OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 244 351
Unigeo a.s., Místecká 258, 72002 Ostrava-Hrabová, Czech Republic (opponent), represented by Propatent - Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative).
a g a i n s t
Unigro Limited, Gay Dawn Offices Valley Road, Fawkham Kent DA3 8LY, United Kingdom (applicant), represented by J. A. Kemp, 14 South Square Gray's Inn, London WC1R 5J, United Kingdom (professional representative).
On 18/12/2015, the Opposition Division takes the following
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against part of the goods and services,
namely against all the
in Classes 37 and 42
Community trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 services on which the opposition is based are the following:
Class 37: Construction of engineering and industrial buildings, redevelopment and sanitation works.
Class 42: Project activity in capital construction, counselling, tutorial and critizing activity in geology, ecologically, mining, engineering and civil engineering.
The contested services are the following:
Class 37: Construction of controlled environment buildings and chambers, plant growth chambers, glasshouses and greenhouses, clean rooms; maintenance, repair and refurbishment services relating to the aforesaid structures.
Class 42: Design of controlled environment buildings and chambers and controlled environment rooms, plant growth chambers, greenhouses, glasshouses, clean rooms; design of heating and cooling systems for controlled environments.
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 services in Class 37
The contested construction of controlled environment buildings and chambers, plant growth chambers, glasshouses and greenhouses, clean rooms relates to the building of the specific structures mentioned with a specific and controlled environment. They are aimed at the agriculture field, for example for growing plants, as well as the scientific or medical areas, for which clean rooms with a low level of pollutants are often used for research or operations in a neutral environment or for the protection and safeguarding of goods and patients. As the aforesaid constructions can be included in the broad category of engineering and industrial buildings given that the latter also includes agricultural engineering, the applicant’s aforementioned contested services are included in the construction of engineering and industrial buildings from the earlier right. Therefore they must be considered identical.
The contested maintenance, repair and refurbishment services relating to the aforesaid structures consists not only in fixing problems and technical issues that could arise with the controlled environment of the buildings and structures abovementioned but also to clean, restore or renovate them. As such, they are identical to the applicant’s redevelopment and sanitation works albeit worded differently.
Contested services in Class 42
The contested design of controlled environment buildings and chambers and controlled environment rooms, plant growth chambers, greenhouses, glasshouses, clean rooms consists in the conception of plans for buildings and structures with a controlled environment. On the other hand, the opponent’s project activity in capital construction consists in architectural planning services particularly those regarding financial issues (capital needed, estimates and so forth) There is a close link between the conflicting services given that the opponent’s services are preliminary and interconnected with the contested services. Hence, the aforesaid services can be offered and performed together. Thus, they can originate from the same undertakings and be offered to the same end users through the same channels. Therefore the services must be considered similar.
The contested design of heating and cooling systems for controlled environments consists in the conception of plans for mechanisms enabling temperatures in a controlled environment to be monitored. As such, they appear particularly essential to the proper conception of controlled environment buildings and structures for which temperature is usually a fundamental feature that needs to be controlled. Therefore, the design of such systems can be crucial in the planning of building constructions. Hence, such services can be offered together with the applicant’s project activity in capital construction. Thus, they can originate from the same undertakings and be offered to the same end users through the same channels. Therefore the services must be considered similar.
Earlier trade mark
The relevant territory is Czech Republic.
The earlier sign is a word mark consisting of the six lettered word “UNIGEO”.
The contested sign is a word mark consisting of the six lettered word “UNIGRO”.
Visually, both signs are six lettered word marks. They share the same beginning “UNIG-“ as well as their final letter “O”. Consequently, they share the sequence of letters “U-N-I-G-O” placed in the same order. However, they differ in their fifth letter, respectively “E” for the earlier mark and “R” for the contested mark.
Aurally, the pronunciation of the signs coincides in the sound of the letters “U-N-I-G-O” present identically in both marks, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters “E” for the earlier mark and “R” for the contested mark. Moreover the signs are likely to be pronounced according to distinct rhythms: “U/NI/GE/O” for the earlier sign and “U/NI/GRO” for the contested sign.
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.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 services found to be identical and similar are services of design, construction and maintenance of specialised buildings and structures with a controlled environment. As seen above, they can be used in different specific fields, such as the agricultural area, where greenhouses or glasshouses are used for growing plants, or the scientific or medical areas, for which clean rooms with a low level of pollutants are often used for research or operations in a neutral environment as well as for the protection and safeguarding of goods and patients. Therefore these services are directed at business customers with specific professional knowledge or expertise.
That being said, it is not excluded that products such as greenhouses, glasshouses or plant growth chambers could be directed to the general public, for example to install them in a private garden. In this latter case, the relevant services could be directed at the public at large.
As the relevant services can be expensive, especially for the general public, the degree of attention is considered to vary from average to high.
Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
As a preliminary remark, it must be reminded that the relevant public is the Czech public at large as well as professionals of specific fields such as the agriculture, scientific or medical areas with a degree of attention varying from average to high.
In the present case, the goods have been found identical or similar.
As for the signs, they appear visually similar given that they share five identical letters out of six.
In this regard, it must be borne in mind that for word marks, the visual comparison is based on an analysis of the number and sequence of the letters, the position of the coinciding letters, the number of words and the structure of the signs. As the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details, small differences in the letters are often not sufficient to exclude a finding of visual similarity, particularly when the signs have a common structure.
Hence, 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, which is the case here as the trade marks at issue both contain the sequence of letters “UNIG-O”.
Therefore, as they only differ by virtue of their fifth letter, respectively “E” for the earlier mark and “R” for the contested mark, the signs appear visually highly similar.
Likewise, as the pronunciation of the signs coincides in the sound of this common sequence of letters “U-N-I-G-O” the trade marks in question appear orally highly similar as well, despite the distinct sound of the fifth letter and different rhythms according to the Czech pronunciation of the marks.
Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgment of 15/12/2009, T-412/08 ‘Trubion’, para. 40, judgment of 25/03/2009 T-109/07 ‘Spa Therapy’, para. 30). Consequently, the visual and oral differences arising from the change of letter at the ending of the marks at issue will only have a limited impact on the present global assessment.
Moreover, it must be reminded that neither sign has a meaning for the relevant public. They will therefore appear as fanciful or foreign terms.
It should also be borne in mind that neither of the signs has a more (or less) distinctive or dominant component and the earlier sign as a whole has an average degree of distinctive character.
Furthermore, although the relevant public might pay a particular attention to the trade marks at issue, it must be borne in mind that according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
Considering all the above and taking into account the identity of services as well as the high visual and oral similarity of the signs, there is a likelihood of confusion on the part of the Czech public.
Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 203 650. It follows that the contested trade mark must be rejected for all the contested services.
According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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
Cristina CRESPO MOLTÓ
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.