OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 428 236
Warimex Waren-Import Export Handels-GmbH, Auf der Schulmatt 7/1 77743 Neuried, Germany (opponent), represented by Vomberg & Schart, Schulstr. 8 42653,Solingen, Germany (professional representative)
a g a i n s t
Pepper Style By Bisetti S.R.L, Via Nichini NR. 11 28028 Pettenasco, Italy (applicant), represented by Marietti Gislon e Trupiano S.R.L., Via Larga 16 20122, Milan, Italy (professional representative).
2. Community trade mark application No 13 150 024 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods
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 opposition is based on more than one earlier trade mark. For reason of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Community trade mark registration No 11 411 063.
The goods on which the opposition is based are the following:
Class 2: Coatings, namely non-stick coatings of synthetic material for pots and pans.
Class 3: Cleaning, polishing, scouring and abrasive preparations; Stainless steel cleaners; Cleaning cloths impregnated with a cleaning preparation.
Class 7: Vegetable choppers (electrically operated); Whisks, milk frothers, all being electrically operated.
Class 8: Knives, including ceramic knives and antibacterial knives, and cutlery; Forks, Spoons, Tableware, Including barbecue cutlery, steak cutlery; Kitchen slicers (non-electric); Knife blocks (knife holders); Egg slicers (nonelectric); Vegetable choppers (non-electric); Apple corers; Zesters, Zesters.
Class 9: Kitchen weighing scales, Mechanical or Electric.
Class 11: Apparatus for heating, steam generating, cooking, refrigerating or drying; Domestic hot plates, in particular induction hot plates, tea or filter apparatus (electrically operated).
Class 12: Trolleys.
Class 16: Printed matter, Including cookery books.
Class 21: Household or kitchen utensils and containers (not of precious metal and polished); Pots, pans, roasters, all of the aforesaid goods being made in particular from aluminium, stainless steel or cast aluminium, however not including earthenware; Baking dishes; Glass tableware, Porcelain ware, In particular including fire-resistant crockery; Cups, Table plates, Dinner services; Microwavable dishes; Oven-to-table tableware; Salad bowls, Serving bowls, Cocktail shakers; Napkin rings; Cloths for cleaning (in particular made from microfibres); Butter rollers; Salt and pepper pots; Cruets; Glass lids for pots and pans; Souffle dishes; Whisks, milk frothers, all being non-electric; Cutting boards for the kitchen; Garlic presses; Storage containers (vacuum boxes); Tea and coffee filtering apparatus (non-electric); Hob cover plates (made from glass, plastic or wood).
Class 24: Textiles and textile products; Bed and table covers; Teatowels, Serviettes; Non-woven textile fabrics, in particular being pan protectors.
Class 25: Clothing; Fabric aprons, in particular barbecue aprons, Gloves, Including barbecue gloves.
The contested goods are the following:
Class 11: Boiling pans; Steam cookers; Fondues [cooking apparatus]; Steaming apparatus (Electric -) for cooking.
Class 21: Pot stands; Serving pots; Tableware, cookware and containers; Slow cookers (Non-electric -); Rice cooking pots [non-electric]; Steamers [cookware]; Pans; Metal pans; Cooking pots; Pancake frying pans; Skillets (Non-electric -); Butter pans; Shallow pans for cooking; Deep fryers, non-electric; Deep fryers, non-electric; Pans; Saucepans (Earthenware -); Kitchen utensils; Saucepans; Casseroles [dishes]; Dutch ovens; Kitchen utensils.
Contested goods in class 11
The contested Boiling pans; Steam cookers; Fondues [cooking apparatus]; Steaming apparatus (Electric -) for cooking are included in the broader category of the opponent’s apparatus for heating, steam generating, cooking or drying. Therefore, they are considered identical.
Contested goods in class 21
The applicant’s Pot stands; Serving pots; Tableware, cookware and containers; Slow cookers (Non-electric -); Rice cooking pots [non-electric]; Steamers [cookware]; Pans; Metal pans; Cooking pots; Pancake frying pans; Skillets (Non-electric -); Butter pans; Shallow pans for cooking; Deep fryers, non-electric; Deep fryers, non-electric; Pans; Saucepans (Earthenware -); Kitchen utensils; Saucepans; Casseroles [dishes]; Dutch ovens; Kitchen utensils are included in the broader category of the opponent’s household or kitchen utensils and containers (not of precious metal and polished). Therefore, they are considered identical.
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C 514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the relevant public.
The earlier mark is a word mark consisting of the nine lettered word “STONELINE”.
The contested mark is a word mark consisting of the ten lettered word “STONEWHITE”.
Visually, the signs are similar to the extent that they both include the letters “S-T-O-N-E-I-E” placed in the same order. As a result, the beginning of both trade marks “STONE” is identical. Nonetheless, they differ in their number of letters: nine as regards the earlier trade mark and ten regarding the contested trade mark. Moreover, they differ in the letters “L-N” of the earlier mark and “W-H-T” of the contested sign.
As a result, the signs must be deemed visually similar.
Aurally, the trade marks coincide in the sound of the letters “S-T-O-N-E” present identically in both signs, and to that extent the signs are aurally similar. However, the pronunciation differs in the second part of the trade marks, respectively “LINE” in the earlier sign and “WHITE” in the contested sign.
In the light of the foregoing, the signs are aurally similar.
Conceptually, with respect to the non-English speaking part of the public neither sign conveys any meaning, and they are therefore likely to be seen as invented or foreign words for this part of the relevant public.
In the light of the above, given that neither sign has any meaning a conceptual comparison cannot be made.
Taking into account the abovementioned visual and aural coincidences, it is considered that 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.
Neither of the marks under comparison will have any meaning for the non-English speaking part of the public, therefore none of their elements 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in the European Union. In order to sustain this assertion, the opponent enclosed a Statutory Declaration dated 05/08/2015, and in the name of Michael Schmiederer, the general manager of the WARIMEX Waren-Import Export Handels GmbH. This document attests a number of sales for pans labelled with the mark “STONELINE” amounting to 8.3 million for the territory of Germany and 6.9 million for the territory of France between 2006 and May 2015. It must be noted that the aforementioned Statutory Declaration is the sole piece of evidence provided by the opponent. In addition, its author is directly linked to the opponent, being its general manager and as such is not an independent party.
As a general rule, the Office considers material produced by third parties as being of a higher probative value than material produced by the owner himself or by its representative. Statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4 – ‘BOTODERM’, para. 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610).
In such circumstances additional evidence would be necessary that supports the assertions in the declaration. However, the opponent failed to furnish further documentation.
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 non-English speaking 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.
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 as well as professionals working in the cooking field.
In the light of the foregoing, the degree of attention is considered to be average.
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.
In the present case, the goods in question are identical. As for the signs, they are visually and aurally similar on account of the shared five-letter/sound sequence, ‘STONE’ and the letters ‘I’ and ‘E’.
It must be borne in mind that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
It must be reminded that neither sign will have a meaning for the non-English speaking part of the public. They will therefore appear to this part of the public as fanciful of foreign terms.
It must be noted at this point that the applicant’s main argument concerns the lack of distinctive character of the common element ‘STONE’. However, given that the earlier mark is a Community trade mark the assessment has to be taken from the stance of the whole of the population including those that do not speak English and to this extent, given that ‘STONE’ will not be understood by non-English speakers, no association will be made with the goods at hand. The applicant argues that the signs are composed of basic English terms that will be understood by the relevant European consumer. However the applicant has not adduced any arguments or evidence that would support this assertion and the Opposition Division is not of the opinion that ‘STONE’ is a basic English term. Moreover this element is adjoined to another component in both cases making it improbable that ‘STONE’ would be perceived as such. It is clear that both signs are made up of two English words and English speakers would be in a position to divide ‘STONE’ from ‘LINE’ and ‘WHITE’ given that all elements are meaningful terms. However, for those who do not speak English there are no reasons to see why they would undertake such a dissection of the marks since they would see them as a whole and for these speakers the signs do not convey any meaning. Consequently, given that the applicant’s arguments are confined to English speakers they must be set aside.
As a consequence, where the signs are not understood by the non-English-speaking part of the public in the pertinent territory, the consumers’ attention will fall on the visual and aural aspects, where the similarity residing in the identical beginnings will be immediately perceived.
Taking into consideration that there is no component in either trade mark considered more dominant or more distinctive than the other elements, it is likely that the non-English-speaking part of the relevant public could be misled into attributing a common trade origin to the goods in question, particularly bearing in mind that they are identical.
Finally, the applicant referred in his observations to previous decisions of the Office to support its arguments. However, the Office is not bound by previous decisions as each case has to be dealt with separately and with regard to its particularities (emphasis added).
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’)
The decisions cited by the applicant do not concern the same goods or the same relevant public and are therefore factually different. Moreover, the signs at issue concerned English terms that were deemed basic or as being understood due to the relevant public being familiar with English expressions as is the case with those working in the field of computer technology for example. However these facts are not shared in the present scenario and consequently the decisions are not parallel.
In view of the foregoing and bearing in mind the identity of the goods, after an overall assessment, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the European Union public in relation to the goods in classes 11 and 21.
Furthermore, as stated above in section b) 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 in its entirety.
As the earlier right Community trade mark registration No 11 411 063 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 (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).
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.