OPPOSITION No B 3 102 588

Homie B.V., Wagenmakersweg 3, 3449 HV Woerden, Netherlands (opponent), represented by Arnold & Siedsma, Rembrandt Tower, 28th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative)

a g a i n s t

Foshan Shunde Techno Electrical Appliances Co. Ltd, No. 1414, Building 3, Pacific Dingwang Commercial Center, Chihua Community Resident Committee, Chencun Town, Shunde District, Foshan City, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 28/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 588 is upheld for all the contested goods.

2. European Union trade mark application No 18 102 803 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 18 102 803 for the figurative mark . The opposition is based on European Union trade mark registration No 18 061 571 and Benelux trade mark registration No 1 388 346, both for the word mark ‘HOMIE’. 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 18 061 571.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 11: Drying installations; cookers; refrigerating apparatus; refrigerators; deep freezing apparatus; air conditioning apparatus.

The contested goods are the following:

Class 11: Induction cookers; gas burners; kitchen ranges [ovens]; multicookers; cookers; kettles, electric; heating apparatus; oven fittings made of fireclay; heating plates; roasters; heaters for baths; refrigerating cabinets; extractor hoods for kitchens; desiccating apparatus; hot plates.

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.

Cookers is identically contained in both lists of goods.

The contested induction cookers; multicookers are included in the opponent’s broad category of cookers. Therefore, they are identical.

The contested refrigerating cabinets are included in the opponent’s broad category of refrigerating apparatus. Therefore, they are identical.

The contested heating apparatus; heaters for baths overlap with the opponent’s air conditioning apparatus. Therefore, they are identical.

The contested desiccating apparatus are included in, or overlap with, the opponent’s broad category of drying installations. Therefore, they are identical.

The contested gas burners are devices that produce a controlled flame by mixing a fuel gas, such as part of a cooker. The contested kitchen ranges [ovens]; oven fittings made of fireclay; heating plates; roasters; extractor hoods for kitchens; hot plates are cooking and heating equipment for food and beverages and parts thereof. The opponent’s cookers are appliances used for cooking food, typically consisting of an oven, hob, and grill, and powered by gas or electricity. As such, they are at least similar, if not identical, since they at least share the same general purpose of cooking, have the same distribution channels, and can originate from the same or economically linked undertakings.

The contested kettles, electric are small kitchen appliances for boiling liquid, especially water. The opponent’s refrigerating apparatus is a broad category including products such as beverage-cooling apparatus or cool boxes (electric) which are small appliances used to cool liquid. To this extent, they have a similar nature and related purpose (small appliances for heating/cooling liquids) and are used in the kitchen. They have the same distribution channels and are aimed at the same public. Moreover, they can coincide in their producers. Therefore, they are similar.

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.

The goods found to be identical or similar essentially target the public at large. The degree of attention is average.

c) The signs

HOMIE
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 signs are meaningful for the English-speaking part of the public in the relevant territory. In order to take into account the semantic content of these elements in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

The coinciding verbal element ‘homie’ is ‘short for homeboy or homegirl’ (information extracted from Collins Dictionary on 15/01/2021 at https://www.collinsdictionary.com/dictionary/english/homie). This is used in English slang meaning (1) a close friend or (2) a person from one’s home or neighbourhood. Contrary to the applicant’s assertions, these meanings are not descriptive, allusive or otherwise weak for the relevant goods and, therefore, this element is distinctive to an average degree in both signs.

The verbal element ‘Single’ of the contested sign may be perceived, inter alia, as an adjective referring to ‘one thing, and no more than one thing’ or ‘someone who is not married’ (information extracted from Collins Dictionary on 15/01/2021 at https://www.collinsdictionary.com/dictionary/english/single). Consequently, in the context of the contested sign, it will be seen as an adjective or qualifier of the verbal element ‘homie’ meaning either (1) only one ‘homie’ or (2) a ‘homie’ who is single, not married. Either way, it has no meaning in relation to the relevant goods. Therefore, it is distinctive to an average degree.

The contested sign depicts some Chinese characters that will not be understood by the relevant public and will be perceived as mere calligraphic and abstract elements (04/09/2017, R 1780/2016‑5, DEVICE OF CHINESE CHARACTERS (fig.), § 39; 06/08/2019, R 2310/2018‑4, CHINESE CHARACTERS, § 24). As such, they are illegible to the relevant public, who will neither be able to pronounce these elements nor to memorise them as words (06/08/2019, R 2310/2018‑4, CHINESE CHARACTERS, § 25). Moreover, these characters play a secondary role due to their smaller size and position. The stylisation of ‘Single Homie’ is neither elaborate nor sophisticated, at least not in such a way as to have much impact on the consumer. The fact remains that 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). In the present case, the figurative elements will have little influence on the comparison of the signs.

The verbal elements ‘Single’ and ‘Homie’ are co-dominant in the contested sign, as they are the most eye-catching.

Although consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, as the applicant points out, it must be stressed that this argument cannot hold in all cases. It does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them.

When a mark consists exclusively of the earlier mark, to which another word has been added, this is an indication that the two trade marks are similar (04/05/2005, T‑22/04, Westlife, EU:T:2005:160, § 40; 21/01/2015, T‑685/13, BLUECO, EU:T:2015:38, § 33;). The Courts have also consistently held that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 54).

Visually and aurally, the signs coincide in the word/sound of the letters ‛Homie’, which is distinctive, and forms the entire earlier mark and the second verbal element in the contested sign. The signs differ in the word/sound of the letters ‛Single’, present at the beginning of the contested sign and deemed distinctive, which has no counterpart in the earlier mark.

Visually, the signs also differ in the figurative elements of the contested sign (i.e. the stylisation and Chinese characters) which, however, will have a lesser impact, for the reasons given above. The applicant argued that they are depicted in a different case. However, although the contested sign is depicted in title-case letters (and the earlier mark in upper-case letters) this is irrelevant, since the protection that results from the registration of a word mark concerns the word mentioned in the application for registration, and not the specific graphical or stylistic elements accompanying that mark (07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 28). Therefore, the case used by the earlier mark could, in the course of trade, be the same as that used by the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs overlap in the meaning of ‘Homie’, whereas they differ in the concept of the additional verbal element ‘Single’ of the contested sign, which qualifies the coinciding element. Therefore, although this element is distinctive as indicated above, the signs are conceptually similar to a high 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 11 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).

The goods are partly identical and partly similar, and they target the public at large, whose degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and conceptually similar to a high degree, inasmuch as the earlier mark is entirely reproduced in the contested sign. They differ essentially in the additional component ‘Single’ of the contested sign. However, this component will be perceived as an adjective qualifying the following component ‘Homie’, which therefore plays a significant role in the contested sign, despite its secondary position. The additional figurative elements of the contested sign will have a lesser impact. Consequently, the differing elements cannot outweigh the commonalities between the signs and exclude a likelihood of confusion.

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).

Furthermore, 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. Taking into account that the component ‘Single’ in the contested sign is an adjective that qualifies the word ‘Homie’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier 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).

Considering all the above, there is a likelihood of confusion on the part of 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 well founded on the basis of the opponent’s European Union trade mark registration No 18 061 571. It follows that the contested trade mark must be rejected for all the contested goods.

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

Julia GARCÍA MURILLO

Félix ORTUÑO LÓPEZ

María Clara IBÁÑEZ FIORILLO

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.