OPPOSITION Nо B 3 098 786

Sumec Hardware & Tools Co., Ltd., 15/F., 198 Changjiang Road, Nanjing City, Jiangsu Province, People’s Republic of China (opponent), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative)

a g a i n s t

Shenzhen Accompany Technology Co., Ltd., No. 375, Xiangnanruifeng Garden, No. 22, Guimiao Rd, Xuefu Community, Nanshan Street, Nanshan Dist., 518000 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 786 is partially upheld, namely for the following contested goods:

Class 8: Hand tools, hand-operated.

2. European Union trade mark application No 18 120 519 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 18 120 519 (figurative mark), namely against all the goods in Class 8. The opposition is based on European Union trade mark registration No 16 817 686 (figurative mark). The opponent invoked Article 8(1)(a) and (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

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

Class 7: Knives for mowing machines; lawnmowers [machines]; raking machines; engines, other than for land vehicles; chain saws; generators of electricity; pumps [machines]; compressed air machines; snow ploughs; high pressure washers.

The contested goods are the following:

Class 8: Hand tools, hand-operated; electric hair trimmers; electric hair straightening irons; hand implements for hair curling; electric shavers; crimping irons; depilation appliances, electric and non-electric; laser hair removal apparatus, other than for medical purposes; manicure sets, electric.

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 broad category of agricultural, gardening and landscaping tools in Class 8 includes, inter alia, hand tools and hand-operated (tools) such as saws, while the broad category of agricultural, gardening and forestry machines and apparatus in Class 7 includes, inter alia, power operated tools such as chain saws. Hand tools and hand-operated (tools) and chain saws coincide in their purpose (e.g. do-it-yourself and/or gardening) and are in competition. They could be found in the same distribution channels (e.g. do-it-yourself and/or gardening stores) and target the same public. Therefore, contrary to the applicant’s view, the contested hand tools, hand-operated are similar to the opponent’s chain saws. Similarity is also applicable to the broad categories of agricultural, gardening and landscaping tools in Class 8 and agricultural, gardening and forestry machines and apparatus in Class 7, to which the specific goods mentioned above belong.

The earlier mark protects specific goods in relation to agricultural, gardening and forestry machines and apparatus in Class 7, while the remaining contested goods are different types of hand-operated hygienic and beauty implements for humans and animals. Contrary to the opponent’s arguments, these goods are different. They have a different nature and purpose. They are usually manufactured by different undertakings and can be found in different distribution channels. They are neither in competition nor complementary. Therefore, the contested electric hair trimmers; electric hair straightening irons; hand implements for hair curling; electric shavers; crimping irons; depilation appliances, electric and non-electric; laser hair removal apparatus, other than for medical purposes; manicure sets, electric are dissimilar to the opponent’s 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 found to be similar are directed at the public at large (e.g. do-it-yourself enthusiasts) and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. The impact on safety of goods covered by a trade mark (e.g. chain saws, pumps, hand tools and hand-operated) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

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 common and clearly legible element ‘AMIRO’, which is the sole verbal element of both signs, has no meaning for the relevant public. Therefore, they have a normal degree of distinctiveness.

Both signs are depicted in a fanciful, stylised form, which merely plays a decorative role in the signs and will, therefore, hardly catch the consumers’ attention. This includes the depiction of the letter ‘O’ of the earlier mark which might be perceived by parts of the public as resembling an emoji. Contrary to the applicant’s arguments, this depiction will not alter the public’s perception of this element as a letter, since consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case. Moreover, 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).

Neither sign has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sole verbal element ‘AMIRO’ of both signs. However, they differ in the different stylisation of the letters in the signs, which are decorative and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public, and are weak or play a secondary role.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will perceive the meaning of the letter ‘O’ of the earlier mark as explained above (an emoji), the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar

For the other part of the public, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

The contested goods are partly similar and partly dissimilar. The goods found to be similar target the public at large and business customers with specific professional knowledge or expertise, whose degree of attention vary from average to high.

The signs are visually highly similar and aurally identical, on account of their coinciding element, ‘AMIRO’, which is the sole verbal element of both signs. Depending on the perception of the relevant public, the signs are not conceptually similar or the conceptual aspect does not influence the assessment of the similarity of the signs. Although the signs are conceptually not similar for some parts of the public, it has little impact on the overall impression as the conceptual aspect stems from an element of merely decorative nature and of little impact on the consumers’ perception. The difference in stylisation in the signs has less impact on the consumer than the signs’ verbal elements.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant (20/09/2017, C‑673/15 P & C‑674/15 P & C‑675/15 P & C‑676/15 P, DARJEELING (fig) / DARJEELING et al., EU:C:2017:702; 20/09/2017, C‑673/15 P & C‑674/15 P & C‑675/15 P & C 676/15 P, DARJEELING collection de lingerie (fig.) / DARJEELING et al., EU:C:2017:702; 12/12/2019, T‑648/18, Crystal / CRISTAL, EU:T:2019:857; 25/09/2018, T‑435/17, HIPANEMA (fig) / Ipanema (fig.) et al., EU:T:2018:596; 26/09/2014, T‑490/12, Grazia, EU:T:2014:840; 21/01/2019, R 1720/2017‑G, ICEBERG (fig.) / ICEBERG et al.; 11/07/2019, R 2557/2018‑4, Kylie / Kylie et al.; 09/03/2009, R 1221/2006‑4, SCALA / SCALA) are not relevant to the present proceedings because in the present case, the verbal element in each sign is identically contained in both signs, with the sole difference being in the slight stylisation of their letters. On the contrary, the cases quoted by the applicant entail the comparison of signs with additional or different letters, or different stylisations or figurative elements that create a different overall impression of the signs, with dissimilar goods and services in some of the cases.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and 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 similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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.

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

The Opposition Division

Holger KUNZ

Claudia SCHLIE

Christian STEUDTNER

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.