OPPOSITION Nо B 3 130 894

 

Teka Industrial, S.A., Cajo, 17, 39011 Santander (Cantabria), Spain (opponent), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Shenzhen Maadi Technology Co., Ltd., 17b, Taibang Bldg., Keji South Tenth Rd., Yuehai St., Nanshan Dist., Shenzhen, People’s Republic of China (applicant), represented by Asternery S.L, Calle Nuñez Morgado 5, 28036 Madrid, Spain (professional representative).

On 26/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 130 894 is upheld for all the contested goods.
2.	European Union trade mark application No 18 250 910 is rejected in its entirety.
3.	The applicant bears the costs, fixed at EUR 620.

REASONS

 

On 15/09/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 250 910 (figurative mark). The opposition is based on, inter alia,  European Union trade mark registration No 18 168 827 (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.

 

The opposition is based on two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No. 18 168 827 (figurative mark).

 

a) The goods

 

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

 

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, in particular for use in commercial kitchens; Electric and gas apparatus for kitchen and industrial kitchen installations, namely cookers, bread ovens, hobs, cooking ranges, steam apparatus, microwave ovens, plate warmers, extractor hoods, refrigeration and freezing apparatus, cooking and roasting apparatus, and automatic cooking and roasting machines, deep fryers, pressure cookers, pressure cooking saucepans, automatic fermentation apparatus, blast chillers; Electrical and gas apparatus for kitchen and industrial kitchen installations, namely blast freezers, cooling tables, grills (kitchen appliances), banquet systems; Systems for distributing plates and systems for storing and serving foodstuffs and prepared dishes, formed of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating or water supply purposes or fermentation apparatus or deep fryers or pressure cookers or pressure cooking saucepans; Systems for distributing plates and systems for storing and serving foods and prepared dishes, formed of automatic fermentation apparatus or blast chillers or blast freezers or refrigerators and freezers or cooling tables or gas and electrical apparatus; Parts and accessories for the aforesaid goods; Anti-splash tap nozzles; Bath fittings; Taps [cocks, spigots] faucets [Am] for pipes; Feeding apparatus for heating boilers; Filters for drinking water; Fire bars; Ovens (Shaped fittings for -); Kiln furniture [supports]; Loading apparatus for furnaces; Mixer taps for water pipes; Oven fittings made of fireclay; Regulating accessories for water apparatus and pipes; Safety accessories for water or gas apparatus and pipes; Framework of metal for ovens; Taps [faucets]; Toilet seats; Washers for water taps; Water-pipes for sanitary installations; Hot air bath fittings; Regulating and safety accessories for water apparatus; Extractor hoods for kitchens; Ventilation hoods for stoves; Adjustable coated baffle grease filters [parts of cooker hoods]; Filters [parts of household or industrial installations]; Dish dryers.

The contested goods are the following:

 

Class 11: Germicidal lamps for purifying air; Ultraviolet ray lamps, not for medical purposes; Air deodorizing apparatus; Air dryers; Air-conditioning apparatus; Air filtering installations; Air sterilizers; Disinfection apparatus; Water sterilisers; Ionization apparatus for the treatment of air or water; Pasteurizers; Sterilisers; Deodorizing apparatus, not for personal use; Book sterilization apparatus; Disinfectant apparatus for medical purposes.

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

 

The term  ‘in particular’, used in the opponent’s list 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 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 ultraviolet ray lamps, not for medical purposes; air deodorizing apparatus; air filtering installations; air sterilizers; ionization apparatus for the treatment of air or water; deodorizing apparatus, not for personal use are all air and water treatment equipment which are included in the broad category, or overlap with, the opponent’s apparatus for sanitary purposes in particular for use in commercial kitchens aimed, among other purposes, to remove germs in the ambient air and/or water. Therefore, these goods are identical.

The contested germicidal lamps for purifying air is a 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. It can also be used to produce ozone for water disinfection. These goods are included in the broad category, or overlap with, the opponent’s apparatus for sanitary purposes in particular for use in commercial kitchens. Therefore, they are identical.

The contested air dryers; air-conditioning apparatus are included in the broad category, or overlap with, the opponent’s apparatus for drying/ventilating purposes in particular for use in commercial kitchens. Therefore, these goods are identical.

The contested disinfection apparatus; water sterilisers; sterilisers; book sterilization apparatus; disinfectant apparatus for medical purposes and the opponent’s apparatus for sanitary purposes in particular for use in commercial kitchens have a similar purpose since any of them can be used in order to disinfect items and the provision of clean drinking water. These goods can be manufactured by the same undertaking, distributed through the same distribution channels and addressed to the same public. Therefore, these goods are similar.

The contested pasteurizers are apparatus used to pasteurise milk and other liquids, that is to say, to treat with heat every particle of the product in order to destroy pathogens and extend shelf life. The opponent’s apparatus for cooking purposes, in particular for use in commercial kitchens have an identical nature and purpose, since they can also apply the action of heat into edible liquids by boiling. Therefore, these goods might be in clear competition and reply to identical needs. Therefore, they are similar.

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 and similar are directed at business customers with specific professional knowledge or expertise but also to some extent to the public at large.

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

 

c) The signs

 

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 Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Dutch-speaking part of the public. This is because ‘TEKA’ and ‘HEKA’ are meaningless terms at least for this part of the public and the distinctiveness of these terms is therefore average.

The signs in question include a certain stylisation, albeit fairly standard, of their fonts, which is somehow more visible in the contested sign where some connecting parts of the lines are uncompleted. Nevertheless, both signs include rather standard similar bold typefaces and the public would have no difficulty in identifying the verbal parts clearly in each of them as the most distinctive parts of the respective signs.

Visually and aurally, both signs are figurative marks consisting of a single term of four letters; the signs coincide in the sequence of the letters/phonemes ‘*EKA’ (i.e. three out of a total of four letters) positioned identically. However, they differ in the signs’ first letter/phoneme ‘T’ versus ‘H’, as well as in some differences in their font, which in any case is fairly standard and does not not detract the consumer’s attention from the elements they embellish.

According to case-law, in relatively short marks, as those at hand, the central elements are as important as the elements at the beginning and end of the sign (20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39). Moreover, the importance given to initial parts cannot apply to all cases as it calls into question the principle that the comparison of the signs must take account of the overall impression given by them since the average consumer normally perceives a mark as a whole and does not examine its individual details (25/09/2018, T‑182/17, AKANTO / KANTOS, EU:T:2018:592,§ 32).

The Court has confirmed that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (29/01/2020, T-239/19, Encanto, EU:T:2020:12, § 27; 25/03/2009, T-402/07, Arcol II, EU:T:2009:85, § 83). Although here the signs are not purely word signs, their lettering almost correspond to a bold standard script.

The difference at the first letters/phonemes ‘T’ and ‘H’ will not go unnoticed for consumers. Having said that, these letters have some visual similarities at their lines and the remaining letters are identical and positioned at the same rank. Considering that, apart from the different beginnings, the signs comprise an identical correlation of letters ‘E-K-A’ and that both are aurally reproduced in two syllables, it is considered that they also have a very similar rhythm and intonation.

Therefore, the signs are visually and aurally similar to an above-average degree.

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 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 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).

The goods are partly identical and partly similar. They target the professional public and to some extent also the public at large with a degree of attention which can vary from average to high. The earlier mark has a normal degree of distinctiveness.

As explained in section c) of this decision, the signs in dispute share three out of their four letters placed in the same position. Furthermore, they have an identical length, rhythm and intonation and share also their vowel sequence. The difference in one letter, as well as the very minor differences regarding the typeface are insufficient to offset the aforementioned commonalities, taking also into account that neither of the signs convey any concept that could assist the relevant public in differentiating one from the other.

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).

In the light of the above, it is highly conceivable that the relevant consumers, even those with a high degree of attention, relying on their imperfect recollection, are likely to confuse the signs at issue and believe that the identical or similar goods come from the same undertaking or, as the case may be, economically linked undertakings.

The Opposition Division finds that there is a likelihood of confusion on the French‑ and Dutch‑speaking part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 168 827 (figurative mark). 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 that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

 

 

Marta GARCÍA COLLADO

Julia GARCÍA MURILLO

Chantal VAN RIEL

 

 

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.