OPPOSITION No B 2 553 108

Hawkins Cookers Limited, 101, Maker Towers, Cuffe Parade, Bombay 400005, India (opponent), represented by Raul César Ferreira (Herd.), S.A., Rua do Patrocínio, 94, 1399-019 Lisboa, Portugal (professional representative)

a g a i n s t

Scott Jebb, The Farmstead, Sleep Hill Lane, Skelbrooke, Doncaster DN6 8LZ, United Kingdom (applicant), represented by Addleshaw Goddard LLP, 100 Barbirolli Square, Manchester M2 3AB, United Kingdom (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 553 108 is partially upheld, namely for the following contested goods:

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes; baking containers made of porcelain; baking dishes made of porcelain; porcelain ware; porcelain containers; containers for domestic use made of porcelain; porcelain for household use; containers for household use made of porcelain; containers for kitchen use made of porcelain; heat insulated domestic vessels of porcelain.

2. European Union trade mark application No 13 850 904 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 850 904. The opposition is based on Portuguese trade mark registration No 224 380. The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The goods

The goods on which the opposition is based are the following:

Class 21: Designed to pressure cookers (non electrical).

The contested goods, after a limitation, are the following:

Class 9: Bathroom scales; body weighing scales; electrical scales; electronic scales; electronic weighing scales; electronic weighing scales for kitchen use; electronic weighing scales for personal use; kitchen scales; kitchen weighing scales; letter scales; letter scales for domestic use; letter scales for office use; personal weighing scales; pocket scales; portable digital electronic scales; postage scales; pressure scales; scales; talking scales; weighing scales; weighing scales for kitchen use; weighing scales for medical use; weighing scales for personal use.

Class 11: Apparatus for steam generating, ventilating, water supply and sanitary purposes; air conditioning apparatus; vehicle lights and vehicle air conditioning units; electric blankets other than for medical use; electric mattresses; electric mattress covers; water boilers; electric water boilers; halogen heaters; installations for heating consisting of halogen heating devices; installations for heating incorporating halogen heating devices; heaters; air heaters; electric heaters; portable electric heaters; room heaters; space heaters; electric space heaters; fan heaters; electric fan heaters; wall heaters; convector heaters; immersion heaters; electric radiant heating apparatus; radiant fan heaters; radiant space heaters; water heaters; electric water heaters; radiators; electric radiators; central heating radiators; domestic radiators; oil filled radiators; steam cleaners being electrical appliances; dehumidifiers; air humidifiers; electric humidifiers; humidifiers for central heating radiators; air conditioners; air conditioning fans; electric cooling fans; electric fans for ventilation; electric foot warmers; heated towel rails; electrically heated towel rails; parts and fittings for all of the above.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; baking containers made of porcelain; baking dishes made of porcelain; beakers of porcelain; boxes of porcelain; candy boxes of porcelain; candy dishes of porcelain; containers for domestic use made of porcelain, containers for household use made of porcelain; containers for kitchen use made of porcelain; crockery made of porcelain; decorative porcelain ware; decorative pots of porcelain; decorative trays of porcelain; decorative household containers of porcelain; dinner services made from porcelain; dinnerware of porcelain; tableware of porcelain; jugs being domestic articles of porcelain; jugs being domestic utensils of porcelain; heat insulated domestic vessels of porcelain; cups made of porcelain; drinking mugs made of porcelain; napkin rings made of porcelain; porcelain ware; porcelain spice jars; porcelain containers; porcelain for kitchen use; porcelain for household use; porcelain coasters; porcelain articles for decorative purposes; plates and dishes made of porcelain not included in other classes.

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.

The opponent refers to its goods as designed to pressure cookers (non electrical). However, for classification, the goods will be henceforth referred to as non-electrical pressure cookers.

Contested goods in Class 9

The contested bathroom scales; body weighing scales; electrical scales; electronic scales; electronic weighing scales; electronic weighing scales for kitchen use (listed twice); electronic weighing scales for personal use; kitchen scales; kitchen weighing scales; letter scales; letter scales for domestic use; letter scales for office use; personal weighing scales; pocket scales; portable digital electronic scales; postage scales; pressure scales; scales; talking scales; weighing scales; weighing scales for medical use; weighing scales for personal use are various types of scales used as machines or devices for weighing for different purposes, including personal, medical and domestic purposes. However, the goods have different natures and methods of use from the opponent’s non-electrical pressure cookers, as well as different intended purposes, namely measuring as opposed to cooking. Although some of the contested goods may be used for domestic purposes in the kitchen, they do not coincide in their relevant publics and distribution channels with the opponent’s non-electrical pressure cookers, which are specialised kitchen utensils. Furthermore, the goods will not be produced by the same manufacturers. Therefore, the goods are dissimilar.

Contested goods in Class 11

The contested apparatus for steam generating, ventilating, water supply and sanitary purposes; air conditioning apparatus; vehicle lights and vehicle air conditioning units;

electric blankets other than for medical use; electric mattresses; electric mattress covers; water boilers; electric water boilers; halogen heaters; installations for heating consisting of halogen heating devices; installations for heating incorporating halogen heating devices; heaters; air heaters; electric heaters; portable electric heaters; room heaters; space heaters; electric space heaters; fan heaters; electric fan heaters; wall heaters; convector heaters; immersion heaters; electric radiant heating apparatus; radiant fan heaters; radiant space heaters; water heaters; electric water heaters; radiators; electric radiators; central heating radiators; domestic radiators; oil filled radiators; steam cleaners being electrical appliances; dehumidifiers; air humidifiers; electric humidifiers; humidifiers for central heating radiators; air conditioners; air conditioning fans; electric cooling fans; electric fans for ventilation; electric foot warmers; heated towel rails; electrically heated towel rails; parts and fittings for all of the above are all electric devices, apparatus or installations (and their parts and fittings) used as equipment for particular operations such as ventilating, heating, steam generating, etc. However, the goods differ in their natures, methods of use and intended purposes from the opponent’s non-electrical pressure cookers, which are used as cooking appliances. The conflicting goods are not in competition with each other, since none of the above listed contested goods is used as an apparatus for cooking purposes. Furthermore, the goods will have different publics and distribution channels and it is unlikely that they will coincide in their producers. Therefore, the goods are considered dissimilar.

Contested goods in Class 21

The contested household or kitchen utensils and containers (not of precious metal or coated therewith) include, as a broader category, the opponent’s non-electrical pressure cookers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s non-electrical pressure cookers are large containers with tightly fitting lids in which one can cook food quickly using steam at high pressure. The contested glassware, porcelain and earthenware not included in other classes; baking containers made of porcelain; baking dishes made of porcelain; porcelain ware; porcelain containers; containers for domestic use made of porcelain; porcelain for household use; containers for household use made of porcelain; containers for kitchen use made of porcelain; heat insulated domestic vessels of porcelain are kitchen and household utensils made of porcelain and other materials that may be used for serving or preserving food or as other types of cooking appliances. The goods under comparison may have the same intended purposes and it is not excluded that they could also be used in the same kitchen/household areas. Given this, they may target the same public and may be in competition with each other. It follows that the goods are similar.

The contested beakers of porcelain; boxes of porcelain; candy boxes of porcelain; candy dishes of porcelain; crockery made of porcelain; dinner services made from porcelain; dinnerware of porcelain; tableware of porcelain; decorative porcelain ware; decorative pots of porcelain; decorative trays of porcelain; decorative household containers of porcelain; jugs being domestic articles of porcelain; jugs being domestic utensils of porcelain; cups made of porcelain; drinking mugs made of porcelain; napkin rings made of porcelain; porcelain spice jars; porcelain coasters; porcelain articles for decorative purposes; plates and dishes made of porcelain not included in other classes are articles made of porcelain and mainly used for other purposes than cooking, in particular for serving or decoration. The goods are unlikely to coincide in their origin with the opponent’s non-electrical pressure cookers, since they have completely different natures, and consumers will not expect that the producers of the porcelain ware in question may also produce the opponent’s non-electrical pressure cookers. Therefore, the goods are dissimilar.

The contested combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool are dissimilar to the opponent’s goods. Although the goods belong to the same category of household tools, they have different natures, methods of use and intended purposes, namely cleaning as opposed to cooking. Furthermore, the goods are not complementary or in competition with each other and it is unlikely that they originate from the same undertakings.

The contested un-worked or semi-worked glass (except glass used in building) consists of raw materials, namely glass, in an unrefined or unfinished state. The mere fact that one product is used for the manufacture of another (e.g. glass is used in the manufacture of the opponent’s pots and pans) is not sufficient in itself to conclude that the goods are similar, as their natures, purposes and consumers are quite distinct. Raw materials are intended for use in industry rather than for direct purchase by the final consumer. Furthermore, the opponent’s goods and the applicant’s unworked or semi-worked glass are manufactured by different undertakings. Therefore, these goods are dissimilar.

2. 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 similar are directed at the public at large. The degree of attention is average.

3. The signs

FUTURA	FUTURA HOME
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 verbal element ‘FUTURA’, and the contested sign is a word mark consisting of the words ‘FUTURA HOME’.

The marks have no elements that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘FUTURA’, which is the only element of the earlier mark and the first verbal element of the contested sign. However, they differ in the additional word, ‘HOME’, of the contested sign, which has no counterpart in the earlier mark. However, the first parts of the conflicting marks are identical. 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. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FUTURA’, present identically in both signs. The pronunciation differs in the sound of the additional word, ‘HOME’, of the contested sign, which has no counterpart in the earlier mark. Therefore, since the commonality lies in the first verbal element of the contested sign, the signs are considered aurally highly similar.

Conceptually, the public in the relevant territory will perceive the Portuguese word ‘FUTURA’ in the two signs as meaning ‘future; upcoming’. However, the second word, ‘HOME’, of the contested sign will be perceived as meaningless by the Portuguese-speaking part of the public, since the Portuguese equivalent of that English word is ‘casa’. As both signs will be perceived as having the meaning of their coinciding verbal element, the signs are conceptually highly similar.

As the signs have been found similar in visual, aural and conceptual aspects, the examination of likelihood of confusion will proceed.

4. 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. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods were found to be partly identical, partly similar and partly dissimilar, and the degree of attention is average.

The signs were considered to be visually, aurally and conceptually highly similar to the extent that the contested sign entirely incorporates the earlier mark. Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In addition, the first parts of the signs, to which more attention is usually paid, are identical.

In summary, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Therefore, consumers may easily link the two signs on account of the identical word ‘FUTURA’ in both of them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Portuguese trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful. Therefore, the opposition will proceed with the examination under Article 8(5) EUTMR also invoked by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Portugal.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 18/03/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 21: Pressure cookers (non-electrical).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 04/12/2015, the opponent submitted the following evidence:

• Document 1: a printout from the opponent’s official web page giving some information (in English) about the company itself and the goods marketed under the trade mark ‘FUTURA’, namely various items of cookware, in particular, pressure cookers.

• Document 2: printouts presenting some characteristics of the opponent’s goods, namely pressure cookers and pots, and showing that some of them bear the mark ‘FUTURA’, as well as a history of the opponent’s company. The information is given in Portuguese and is accompanied by an English translation of the relevant parts.

• Document 3: an extract from a Portuguese online retail shop, www.amazonite.pt, illustrating that the opponent’s goods are offered through this channel under the mark ‘FUTURA’. The extract is translated into English.

• Documents 4 and 5: extracts from the websites http://www.lojadasborrachas.com and http://www.loicasdoarco.pt (extracted on 03/12/2016) illustrating the online presence of the opponent’s pressure cookers under the mark ‘FUTURA’. According to the opponent, the sites promote and retail its goods under the above-mentioned trade mark and the price category varies from EUR 50 to over EUR 100. A translation into English has been also submitted.

• Document 6: 109 invoices issued by the opponent’s company, Hawkins Cookers Limited, and dated between 2002 and 2015. The invoices are addressed to different clients in Portugal and contain references to the goods for which the relevant word trade mark, ‘FUTURA’, has been registered, namely pressure cookers. Spare parts for these goods also appear on the invoices.

• Documents 7-16: annual reports of the company Hawkins Cookers Limited, for consecutive years between 2005/6 and 2014/15. The opponent refers in its observation to the company’s annual growth in sales and net profits, as well as to its advertising activity. However, the annual reports present information regarding the company’s financial data in general without any particular breakdown of the numbers in relation to the specific goods, namely pressure cookers bearing the mark ‘FUTURA’.

The items of evidence have not been assessed individually but rather as a whole, taking into consideration all of the information that they reveal. Furthermore, account must be taken of the fact that information deriving directly from the opponent is unlikely to be sufficient on its own but must be supported by independent sources and third parties.

An overall assessment of the evidence submitted demonstrates that the opponent’s company has been operating in the relevant market. However, for a finding of reputation, not only does use of the mark have to be demonstrated, but a certain threshold in terms of the relevant public’s knowledge of the mark must also be reached. The evidence provides little or no information on the degree of recognition among the relevant public or the market share held by the earlier mark.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a reputation. The Opposition Division bases its conclusion on the following findings:

• The printouts in Documents 1-5 show only the availability of the opponent’s goods on the internet for the relevant Portuguese part of the public but do not prove on their own the number of consumers targeted and reached in the relevant territory.

• The numerous invoices presented in Document 6, despite illustrating significant sales figures, cannot be conclusive of reputation on their own because they cannot give sufficient information about the actual awareness of the trade mark.

• The annual reports in Documents 7-16 provide information on the financial status of the company itself but do not concretely refer to the trade mark ‘FUTURA’, to the individual sales of the goods bearing the trade mark ‘FUTURA’ in Portugal or to the advertising activity costs in relation to the goods. Furthermore, although this evidence concerns sales figures and advertising costs in general, these are not put into the context of the market or competitors in question in any of the documents. In addition, given that such evidence as annual reports derives from the opponent and is mainly intended to promote its image, its probative value mostly depends on its content and must be treated with caution. As shown above, the excerpts of the reports contain only general figures and no further breakdown of the relevant information concerning vital factors such as trade mark recognition and market share in the relevant competition environment.

• The opponent did not submit any information from independent sources and third parties to reflect clearly and objectively its position in the market for the relevant goods.

As concluded above, despite showing an intensive and long-standing use of the trade mark, the evidence does not provide any indication of the degree of recognition of the trade mark by the Portuguese public. The evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted in the relevant territory. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as this ground is concerned.

COSTS

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

Steve HAUSER

Benoit VLEMINCQ

Vít MAHELKA

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.