OPPOSITION Nо B 3 128 751

 

Colorex Comércio E Desenvolvimento De Produtos Ltda., Rua Deputado Vicente Penido, No. 6, 02064-120 Vila Guilherme,, Brazil (opponent), represented by Jonas Rechtsanwaltsgesellschaft Mbh, Hohenstaufenring 62, 50674 Köln, Germany (professional representative) 

 

a g a i n s t

 

Ennio Rigo, Via Contea 57, 30033 Noale, Italy and Nadio Marconato, Via Ferrara 10, 35010 Trebaseleghe, Italy (applicants).

On 11/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 128 751 is partially upheld, namely for the following contested goods:

 

Class 11: Cooking, heating, cooling and preservation equipment for food and beverages   Class 21: Household utensils for cleaning, brushes; articles for the care of clothing and footwear; cosmetic and toilet utensils; tableware, cookware and containers; aquaria and vivaria; non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; pet paw cleaners, non-electric; rings for birds; small animal feeders; bird baths not being structures; bird baths; goldfish bowls; litter boxes for pets; pet feeding bowls, automatic; pet drinking bowls; plastic containers for dispensing food to pets; plastic containers for dispensing drink to pets; dog food scoops; animal activated animal feeders; animal-activated pet feeders; non-mechanized animal feeders; electronic pet feeders; filters for use in cat litter pans; pet feeding and drinking bowls; bird feeders in the nature of containers; bird feeders for feeding caged birds; bird feeders; bird feeders for feeding birds in the wild; litter for domestic animals; automatic litter boxes for pets; pet grooming glove; animal grooming gloves; cages for household pets; bird cages for domestic birds; cages of metal for domestic use; wire cages for household pets; pet feeding bowls; plastics trays for use as litter trays for cats; cat litter pans; litter trays for birds; birdcages; toothbrushes for animals; currycombs; deshedding brushes for pets; brushes for pets; fur brushes for animals; animal bristles [brushware]; containers for bird food; perches for bird cages; combs for use on domestic animals; combs for animals; de-shedding combs for pets; litter scoops for use with pet animals; scoops for the disposal of animals excrement; scoops for the disposal of pet waste.

2.

European Union trade mark application No 18 242 915 is rejected for all the above goods. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 18/08/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 242 915 ‘MARINOX’ (word mark). The opposition is based on European Union trade mark registration No 5 597 216, ‘MARINEX’ (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 21: Houseware, kitchenware, dining set, baking pan, salad recipient, mugs, plates, cups, dessert cups, platters, cup saucers, glasses, kitchen molds, bowl sets, plate sets, dessert sets, glass jars, glass pots, coffee sets, tea sets, platter covers, pot covers, mold covers, butter recipients, vessels, feijoada recipients, tureen (soup bowl), tureen covers, pizzas molds, sugar recipients, ice bucket, domestic trays, plate bases, glass recipients for kitchen use.

Class 35: Commercialization, importation and exportation of houseware, kitchenware, dining set, baking pan, salad recipient, mugs, plates, cups, dessert cups, platters, cup saucers, glasses, kitchen molds, bowl sets, plate sets, dessert sets, glass jars, glass pots, coffee sets, tea sets, platter covers, pot covers, mold covers, butter recipients, vessels, feijoada recipients, tureen (soup bowl), tureen covers, pizzas molds, sugar recipients, ice bucket, domestic trays, plate bases, glass recipients for kitchen use.

The contested goods and services are the following:

Class 11: Regulating and safety accessories for water and gas installations; Cooking, heating, cooling and preservation equipment, for food and beverages; Sun tanning appliances; Heating, ventilating, and air conditioning and purification equipment (ambient); Refrigerating and freezing equipment; Burners, boilers and heaters; Fireplaces; Flues and installations for conveying exhaust gases; Igniters; Lighting and lighting reflectors; Filters for industrial and household use; Drying installations; Nuclear installations; Industrial treatment installations; Sanitary installations, water supply and sanitation equipment; Personal heating and drying implements.

Class 21: Household utensils for cleaning, brushes and brush-making materials; Articles for the care of clothing and footwear; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Cosmetic and toilet utensils; Tableware, cookware and containers; Unworked and semi-worked glass, not specified for use; Aquaria and vivaria; Devices for pest and vermin control; Drinking troughs; Non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; Animal activated livestock waterers; Watering troughs for cattle; Drinking troughs for poultry; Poultry rings; Pet paw cleaners, non-electric; Rings for birds; Small animal feeders; Bird baths not being structures; Bird baths; Goldfish bowls; Litter boxes for pets; Pet feeding bowls, automatic; Pet drinking bowls; Plastic containers for dispensing food to pets; Plastic containers for dispensing drink to pets; Dog food scoops; Animal activated animal feeders; Animal-activated pet feeders; Non-mechanized animal feeders; Electronic pet feeders; Filters for use in cat litter pans; Metal pans for cattle; Nest eggs, artificial; Feeding troughs; Pet feeding and drinking bowls; Bird feeders in the nature of containers; Bird feeders for feeding caged birds; Bird feeders; Poultry troughs; Mangers for sheep; Mangers for cows; Pig troughs; Bird feeders for feeding birds in the wild; Mangers for horses; Animal activated livestock feeders; Feeding troughs for livestock; Mangers for animals; Feeding troughs of metal for cattle; Litter for domestic animals; Automatic litter boxes for pets; Pet grooming glove; Animal grooming gloves; Cages for household pets; Bird cages for domestic birds; Cages of metal for domestic use; Wire cages for household pets; Pet feeding bowls; Plastics trays for use as litter trays for cats; Cat litter pans; Litter trays for birds; Birdcages; Toothbrushes for animals; Currycombs; Brushes for grooming horses; Deshedding brushes for pets; Mane brushes [horse combs]; Horse brushes of wire; Horse brushes; Brushes for pets; Fur brushes for animals; Ultrasonic bird repellers; Animal bristles [brushware]; Containers for bird food; Horse combs; Perches for bird cages; Combs for use on domestic animals; Combs for animals; De-shedding combs for pets; Litter scoops for use with pet animals; Scoops for the disposal of animals excrement; Scoops for the disposal of pet waste.

Class 37: Rental of tools, plant and equipment for construction, demolition, cleaning and maintenance; Extermination, disinfection and pest control; Extraction of natural resources; Building, construction and demolition; Assembling [installation] of shelving; Assembling [installation] of machine plant; Servicing of industrial boilers; Erection of formwork for restoration and maintenance; Erection of formwork for civil engineering construction; Erection of formwork for building and construction; Erection of signs; Providing information relating to the repair or maintenance of printing machines; Providing information relating to the repair or maintenance of power generators; Providing information relating to the repair or maintenance of signboards; Providing information relating to the repair or maintenance of automobiles; Providing information relating to the repair or maintenance of gasoline station equipment; Providing information relating to the installation of machinery; Providing information relating to the repair or maintenance of painting machines and apparatus; Providing information relating to the repair or maintenance of construction machines and apparatus; Providing information relating to the repair or maintenance of metalworking machines and tools; Provision of information, advice and consultancy relating to cleaning; Installation of sanitary apparatus; Medical apparatus installation; Installation of security and safety equipment; Repair information; Installation of interior partitions for buildings; Installation of industrial plant; Installation of racks; Installation of shelving; Installing fencing; Machinery installation, maintenance and repair; Installation, repair and maintenance radiators for motors and engines; Maintenance of consumer electric appliances; Repair of electronic apparatus; Renovation of machinery; Plant refurbishment; Interior refurbishment of buildings; Repair of metalworking machines and apparatus; Maintenance and repair of presses for processing metals; Maintenance and repair of compressors; Repair of tools; Maintenance and repair of electronic installations; Repair or maintenance of metalworking machines and tools; Tinkering; Reconditioning of industrial machinery; Welding for repair purposes; Electrical wiring services; Tube maintenance services; Artificial snow-making services; Fence erection services; Apartment refurbishment services; Machinery retrofit and conversion services; Industrial cleaning services; Buffing and polishing; Painting and decorating services; Rustproofing; Anti-corrosion treatment; Painting and varnishing; Mechanic services; Spray painting of metals.

Class 40: Air and water conditioning and purification; Duplication of audio and video recordings; Slaughtering; Rental of equipment for the treatment and transformation of materials, for energy production and for custom manufacturing; Energy production; Printing, and photographic and cinematographic development; Food and beverage treatment; Assembly of products for others; Engraving of dies; Custom manufacture of metal hardware; Custom manufacture of furniture; Custom manufacture of molded components; Custom manufacture of steel construction elements; Metal stamping.

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 11

The opponent argues that most of the contested goods in this Class are identical to the opponent’s goods in Class 21. However, the Opposition Division notes that, by definition, there cannot be identity between goods in different classes. Therefore, this argument of the opponent must be dismissed.

The contested cooking, heating, cooling and preservation equipment for food and beverages are similar to the opponent’s kitchenware in Class 21 as they usually coincide in producer, relevant public and distribution channels.

All the remaining goods in this Class do not share any relevant point in common with the opponent’s goods in Class 21 and services in Class 35. The contested goods and the opponent goods and services have a different nature, purpose, and are not distributed through the same trade channels. Moreover, they are neither complementary nor in competition.

Contested goods in Class 21

The contested goldfish bowls; pet feeding bowls, automatic; pet drinking bowls; pet feeding and drinking bowls; pet feeding bowls are included in the opponent’s bowl sets. Consequently, they are identical.

Furthermore, the contested aquaria and vivaria; non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; pet paw cleaners, non-electric; rings for birds; small animal feeders; bird baths not being structures; bird baths; litter boxes for pets; plastic containers for dispensing food to pets; plastic containers for dispensing drink to pets; dog food scoops; animal activated animal feeders; animal-activated pet feeders; non-mechanized animal feeders; electronic pet feeders; filters for use in cat litter pans; bird feeders in the nature of containers; bird feeders for feeding caged birds; bird feeders; bird feeders for feeding birds in the wild; litter for domestic animals; automatic litter boxes for pets; pet grooming glove; animal grooming gloves; cages for household pets; bird cages for domestic birds; cages of metal for domestic use; wire cages for household pets; plastics trays for use as litter trays for cats; cat litter pans; litter trays for birds; birdcages; toothbrushes for animals; currycombs; deshedding brushes for pets; brushes for pets; fur brushes for animals; animal bristles [brushware]; containers for bird food; perches for bird cages; combs for use on domestic animals; combs for animals; de-shedding combs for pets; litter scoops for use with pet animals; scoops for the disposal of animals excrement; scoops for the disposal of pet waste are all goods belonging to the market sector of pet articles and accessories. Given that the opponent’s bowl sets cover products potentially belonging to the same sector (such as the ones found identical before), it cannot be excluded that the contested goods would coincide in numerous relevant criteria such as their purpose and method of use and for the majority of them they – at least – target the same end user and are being sold through the same channels of distribution, such as pet shops. Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that all the aforementioned contested goods are at least similar to a low degree to the opponent’s goods.

The contested household utensils for cleaning, brushes; articles for the care of clothing and footwear; cosmetic and toilet utensils; tableware, cookware and containers are at least similar to the opponent’s houseware, kitchenware, dining set, baking pan, salad recipient, mugs, plates, cups, dessert cups, platters, cup saucers, glasses, kitchen molds, bowl sets, plate sets, dessert sets, glass jars, glass pots, coffee sets, tea sets, platter covers, pot covers, mold covers, butter recipients, vessels, feijoada recipients, tureen (soup bowl), tureen covers, pizzas molds, sugar recipients, ice bucket, domestic trays, plate bases, glass recipients for kitchen use as they coincide at least in producers, relevant public and distribution channels.

On the other hand, the contested devices for pest and vermin control; drinking troughs; animal activated livestock waterers; watering troughs for cattle; drinking troughs for poultry; poultry rings; metal pans for cattle; nest eggs, artificial; feeding troughs; poultry troughs; mangers for sheep; mangers for cows; pig troughs; mangers for horses; animal activated livestock feeders; feeding troughs for livestock; feeding troughs of metal for cattle; brushes for grooming horses; mane brushes [horse combs]; horse brushes of wire; horse brushes; ultrasonic bird repellers; horse combs target very different publics (such as farmers and horse breeders or people that do horse riding) and as such they are sold in very different places, belonging to a different sector in the market. For the same reasons, the contested goods have nothing in common with the opponent’s services in Class 35. Therefore, they are dissimilar.

The contested statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class serve a decorative purpose. The opponent’s goods in Class 21 and the services in Class 35 concern various household, kitchen goods as well as import-export services or retail of the aforesaid goods. Although the contested goods and the opponent’s goods can be made of the same materials, this does not lead to a finding of similarity. Furthermore, these goods and services are neither complementary nor necessarily in competition. They differ in nature, purpose and method of use, are commonly distributed through different channels and do not originate from the same manufacturers. It follows that they must be considered dissimilar.

The contested brush-making materials; unworked and semi-worked glass, not specified for use are both raw materials either for making brushes or for making glass goods. The mere fact that they may be used for manufacturing the opponent’s goods is not sufficient in itself to establish that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T‑270/10, KARRA / KARA et al., EU:T:2012:212, § 53). Furthermore, they are not complementary on the ground that one is manufactured with the other, and raw materials are generally intended for use in industry rather than for direct purchase by the final consumer. Consequently, the contested goods have nothing relevant in common with the opponent’s goods in Classes 21 and the services in Class 35, which concern various household, kitchen goods as well as to import-export services or retail of goods which belong to a completely different market sector than the contested goods. Therefore, they are dissimilar.

Contested services in Class 37 and 40

The contested services in Class 37 are essentially related to the maintenance, repair or installation of different kinds of products. The contested services in Class 40 essentially relate to the treatment and transformation of different things and products.

Neither of these services in Class 37 and 40 shares any relevant point in common with the opponent’s goods in Class 21 and services in Class 35. They have a different purpose, are directed at a different public, and are distributed through different distribution channels. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

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. The degree of attention is considered average.

 

c) The signs and the distinctiveness of the earlier mark

 

MARINEX	MARINOX
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).

Both signs are word marks neither of which has a meaning for the relevant public and, therefore, both are distinctive of the goods in question. Being word marks they have no dominant elements.

Moreover, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, its overall distinctiveness is deemed normal.

Visually and aurally the signs consist of the same letters/sounds save for the different penultimate letter, being ‘E’ in the earlier mark and ‘O’ in the contested sign. Therefore, the signs are highly similar, both visually and aurally.

Conceptually, as neither of the sign has a meaning for the relevant public, the conceptual comparison is not possible and, thus will not influence the assessment

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

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).

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. The signs have been found to be visually and phonetically highly similar with no semantic assessment possible.

The goods and services are partly similar to varying degree and partly dissimilar. They are directed at the public at large for which the degree of attention is average. The earlier mark has normal distinctive character.

The signs are almost identical, apart from their penultimate (vowel) letter, namely the vowels ‘E’ and ‘O’ respectively. Given the high degree of visual and aural similarity between the signs, they are likely to be confused by the relevant public.

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).

In view of the above, it can be concluded that the said sole difference between the signs is manifestly outweighed by the strong similarities between them. Therefore, there is a likelihood of confusion on the part of the relevant public and the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 597 216.

The remaining contested goods and services 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 services 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

 

 

Michele M. BENEDETTI - ALOISI

Enrico D’ERRICO

Kieran HENEGHAN

 

 

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.