OPPOSITION Nо B 3 123 595

 

Ebm-Papst Mulfingen GmbH & Co. KG, Bachmühle 2, 74673 Mulfingen, Germany (opponent), represented by Staeger & Sperling Partg MbB, Sonnenstr. 19, 80331 Munich, Germany (professional representative) 

 

a g a i n s t

 

Shu Hsien Bellson Chou, 429 Wanta Road, Taipei, Taiwan, Province of China (applicant), represented by Kbz Żuradzka & Wspólnicy Adwokaci I Radcy Prawni Sp. K., Ul. PCK 6/7, 40-057 Katowice, Poland (professional representative).

On 12/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 123 595 is partially upheld, namely for the following contested goods:

 

	Class 11: Drying apparatus; air filtering installations; disinfectant apparatus; air deodorizing apparatus; air sterilizers; air purifiers; air-conditioning apparatus; USB-powered humidifiers for household use; filters for air conditioning; refrigerating apparatus and machines; steam generating installations; deodorizing apparatus, not for personal use.
2.	European Union trade mark application No 18 214 517 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 09/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 214 517 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 17 986 108, ‘AxiAir’ (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.

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 17 986 108.

 

a) The goods

 

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

Class 7: Motors, electric, other than for land vehicles; Electric motor-driven fans, ventilating fans and blowing machines, all included in class 7; Parts for the aforesaid goods, In particular ventilating fan wheels, ventilating fan blades, Fan wheels, Fan blades, Fan blades, Blower housings, Inflow nozzles, outflow nozzles, diffuser housings.

Class 11: Ventilation and air movement equipment; Electric motor-driven fans, ventilating fans and blowing machines; Parts for the aforesaid goods, in particular ventilating fan wheels, ventilating fan blades, fan wheels, fan blades, blowing machine wheels, blowing machine housings, inflow nozzles, outflow nozzles, diffuser housings; Fittings for electric motor-driven fans, ventilating fans and blowing machines, namely screens, protective grilles, filter frames, inflow nozzles, outflow nozzles, diffuser housings, wall rings, the aforesaid goods of plastic and/or of renewable raw materials.

The contested goods are the following:

Class 11: Drying apparatus; air filtering installations; pocket warmers; blankets, electric, not for medical purposes; electrically heated clothing; USB-powered hand warmers; disinfectant apparatus; air deodorizing apparatus; air sterilizers; air purifiers; germicidal lamps for purifying air; air-conditioning apparatus; USB-powered humidifiers for household use; filters for air conditioning; heating cushions, electric, not for medical purposes; Fumigation apparatus, not for medical purposes; footwarmers, electric or non-electric; refrigerating apparatus and machines; steam generating installations; deodorizing apparatus, not for personal use. 

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 contested drying apparatus; air filtering installations; disinfectant apparatus; air deodorizing apparatus; air sterilizers; air purifiers; air-conditioning apparatus; USB-powered humidifiers for household use; filters for air conditioning; refrigerating apparatus and machines; steam generating installations; deodorizing apparatus, not for personal use comprise a broad range of apparatus which can be used for drying, filtering, disinfecting, purifying, cooling or conditioning air. These goods are at least similar with the opponent’s ventilation and air movement equipment as they share, at least, producer, relevant public and distribution channels. Furthermore, some contested goods such as, for instance, air filtering installations are also complementary with the opponent’s ventilation and air movement equipment.

The contested, pocket warmers; blankets, electric, not for medical purposes; electrically heated clothing; USB-powered hand warmers; germicidal lamps for purifying air; heating cushions, electric, not for medical purposes; Fumigation apparatus, not for medical purposes; footwarmers, electric or non-electric are very specific products that have different methods of use, distribution channels, relevant publics and producers with the opponent’s goods in Class 7 and 11. In addition, they are not complementary or in competition. Therefore, they are dissimilar. As far as the contested germicidal lamps for purifying air it must be clarified that it is special type of lamp which produces ultraviolet (UVC) light. This short-wave ultraviolet light disrupts DNA base pairing causing formation of pyrimidine dimers and leads to the inactivation of bacteria, viruses, and protozoa. The opponent’s ventilation and air movement equipment comprise devices that lets fresh air into a room or building and lets old or dirty air out. Their purposes are different and they are not produced by the same companies because different techniques are used to produce germicidal lamps. They do not coincide in their distribution channels and do not necessarily target the same consumers.

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 at least similar are directed at the public at large and as well as business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods purchased.

 

c) The signs

 

AxiAir
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 sign’s initial letters ‘AXI’ and ‘AVI’ have no meaning for the Spanish-speaking consumers. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

It cannot be excluded that part of the consumers will perceive the sign’s final letters ‘AIR’ as conveying the meaning of ‘mixture of gases which forms the Earth's atmosphere’ as consumers might have general knowledge of English or, rather, this word recalls the quite similar Spanish equivalent ‘aire’. This takes into account that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Furthermore, in the earlier mark the component ‘AIR’ is separated by the initial letters from a capital ‘A’, this facilitate such dissection.

For this part of the public, the degree of distinctiveness of the element ‘AIR’ is weak since it might recall the element treated or processed by the relevant goods.

However, it cannot be excluded either that another part of the consumers will perceive the sign’s verbal elements ‘AxiAir’ and ‘AVIAIR’ as meaningless and therefore distinctive. It is unlikely that the relevant consumers will perceive the sign ‘AVIAIR’ as a combination of the words ‘Aviation’ and ‘Air’ as the applicant claims.

The Opposition Division finds proper to firstly take into account in the below comparison the part of the public for which the sign’s final element ‘AIR’ is meaningful and weak.

The contested sign has no element that can be considered more dominant (visually eye catching).

 

Visually and aurally, the signs coincide in the sequence of letters ‘A*IAIR’ (and their sounds) whereas they differ in the sign’s second respective letters ‘X’ and ‘V’ (and their sounds). The signs also differ in the contested application’s slight stylization which is rather basic and not capable to camouflage the letters that the signs have in common and in the earlier mark’s capitalization.

Therefore, and taking into account the above principles and assessment on the degree of distinctiveness of the sign’s elements they 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. As both signs coincide in the meaning of ‘AIR’ they are conceptually similar to a lower than average degree, since this element is weak in relation to the relevant goods.  

 

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found partly at least similar and partly dissimilar. They target both the general and professionals consumers whose will pay a degree of attention that can vary from average to high.

The signs have been found visually and aurally similar to an average degree insofar as they coincide in the sequence of letters ‘A*IAIR’. Furthermore, the signs coincide in the meaning – although weak – of the common component ‘AIR’.

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Specifically, the signs merely differ in their respective second letters and in their stylization / capitalization. However, they share the same number of letters, five out of six identical and placed in the same order. This contributes to generate a similar overall impression. Consequently, the relevant public, when encountering the signs in relation to at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings. This, despite the high degree of attention paid in relation to some of them.

This is valid, a fortiori, for the part of the public for which the signs do not convey any clear meaning as in this case they will coincide only in distinctive elements, thus increasing their visual and aural similarities whereas the conceptual aspects remains neutral.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and 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 at least similar 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.

The opponent has also based its opposition on European Union trade mark registration No 15 326 648, RadiAir.

  

The other earlier right invoked by the opponent is less similar to the contested mark.  This is because it contains a rather different initial i.e. ‘RADI’ which will increase the difference with contested trade mark. Moreover, it covers the same  scope of the goods in Class 7 and 11. In addition, this trademark also cover fittings for electric motor-driven fans, ventilating fans and blowing machines, namely screens, protective grilles, filter frames, inflow nozzles, outflow nozzles, diffuser housings, wall rings, the aforesaid goods of plastic and/or of renewable raw materials in Class 20. These goods do not have anything in common with any of the contested goods that have been found dissimilar in the above comparison. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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

 

 

Claudia ATTINÀ

Aldo BLASI

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.