OPPOSITION Nо B 3 113 019

 

Koolair, S.A., Polígono Industrial, 2 La Fuensanta, parcelas 42-45, 28936 Mostoles (Madrid), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Disterm - Distribuição de Equipamentos de Climatização S.A, Estrada da Moita Negra, Nº 453 Boleiros, 2495-558 Fátima, Portugal (applicant), represented by João Miguel Viana Rodrigues, Rua Cadetes de Toledo Lote 5B Nº 8, P-6000-156 Castelo Branco, Portugal (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 113 019 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 169 512 is rejected in its entirety.

 

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

 

REASONS

 

On 03/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 169 512 ‘Nipon Coolair’ (word mark). The opposition is based on European Union trade mark registration No 1 030 105, (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

 

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

 

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply.

The contested goods are the following:

 

Class 11: Filters for air conditioning; fans [air-conditioning]; air-conditioning apparatus; domestic air conditioning installations; electric air conditioners; mobile air conditioning apparatus; central air conditioning installations; axial fans for air-conditioning; portable air conditioners; valves for air conditioners; window air conditioning apparatus; air conditioning apparatus for ships; hoods for air conditioning apparatus; fans for air conditioning apparatus; window-mounted air conditioning units; evaporators for air conditioners; room air conditioners; central air-conditioning installations [for industrial purposes]; HVAC systems (heating, ventilation and air conditioning); central air conditioning installations for household purposes; air conditioning for data processing rooms; filters for use with apparatus for air conditioning; air conditioning installations for industrial purposes; air conditioning installations for household purposes; air conditioning apparatus for industrial use; air conditioning apparatus for commercial use; humidification apparatus for use with air conditioning apparatus; heating, ventilating, and air conditioning and purification equipment (ambient); heat pumps; heat pumps for energy processing; heating installations; heating frames; heating units; heating apparatus; heating elements; domestic heating utensils; air-conditioning installations; ventilation [air-conditioning] installations and apparatus.

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.

Contrary to the applicant’s opinion, the contested fans [air-conditioning]; axial fans for air-conditioning; fans for air conditioning apparatus; ventilation [air-conditioning] installations and apparatus; heating apparatus; air-conditioning installations; air-conditioning apparatus; heating installations; domestic heating utensils; heating, ventilating, and air conditioning and purification equipment (ambient); HVAC systems (heating, ventilation and air conditioning); domestic air conditioning installations; electric air conditioners; mobile air conditioning apparatus; central air conditioning installations; portable air conditioners; window air conditioning apparatus; air conditioning apparatus for ships; window-mounted air conditioning units; room air conditioners; central air-conditioning installations [for industrial purposes]; central air conditioning installations for household purposes; air conditioning for data processing rooms; air conditioning installations for industrial purposes; air conditioning installations for household purposes; air conditioning apparatus for industrial use; air conditioning apparatus for commercial use; heat pumps; heat pumps for energy processing; heating units; heating elements are included in, or overlap with, the opponent's broad categories of apparatus for heating or apparatus for ventilating respectively. Therefore, they are identical.

The contested humidification apparatus for use with air conditioning apparatus operate by creating water vapor, either by moving air over a water-soaked media or by generating steam. It follows that these contested goods, if they are not included in the opponent’s broad category of apparatus for steam generating, at least overlap with it. Therefore, they are identical.

The contested filters for air conditioning; valves for air conditioners; hoods for air conditioning apparatus; evaporators for air conditioners; filters for use with apparatus for air conditioning are similar to the opponent's apparatus for ventilating because they can coincide in end user, distribution channels and producer. Moreover, they are complementary.

The contested heating frames are at least similar to the opponent's apparatus for heating because they can at least coincide in end user, distribution channels and producer.

b) Relevant public — degree of attention

 

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

 

In the present case, the goods found to be identical or (at least) similar are directed at the public at large and at business customers with specific professional knowledge or expertise like installers of air conditioning and heating systems.

 

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.

 

c) The signs

 

	Nipon Coolair
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).

 

Although the element ‘COOLAIR’ of the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the contested sign will be perceived as composed of the verbal elements ‘Nipon’, ‘Cool’ and ‘air’.

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.

 

At least the element ‘COOLAIR’ of the contested mark is directly descriptive for most of the relevant goods (i.e. those related to air conditioning) for the English-speaking part of the public, due to its meaning merely indicating that those goods are intended to provide air of or at a fairly low temperature. Nevertheless, this element will not be perceived as directly descriptive by the non-English-speaking part of the relevant public, such as the Romanian-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

 

As far the earlier mark is concerned, it will be perceived as composed of the verbal elements ‘KOOL’ and ‘AIR’ due to the use of the black and white fonts.

It is not excluded that the relevant public on which the analysis is focused will perceive the element ‘AIR’ in both signs since it is very close to the Romanian word ‘aer’ and thus associate it with ‘aer condiționat’, ‘a room air ventilation system in order to maintain its normal physical properties’ (information extracted from Dexonline on 28/04/2021 at https://dexonline.ro/definitie/aer). Bering in mind the nature of the relevant goods, this element might allude that the relevant goods are destinated to ventilate, heat or purify the air, and it is, therefore, weak for all the relevant goods.

 

The element ‘COOL’ of the contested sign is used, by the relevant public on which the analysis is focused, as jargon for ‘something great, extraordinary, formidable, amazing’ (information extracted from Dexonline on 28/04/2021 at https://dexonline.ro/definitie/cool). The element ‘KOOL’ of the earlier sign might be perceived as the misspelling of ‘COOL’ due to their identical pronunciation in Romanain. Therefore, these elements will be perceived by the relevant public as laudatory and thus considered weak for all the relevant goods.

The element ‘NIPON’ of the contested sign will be perceived as ‘something that belongs to Japan; from Japan; Japanese’ (information extracted from Dexonline on 28/04/2021 at https://dexonline.ro/definitie/nipon). Therefore, this word will be perceived as a geographical indication of the origin of the relevant goods and, therefore, this element is non-distinctive for all the goods.

Although the combination ‘COOLAIR’ of the contested sign and ‘KOOL AIR’ of the earlier mark are not directly and immediately descriptive in relation to the relevant goods, they do, however, have a certain allusive connotation as it could be understood as an indication that the air (produced by the relevant goods) is extraordinary. Therefore, even when considered as a whole, these verbal elements have a below average degree of distinctiveness. Nevertheless, bearing in mind the remaining element’s lack of distinctiveness in the contested sign, it is still the most distinctive element.

The figurative element of the earlier mark, consisting of the several horizontal lines, is of a purely decorative nature and, therefore, less distinctive. Moreover, the typeface in which the earlier mark is written is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the elements it embellishes.

The earlier mark has no element that could be considered clearly more dominant (visually more eye-catching) than other elements. 

The applicant claims that the contested mark is always used with its graphic element/image in which the word ‘NIPON’ is the logo and ‘COOLAIR’ is the signature, namely as or . The Opposition Division observes that the contested mark was applied for registration in its verbal form in which there are no dominant elements, and, therefore, it cannot be concluded that the verbal element ‘COOLAIR’ is subordinated to the verbal element ‘NIPON’. The signs must be compared as registered and applied for and not as they may be used by the parties.

Visually, the signs coincide in the sequence of letters ‘*OOLAIR’ in the only verbal element of the earlier mark and the most distinctive element of the contested sign. However, they differ in the letter ‘K’ of the single verbal element of the earlier mark and ‘C’ of the second verbal element of the contested mark. They also differ in the figurative element and typeface of the earlier mark (found to be of decorative nature and with a limited impact on the consumer) and the additional verbal element ‘NIPON’ of the contested mark (found non-distinctive).

 

Therefore, the signs are visually similar to a below average degree.

 

Aurally, the sound of the letters ‘K’ and ‘C’ are pronounced identically by the relevant public on which the analysis is focused, and, therefore, the pronunciation of the signs coincides in the sound of the letters ‛COOLAIR’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NIPON’ of the contested mark, which have no counterparts in the earlier mark, but which concerns a non-distinctive element.

 

Therefore, the signs are aurally to at least an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. The signs will be associated with the same concept conveyed by the verbal elements ‘KOOL AIR’ and ‘COOLAIR’ respectively as explained above, whereas the contested sign will also be associated with the concept conveyed by the additional word ‘NIPON’, which is however non-distinctive. Taking into account all the verbal elements’ degrees of distinctiveness (as described above), the signs are conceptually similar to at least 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the goods.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical or (at least) similar and target the general public and the specialised public, who possess a degree of attention that may vary from average to high. 

The distinctiveness of the earlier mark must be seen as below average for all the goods. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T-72/08, smartWings, EU:T:2010:395, §63; 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

For the relevant public on which the analysis is focused, the signs are visually similar to a below-average degree, due to the common letters ‘OOLAIR’, placed in the same positions in the signs. Aurally and conceptually they are similar to at least an average 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). 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).

 

Taking all the above into account, the Opposition Division considers that the differences between the signs – which are only concentrated visually in a letter which is aurally pronounced identically and in an additional non-distinctive element of the contested mark and of less importance and decorative nature of the earlier mark – are not sufficient to outweigh the visual, aural and conceptual similarities between them. Consequently, the relevant public, when encountering the signs in relation to similar and identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

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 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). In the present case, the relevant consumer might believe that the contested goods are a new line of the opponent with goods made in Japan.

In its observations, the applicant argues that it owns one registration with the word ‘NIPON COOLAIR’ in the Portugal, which coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier mark upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier mark concerned and the mark at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. The applicant did not submit any evidence of coexistence in the market, and even less in the relevant market for which the assessment has been undertaken, namely Romania.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the Romanian-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 EUTM registration No 1 030 105. 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

 

 

Sam GYLLING

Francesca DRAGOSTIN

Inés GARCÍA LLEDÓ

 

 

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.