OPPOSITION Nо B 3 116 350

 

Geberit International AG, Schachenstr. 77, 8645 Jona, Switzerland (opponent), represented by Pinsent Masons (Ireland), 1 Windmill Lane, DO2 F206 Dublin, Ireland (professional representative) 

 

a g a i n s t

 

Conform Badmöbel GmbH, Brennbichl 60, 6460 Imst, Austria (applicant), represented by CHG Czernich Haidlen Gast & Partner Rechtsanwälte GmbH, Bozner Platz 4, Palais Hauser, 6020 Innsbruck, Austria (professional representative).

On 20/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 116 350 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 185 812 is rejected in its entirety.

 

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

 

REASONS

 

On 17/04/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 185 812 for the word mark ‘IKONA’. The opposition is based on European Union trade mark registration No 7 602 162, for the word mark ‘iCon’. 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 the following:

 

Class 11: Sanitary ceramics, namely washstands, double washstands, washstand columns and washstand semi-columns, being parts of sanitary installations; hand washbasins, seated washbasins (wall-mounted and stand-alone models), toilets (wall-mounted and stand-alone models), water cisterns, urinals; bath tub handles; bath tubs with and without whirlpool systems, including of acrylic, shower trays, including of acrylic; lavatory seats; stink traps, drainage fittings; shower cubicles, shower screens, shower fittings and shower systems comprising the aforesaid goods.

Class 20: Trays, bathroom furniture, mirrors; accessories for bath tubs, namely neck cushions.

Class 21: Accessories, namely glass holders with and without glasses, soap holders, soap dishes, towel racks (not of precious metal), towel rings (not of precious metal), towel hooks (not of precious metal), bath towel holders (not of precious metal), toilet brush sets.

The contested goods are the following:

 

Class 11: Sanitary installations, water supply and sanitation equipment; clean chambers [sanitary installations]; hot water boilers; water mixing appliances; water control valves.

Class 20: Furniture and furnishings; mirrors (silvered glass); racks being furniture made of non-metallic materials; shelves for storage; storage drawers [furniture]; bathroom vanity units incorporating basins; bathroom vanities [furniture]; bathroom fittings in the nature of furniture; bathroom cupboards; shower chairs; transparent doors of glass for furniture; fitted furniture; freestanding towel racks; freestanding partitions [furniture]; three-mirror dressing tables; glass furniture; doors made of glass for furniture; glass cabinets.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods 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.

Furthermore, an interpretation of the wording of the list of goods of the opponent is required to determine the scope of protection of these goods. The term ‘including’, used in the opponent’s lists of goods, indicates that the specific goods 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). However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 11

The contested sanitary installations, water supply and sanitation equipment; clean chambers [sanitary installations]; hot water boilers; water mixing appliances; water control valves are either identical to at least one of the opponent’s goods in the same class (because, as a broader category, they either include the opponent’s goods or at least overlap with them, e.g. in this sense, the contested sanitary installations include the opponent’s shower cubicles) or they are at least similar to at least one of them because they can coincide in distribution channels and points of sale, can be directed at the same consumers and are likely to come from the same undertaking. Furthermore, some of them can be complementary to one another.

Contested goods in Class 20

The contested goods in Class 20 are all furniture items and furnishings, including for specific use in bathrooms. As such, they are therefore either identical to the opponent’s earlier goods in the same class (this is because they are either included in the opponent’s broader category - e.g. the contested mirrors [silvered glass] and bathroom cupboards are included in the earlier mirrors and bathroom furniture, respectively -; or because they overlap with the opponent’s goods: e.g. the contested fitted furniture overlap with the opponent’s bathroom furniture: since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are thus considered identical to the opponent’s goods) or they are at least similar, as they have the same purpose, and target the same public. Moreover, these goods are often sold in the same specialized outlets, and may be complementary.

 

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 in question.

In the present case, the relevant goods found to be identical or at least similar are directed at the public at large and a professional public.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and the price of some of the goods.

c) The signs

 

iCon	IKONA
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, Sabel, 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.

Both signs are word marks consisting of a single verbal element.

The earlier trade mark, is an English noun, meaning, inter alia, something or someone which is important as a symbol or a particular thing (information extracted from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/icon_1). The term has close counterparts in many EU languages, e.g. icona (Italian); icono (Spanish); icône (French); Ikone (German); icoon (Dutch); ikon (Swedish and Danish); ikona (Bulgarian, Czech, Latvian, Polish and Slovak) and ikono (Slovenian). Therefore, it is likely to be understood with the abovementioned meaning not only in these countries but throughout the EU.

As regards word marks, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters, unless a word mark combines these letters in a manner that departs from the usual way of writing (irregular capitalisation), which may justify breaking down a single word into components. In the present case, although the earlier mark contains irregular capitalisation, the verbal element ‘iCon’, will be perceived as a whole by the relevant public under analysis and will not be mentally dissected into two separate elements. Therefore, the use of the capital letter ‘C’ in the earlier mark does not introduce any relevant semantic difference in the present case. Taking into account the above, the impact of the earlier mark’s irregular capitalisation on the comparison of the signs in this case is considered limited (28/01/2016, T-640/13 - Sto/OHMI - Fixit Trockenmörtel Holding (CRETEO), EU:T:2016:38, § 35-38).

The term ‘IKONA’ of the contested sign is the Bulgarian, Czech, Latvian, Polish and Slovak word for the English term ‘ICON’ and very close to its equivalents in other languages of the EU, such as in Italian, as seen above.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public, for which the signs will evoke the same concept and, while not being directly descriptive, may evoke a positive characteristic of the goods (such as a higher quality or particular design), thus being of somewhat weaker distinctiveness.

It must be borne in mind, however, that the above considerations regarding the distinctiveness of the elements under comparison are rather immaterial, since due to the almost identically contained term, ‘IC/KON(A)’, the signs are both on equal footing as concerns their distinctiveness. Consequently, it is the few differences between them that are decisive for the comparison of signs in the present case.

It follows from the above that, conceptually, the use of the capital letter in the earlier mark, the use of the letter ‘K’ instead of ‘C’ in the middle of the contested sign and the additional letter ‘-A- at the end of the contested sign, have little or no weight in the conceptual comparison. Therefore, the signs are conceptually similar at least to a high degree.

Visually and aurally, the signs coincide in the sequence of the (sound of the) letters ‘I-C/K-O-N-*’. Although they differ in the additional letter ‘A’ at the end of the contested sign, and in the letter ‘C’/’K’ in their middle (with no aural impact), as well as in the use of the capital letter ‘C’ in the earlier mark (with no aural impact either), it is important to note that these few differentiating elements will have a much lesser visual impact than the shared letter sequence. Therefore, the signs are visually similar to at least an average degree and aurally similar to a very high degree, as the only phonetical difference results from the fact that the contested sign contains the sound of the letter ‘A’ at the end, but this difference is not a major one (and might even go unnoticed since the beginning of the signs is exactly the same).

Indeed, 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

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. However, the opponent claimed that its earlier mark would have a high degree of inherent distinctiveness because ‘as a whole it is meaningless for any of the goods’. However, in any event it should be noted that when an earlier mark is not descriptive or otherwise non-distinctive the mark is considered to have no more than a normal degree of distinctiveness. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, as seen above, the earlier trade mark may be allusive to a characteristic of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark is considered somewhat lower than average.

e) Global assessment, other arguments and conclusion

 

As concluded above, the contested goods are identical or at least similar to those of the opponent. The signs show striking similarities from an aural and conceptual perspective, and on the visual level they are similar to at least an average degree. The distinctiveness of the earlier mark is somewhat lower than average. The degree of attention will vary from average to high.

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).

Admittedly, there are a few differences between the signs. However, their impact is not such as to enable a part of the public, whether the public at large or professionals, to safely distinguish between them in the context of identical or similar goods, including where their degree of attention is enhanced when making the purchase. 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).

In the present case, the earlier mark is almost entirely included in the contested sign, and the sole differences between them lies in their middle letter, ‘C’ vs ‘K’ (and the irregular capitalisation of the letter ‘C’ in the earlier mark) which are however pronounced identically, as well as in the additional letter ‘-A’ at the end of the contested sign. It follows that the high degrees of similarity between the marks are sufficient for it to be concluded that a substantial part of the relevant public, whether average or professional, could reasonably believe that the goods found to be identical or similar, originated from the same undertaking or economically linked undertakings, even when the degree of attention is high.

Although the distinctiveness of the earlier mark is held to be lower than average, and there may be a higher degree of attention, indeed this cannot prevent the opposition against the relevant goods from succeeding. While the distinctiveness must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving a higher degree of attention, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and the identity or similarities between the goods. Evaluating likelihood of confusion indeed implies some interdependence between the relevant factors (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; ). The Court already emphasised on several previous occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70; see also more recently, 06/06/2013, T-411/12, Pharmastreet, EU:T:2013:304, § 21, 41-42, where a likelihood of confusion was found between two-one word marks of similar length – as is the case in the present proceedings – despite the very weak coinciding component and in spite of the high degree of attention as well as low similarity between the goods and services. This finding reinforces the conclusion of likelihood of confusion in the case at hand in which the goods are identical or at least similar).

Considering all the above, the Opposition Division concludes that the differences are insufficient to counteract the similarities and that there is a likelihood of confusion at least on the part of the public taken into account. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore the opposition is well founded on the basis of the opponent’s earlier mark. It follows that the contested sign 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

 

 

Claudia ATTINÁ

Edith Elisabeth VAN DEN EEDE

Chiara BORACE

 

 

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.