OPPOSITION No B 2 139 130
Meyer Manufacturing Company Limited, 382 Kwun Tong Road, Kwun Tong, Kowloon, Hong Kong (opponent), represented by Melanie Fiedler, Bergstr. 11, 49170 Hagen a.T.W., Germany (professional representative)
a g a i n s t
Eduard Meier GmbH, Brienner Str. 10, 80333 München, Germany (applicant), represented by SKW Schwarz Rechtsanwälte, Wittelsbacherplatz 1, 80333 München, Germany (professional representative).
On 05/11/2018, the Opposition Division takes the following
1. Opposition No B 2 139 130 is upheld for all the contested goods, namely:
Class 8: Cutlery; table forks and spoons (including in precious metals); hunting knives.
2. European Union trade mark application No 11 101 318 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 11 101 318 for the word mark ‘ED MEIER’, namely against some of the goods in Class 8. The opposition is based on European Union trade mark registration No 5 200 878 for the word mark ‘MEYER’. 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 8: Hand tools and hand instruments, scissors, clippers; all the aforesaid goods for household or domestic use, and not including any goods for outdoor, garden or horticultural use; cutlery, knives, forks and spoons; hand tools and instruments for food preparation.
The contested goods are the following:
Class 8: Cutlery; table forks and spoons (including in precious metals); hunting knives.
The term ‘including’, used in the applicant’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 (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
Cutlery is identically contained in both lists of goods.
The contested table forks (including in precious metals) are included in the broad category of the opponent’s forks. Therefore, they are identical.
The contested spoons (including in precious metals) are included in the broad category of the opponent’s spoons. Therefore, they are identical.
The contested hunting knives are included in the broad category of the opponent’s knives. Therefore, they are identical.
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 are directed at the public at large.
The degree of attention is average.
c) The signs
Earlier trade mark
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 earlier mark is the single-word mark ‘MEYER’, whereas the contested sign is composed of the words ‘ED MEIER’. ‘MEYER’ and ‘MEIER’ will be perceived as surnames of Anglo-Saxon origin. ‘ED’, taking into account that it appears before ‘MEIER’, will be understood as a male given name, as a diminutive of ‘EDMOND’, ‘EDWARD’ or ‘EDMUND’.
In principle, surnames have a higher intrinsic value as indicators of the origin of goods and services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas having the same surname (provided it is not common in the relevant territory) could imply the existence of some link between people (the same person or a family link).
In accordance with case-law, it is appropriate to take account of whether the name concerned is unusual or, on the contrary, very common, which is likely to have an effect on its distinctive character (24/06/2010, C‑51/09 P, Barbara Becker, EU:C:2010:368, § 36). In the present case, and as correctly pointed out by the applicant, the names ‘MEYER’ ‘and ‘MEIER’ are widely known in the European Union, but are more frequently encountered in Germany, France and the United Kingdom. However, it is also important to bear in mind that, among those territories, the United Kingdom is the country where ‘ED’ is the most widespread given name (or at least nickname).
In its observations, the applicant argues that the elements ‘MEYER’ and ‘MEIER’ have a low degree of distinctiveness, given that many trade marks include these (or similar) surnames. In support of its argument, the applicant refers to several trade mark registrations in the European Union (seven trade marks).
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include these surnames. Under these circumstances, the applicant’s claims must be set aside.
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.
Furthermore and as previously explained, the Opposition Division agrees with the applicant’s claim that these surnames are very common, in particular in the abovementioned countries. Nevertheless, although the surnames are not uncommon (as demonstrated by the excerpts submitted by the applicant), they are certainly less common that the first name ‘ED’, so that, for the public in the United Kingdom, the surname still has a stronger impact than the common first name.
For the reasons given above, the Opposition Division will focus the comparison of the signs on the country where the diminutive ‘ED’ is particularly common, namely the United Kingdom.
‘MEYER’ and ‘ED MEIER’ have an average degree of distinctiveness in relation to the relevant goods.
Visually, the signs coincide in the string of letters ‘ME*ER’. They differ in the additional element ‘ED’ of the contested sign, and in the differing middle letters ‘I’ in the most significant element of the contested sign and ‘Y’ in the sole element of the earlier mark.
It should be borne in mind that the more significant elements in the marks, namely ‘MEIER’ and ‘MEYER’, are highly similar, as four letters out of five are identical. It is settled case-law that differences stemming from the middle parts of words are of less importance than those stemming from the beginnings or endings of the words (see, for similar reasoning, 01/02/2012, T‑353/09, mtronix, EU:T:2012:40, § 42). In the present case, the beginnings and endings of the most significant elements of the signs are identical.
Therefore, taking into account the foregoing, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ME(Y/I)ER’, as ‘Y’ and ‘I’ would be pronounced in the same way. The pronunciation of the signs differs in the sound of the additional element of the contested sign, ‘ED’. Nevertheless, the earlier mark and the most significant element of the contested sign are aurally identical.
Therefore, the degree of aural similarity between the signs is high.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The two marks are composed of a highly similar Anglo-Saxon surname, and the addition of the forename ‘ED’ in the contested sign does not alter that conclusion. The commercial origins of the goods covered by the marks at issue will be perceived by the relevant consumers as being associated with people bearing similar surnames. The signs are therefore conceptually similar to an average degree.
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
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).
In the present case, the conflicting signs are visually and conceptually similar to an average degree and aurally similar to a high degree. The contested goods are identical to the opponent’s goods.
The earlier mark has an average degree of distinctiveness. The relevant public will display an average degree of attention.
As explained above, the similarity between the marks results from the high degree of similarity between the surnames included in them, namely ‘MEIER’ and ‘MEYER’. The additional element, ‘ED’, in the contested sign is not sufficient to prevent any likelihood of confusion between the signs, as detailed above in the section c) of this decision.
Moreover, it is consistent case-law that, when the goods covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).
Considering all the above, there is a likelihood of confusion on the part of the part of the public in the United Kingdom. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 200 878. It follows that the contested trade mark must be rejected for all the contested goods.
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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Julie, Marie-Charlotte HAMEL
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.