taking into account all the circumstances, the coincidence between the most distinctive and/or dominant elements of the marks, also falling at the beginning, where the consumer usually focuses more attention, is clearly counteracting the few differences that lie merely in elements with a limited impact. Consumers will not be able to distinguish between the marks in relation to the goods found to be identical, and will perceive the latter as having the same origin.

The 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 the earlier mark as a sub-brand, a variation of the contested sign, or vice versa (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the English-speaking part of the public. 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 partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.

The Opposition Division will now examine the opposition in relation to the remaining grounds on which the opposition was based, starting with the claim under Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division already concluded that the evidence submitted by the opponent has not demonstrated that the earlier trade mark acquired a high degree of distinctiveness through its use.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on this ground.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is also based on the United Kingdom non-registered trade mark ‘ORION’ used in the course of trade for ceramic tableware; drinking vessels; glass containers; glass tableware, glass stemware; small domestic utensils and containers; mugs; vases; tea and coffee pots; crockery; plates and dishes; condiment sets; trays; porcelain ware.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the United Kingdom non-registered trade mark ‘ORION’. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded insofar as it is based under Article 8(4) EUTMR.

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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PÉREZ BARBER

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.