OPPOSITION No B 2 546 425
Candy Hoover Group S.R.L., Via Comolli, 16, 20861 Brugherio (Monza e Brianza), Italy (opponent), represented by Jacobacci & Partners S.P.A. Via Senato, 8 20121 Milano (MI), Italy (professional representative)
a g a i n s t
BIN Bukovecz, Budapest, Venetianer u. 4, 1042, Hungary (applicant).
On 02/02/2017, the Opposition Division takes the following
Class 11:: Food and beverage cooking, heating, cooling and treatment equipment; Heating, ventilating, and air conditioning and purification equipment (ambient); Ovens; Microwave ovens; Kitchen machines (Electric -) for cooking.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 311 801.
The goods on which the opposition is based are the following:
Class 7: Electrically operated commercial, domestic, household, industrial and kitchen apparatus, instruments and machines; electrically operated commercial, domestic household and industrial apparatus, instruments and machines for abrading, cleaning, polishing, scrubbing, sweeping and waxing floors and other surfaces; vacuum cleaning apparatus, instruments and machines, carpet cleaning apparatus, instruments and machines, apparatus, instruments and machines for extracting soil from carpets; apparatus, instruments and machines for washing and laundry purposes, ironing machines; dishwashers, drying machines; waste compactors and disposal apparatus, instruments and machines; filters, drive belts, agitators, brushes, nozzles, hoses, cleaning heads, dust receptacles, electric motors, brushes (for electric motors), all being parts and fittings for electrically operated commercial, domestic, household, industrial and kitchen apparatus, instruments and machines; dust receptacles, cleaning tools, cleaning nozzles and cleaning attachments for vacuum cleaning apparatus, instruments and machines.
Class 11: Apparatus, instruments, machines and installations for cooking, refrigerating, heating, cooling; apparatus, instruments and installations for drying; refrigerated cabinets; apparatus and instruments for dispensing chilled beverages; ventilating and air conditioning apparatus, instruments and installations, gas and electric ranges, stoves and ovens; water coolers; microwave ovens; electrically-driven barbecue units for electric stoves; humidifiers; heating and cooling elements; and filters.
Class 16: Dust bags for vacuum cleaning apparatus, instruments and machines.
The contested goods are the following:
Class 9: Information technology and audiovisual equipment; navigation, guidance, tracking, targeting and map making devices; display devices, television receivers and film and video devices; recorded content; DVD players; television receivers [tv sets]; tablet computer; computers and computer hardware.
Class 11: Food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); ovens; microwave ovens; kitchen machines (electric -) for cooking.
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 goods in Class 9
The contested goods in Class 9 are different kinds of information technology and audiovisual equipment, including for example computers and televisions. These goods don’t have any relevant point of contact with the earlier goods in Classes 7, 11 and 16. The opposing goods in Class 7 are electrically operated apparatus, instruments and machines to be used in kitchen, household, industry with different purposes like cleaning, polishing, scrubbing. The earlier goods in Class 11 are various apparatus, instruments and machines for cooking, heating and cooling and the earlier goods in Class 16 are dust bags for cleaning devices.
The goods at issue have a different nature, they serve different purposes and differ in their method of use. In addition, they are neither complementary nor in competition. Finally, they are normally not produced by the same manufacturers or sold through the same distribution channels. Therefore, these goods are considered dissimilar.
The opponent puts in particular forward that there is a clear link between the earlier goods and the contested goods in Class 9 in the sense that all of them are electrically driven apparatus. Furthermore, these goods very often coincide in manufacturer and distribution channels.
The Opposition Division cannot agree with this argument. Even though it might be true that in some occasions the manufacturer coincides this is not the rule and the fact that all of them are functioning with electrical power is not a reason to consider them similar. Very diverse apparatus with a different nature and purpose function with electricity. There must be a coincidence in more factors in order to come to the conclusion that they are similar.
Contested goods in Class 11
The contested goods are identically contained in both lists of goods (including synonyms).
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 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 figurative mark consisting of the word ‘VORTEX’ written in a fairly standard typeface in black upper case letters. The letter “O” is represented in a stylized way but clearly recognizable as said letter.
The contested sign is also 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 standard orange typeface. They differ, furthermore, in the figurative element of the contested sign and in the stylized way of representing the letter “O” in the earlier mark.
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 elements of the signs.
In addition, neither the slightly orange typeface in which the contested sign is written nor the little stylization of the earlier mark are particularly significant, as these elements are not so overwhelming to lead the consumer’s attention away from the words it seems to embellish.
Therefore, the signs are visually similar to a high degree.
Aurally, both marks are pronounced as /vor-tex/. The pronunciation of the signs is therefore 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 26/01/2017 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 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 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 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.
The opponent has also based its opposition on the German trade mark registration No 39 865 142 for the word mark ‘VORTEX’ for goods in Class 7.
Since this mark is highly similar to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
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.