OPPOSITION Nо B 3 126 279

 

Cleafin GmbH, Grenzstraße 19, 79576 Weil am Rhein, Germany (opponent), represented by Mirko Schober, Gadderbaumer Str. 14, 33602 Bielefeld, Germany (professional representative) 

 

a g a i n s t

 

Clea Smart Technology Co., Ltd., Floor 4, No.1719-17, Huishan Road, Huishan Economic Development District, 214000 Wuxi City, Jiangsu, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas, S.L., C/ Alcalá, 26, 28014 Madrid, Spain (professional representative).

On 08/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 126 279 is partially upheld, namely for the following contested goods:

 

	Class 7: Vacuum cleaners; brushes for vacuum cleaners; dust removing installations for cleaning purposes; electric steam mops for household purposes; kitchen machines, electric; washing apparatus; machines and apparatus for wax-polishing, electric; vacuum cleaner attachments for disseminating perfumes and disinfectants.
2.	European Union trade mark application No 18 208 511 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 17/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 208 511 (figurative mark). The opposition is based on European Union trade mark registration No 13 702 691, ‘cleafin’ (word 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 and services

 

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

Class 7: Attrition machines for cleaning, in particular floor cleaning apparatus, vacuum cleaners, carpet cleaners.

Class 21: Cups; drinking bottles for sports; cleaning utensils, small hand operated household and kitchen utensils (not of precious metal or coated therewith); household or kitchen containers (not of precious metal or coated therewith), in particular buckets; spray bottles and spray cans of plastic and/or metal for cleaning preparations; hand-operated implements and containers of plastic and/or metal (not of precious metal or coated therewith) for cleaning buildings and windows (cleaning apparatus and articles for cleaning purposes); measuring containers for moistening manual floor-cleaning equipment, the aforesaid goods being accessories for manual floor-cleaning equipment; brooms; squeegees; hand brushes; brushes, toilet fittings, consisting of brushes and stands; feather dusters (hand-operated cleaning apparatus for ships); feather brooms; radiator cleaning apparatus (hand-operated); skins of chamois for cleaning; wiping cloths; hand-operated wiping and cleaning equipment for windows, walls, ceilings and floors, in particular window squeegees, holders for window-squeegee covers, squeegees, window and floor scrapers, ceiling and wall brushes and hand-operated waxing appliances; replacement runners for window, wall, ceiling and floor squeegees; rubber wiper blades for cleaning apparatus; fastening clips being accessories for hand-operated wiping and cleaning equipment, including for brushes and sponges; joints of plastic being parts of telescopic rods, handle pieces of plastic being parts of telescopic rods, all being for hand-operated cleaning apparatus; window, floor, ceiling and wall squeegee covers; poles which allow continuous water flow, for hand-operated cleaning apparatus, consisting of aluminium poles with brass or plastic connectors; chamois leathers; micro-fibre cleaning cloths; mop wringers; sponges; specially adapted cases for holding all hand-operated implements and utensils for cleaning, in particular for cleaning windows; straps for the aforesaid cases, holsters (included in class 21); paper pickers; multi-purpose grabbers for holding objects (hand-operated cleaning apparatus); fitted holders for brushes and implements for cleaning, in particular for cleaning windows; parts for the aforesaid goods, included in class 21; fitted holders, in particular of corrosion-resistant plastic, for steel blades for cleaning glass and surfaces; steel blades for cleaning smooth surfaces.

Class 35: Retailing and/or wholesaling, including via the internet, in relating to cleaning preparations and cleaning apparatus; organizational and business advice for franchise concepts; business consultancy relating to franchise businesses.

The contested goods are the following:

Class 7: Vacuum cleaners; brushes for vacuum cleaners; dust removing installations for cleaning purposes; electric steam mops for household purposes; kitchen machines, electric; air pumps; washing apparatus; hand-held tools, other than hand-operated; machines and apparatus for wax-polishing, electric; vacuum cleaner attachments for disseminating perfumes and disinfectants.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

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.

Contested goods in Class 7

The contested vacuum cleaners are included in the opponent's broad category of attrition machines for cleaning, in particular floor cleaning apparatus, vacuum cleaners, carpet cleaners. Therefore, they are identical.

The contested dust removing installations for cleaning purposes; electric steam mops for household purposes; washing apparatus are similar to a high degree to the opponent's attrition machines for cleaning, in particular floor cleaning apparatus, vacuum cleaners, carpet cleaners because they coincide in producer, purpose, relevant public and distribution channels.

The contested brushes for vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants are similar to a high degree to the opponent's attrition machines for cleaning, in particular floor cleaning apparatus, vacuum cleaners, Carpet cleaners because, although they have a different purpose and nature, being brushes for vacuum cleaners a component of vacuum cleaners, they not only coincide in producer, relevant public and distribution channels, but they are also complementary.

The contested kitchen machines, electric are similar to the opponent's small hand operated household and kitchen utensils (not of precious metal or coated therewith) in Class 21 because they coincide in relevant public and distribution channels and they can also be in competition.

The contested machines and apparatus for wax-polishing, electric are at least similar to the opponent's attrition machines for cleaning, in particular floor cleaning apparatus, vacuum cleaners, carpet cleaners because they coincide in producer, relevant public and distribution channels.

However, the contested air pumps; hand-held tools, other than hand-operated are dissimilar to all goods covered by the opponent's right because they have nothing in common. 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 or similar to varying degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

 

The degree of attention is considered to be average.

 

 

c) The signs

cleafin
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 earlier mark is a word mark, ‘cleafin’. The contested sign is a figurative sign, consisting of the letters ‘clea’ depicted using fanciful black lower case letters.

The signs have no meaning nor suggest any semantic content in certain territories, for instance where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom both signs are meaningless, such as the Italian- and Spanish-speaking parts of the public, and are, consequently, normally distinctive.

Visually, the signs coincide in the letters ‘clea’, which are the only letters of the contested sign and the first four letters of the earlier mark, although in the case of the contested sign they are depicted using a fanciful typeface, although not particularly original.

The signs differ in the last three letters of the earlier mark, namely ‘-fin‘, which have no counterpart in the contested sign.

As regards the presence of the ending ʻ-finʼ within the earlier sign, it must be reiterated that such a difference is diminished by its position, since the differing letters are placed at the end of the contested sign what decreases its influence (17/03/2004, T-183/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64, 65).

Furthermore, as already pointed out, there are three differing letters in the earlier sign while there are the four common letters ʻcleaʼ at the beginning.

To conclude the comparison from the visual perspective, the signs in question are similar to an average degree.

Aurally, the signs match in the pronunciation of their common verbal element ‘clea’ and differ in the articulation of the ending of the earlier sign ‘-fin’ which has no counterpart in the contested mark. It must be borne in mind that the earlier mark contains the only word element of the contested sign. Furthermore, having divided the mark applied for and the earlier mark into syllables, the word element ‘clea’ is pronounced in the same way in the mark applied for and in the earlier mark.

Therefore, the marks are aurally similar to an average degree as well.

Conceptually, 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

According to the case-law of the Court of Justice, the risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of con-fusion.

A likelihood of confusion on the part of the public must be assessed 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). That global assessment implies some interdependence between the factors taken into account and in particular, the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; Lloyd Schuhfabrik, § 19).

For the purpose of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect.

The target public of the goods and services in question comprises both the public at large and professionals with an average level of attentiveness.

It must be kept in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38; 16/07/2014, T 324/13, Femivia, EU:T:2014:672, § 48).

The earlier mark has no meaning for any of the goods in question from the perspective of the relevant public and consists of the distinctive verbal element ‘cleafin’. The inherent distinctiveness of the earlier mark as a whole must be seen as normal.

Taking into account the visual and aural similarity of the signs to an average degree as well as the identity and similarity of some of the goods in question and the average degree of inherent distinctiveness of the earlier mark, there exists a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR in particular for the part of the public for whom the signs are meaningless, such as the Italian and Spanish-speaking parts of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

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

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

 

 

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

 

 

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.