OPPOSITION No B 2 541 657
Vitavortex GmbH, Carl-Zeiss-Str. 49, 85521 Hohenbrunn-Riemerling, Germany (opponent), represented by Andrae|Westendorp Patentanwälte Partnerschaft, Uhlandstr. 2, 80336 München, Germany (professional representative)
a g a i n s t
Bin Bukovecz, Venetianer u. 4, 1042 Budapest, Hungary (applicant).
Class 11: Sanitary installations, water supply and sanitation equipment; water dispensers.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against some of the goods of European
Union trade mark application No
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 goods on which the opposition is based are the following:
Class 11: Shower heads; water swirls; water whirls; jet regulators; air bubblers; mixing nozzles; water atomizers, all the aforesaid goods as sanitary fittings.
The contested goods are the following:
Class 11: Food and beverage treatment equipment; sanitary installations, water supply and sanitation equipment; water dispensers.
Contested goods in Class 11
The contested sanitary installations, water supply and sanitation equipment include, as a broader category, the opponent’s water swirls; water whirls; jet regulators; air bubblers; mixing nozzles; water atomizers, all the aforesaid goods as sanitary fittings. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods
The contested water dispensers are highly similar to the opponent’s goods in Class 11 as all of these are kinds of sanitary installations. The goods have the same nature and they serve the same purpose. The water dispensers and sanitary installations are usually produced by the same manufacturers and the end users are the same.
The remaining contested goods food and beverage treatment equipment are considered dissimilar to the opponent’s goods in Class 11. Food and beverage treatment equipment are equipment used for cooking, heating, cooling and treatment of food and beverage and the opponent’s goods in Class 11 are sanitary equipment and installations; therefore, they do not have the same nature and they do not serve the same purpose. They are normally not produced by the same manufacturers and the end users are different.
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 highly similar are directed at the public at large. The degree of attention is considered average.
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 a word mark consisting of the word ‘VORTEX’.
The contested sign is a figurative mark consisting of the word ‘VORTEX’ written in a fairly standard typeface in orange upper case letters. At the left side appears a figurative element in the form of an orange circle with two white stripes that might be perceived as the letter ‘v’. At the top-right side appears the symbol ®.
The earlier mark has no elements that could be considered more dominant (visually eye-catching) or more distinctive than other elements.
The verbal element ‘vortex’ in both marks has a normal degree of distinctiveness in relation to the relevant goods in Class 11.
The ® symbol in the contested sign is the symbol used to indicate that a certain mark is registered. The public will understand this symbol as such and therefore it lacks any distinctiveness. As well as lacking any distinctiveness, it is also so small in comparison with the other elements that it is almost negligible or, in any case, a less eye-catching element. Consequently, the ® symbol is considered as immaterial and will not be taken into account when comparing the signs and in the further assessment of a possible likelihood of confusion.
Visually, the signs are similar to the extent that they both contain the word ‘VORTEX’, although the contested sign is depicted in a fairly stylised orange typeface. They differ, furthermore, in the figurative element of the contested sign, as described above.
Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, in the present case the verbal element ‘VORTEX’ will have a stronger impact on consumers than the figurative element of the contested sign.
In addition, the slightly fanciful typeface in which the contested sign is written must be considered not particularly significant, as it is not so overwhelming to lead the consumer’s attention away from the words it seem to embellish.
Therefore, the signs are visually similar to a high degree.
Aurally, both marks are pronounced as /vor-tex/. Therefore, they are aurally identical. The pronunciation of the signs is identical, as it can be safely assumed that the small ‘v’, if recognised as such, will not be pronounced.
Conceptually, the only word element, present in both signs, has the following meaning for the English- and French-speaking parts of the relevant public: a whirling mass or rotary motion in a liquid gas, flame, etc., (information extracted from Collins English Dictionary on 10/05/2016 at http://www.collinsdictionary.com/dictionary/english/vortex). For this part of the public, the signs are conceptually identical insofar they coincide in this word. For the rest of the public, the element ‘Vortex’ does not have any meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public. The small figurative element of the contested sign, even if recognized as the letter “v” does not convey an additional meaning.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR).
It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22). It is further observed that the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a 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 greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
As concluded above, some of the goods are identical and similar to a high degree and target a public with an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness, and the marks in dispute are visually similar to a high degree, aurally identical and conceptually identical for at least a part of the public.
The relevant consumers might be led, therefore, by the visual similarity, the aural and, for part of the public also conceptual identity of the word ‘VORTEX’ to believe that the identical and highly similar goods covered by the marks come from the same undertaking or economically linked undertakings. Taking into account all the circumstances as set out, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical and highly similar to those of the earlier trade mark. The opposition is not successful insofar as the remaining dissimilar goods are concerned, as similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
Ana MUÑIZ RODRÍGUEZ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.