OPPOSITION No B 2 862 681

Teka Industrial, S.A., Cajo, 17, 39011 Santander (Cantabria), Spain (opponent), represented by Clarke, Modet y Cia S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Fagerhults Belysning AB, 566 80, Habo (applicant), represented by Gotapatent AB, Klostergatan 29, 553 35 Jönköping, Sweden (professional representative).

On 11/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 862 681 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 974 413 for the word mark ‘KASKAD’. The opposition is based on German trade mark registration No 39 830 182 for the word mark ‘CASCAD’. The opponent invoked Article 8(1)(b) 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 11: Sinks, in particular of stainless steel, ceramic, plastic and/or natural stone.

The contested goods are the following:

Class 11: Apparatus for lighting, including electric lighting fixtures for private, public and industrial use; Lighting apparatus and installations, particularly using light-emitting diodes (LEDs); Searchlights; LED lamps; LED luminaries of all kind and LED lamps of all kind; Fluorescent lamps; Lanterns for lighting; Electric lamps; Wall lights; Lighting louvres; Electric lighting fittings; Lamp fittings, parts and accessories for the aforesaid goods, included in this class; Anti-glare devices for light fittings. and installations, particularly using light-emitting diodes (LEDs); Searchlights; LED lamps; LED luminaries of all kind and LED lamps of all kind; Fluorescent lamps; Lanterns for lighting; Electric lamps; Wall lights; Lighting louvres; Electric lighting fittings; Lamp fittings, parts and accessories for the aforesaid goods, included in this class; Anti-glare devices for light fittings

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 11

The contested apparatus for lighting, including electric lighting fixtures for private, public and industrial use; lighting apparatus and installations, particularly using light-emitting diodes (LEDs); searchlights; LED lamps; LED luminaries of all kind and LED lamps of all kind; fluorescent lamps; lanterns for lighting; electric lamps; wall lights; lighting louvres; electric lighting fittings; lamp fittings, parts and accessories for the aforesaid goods, included in this class; anti-glare devices for light fittings can be summarised under the categories apparatus for lighting and parts for them, since all the goods for which registration is sought can be covered by these categories/terms. These goods have nothing in common with the opponent’s sinks in Class 11.

They clearly differ in nature because lighting apparatus needs electricity to work whereas sinks need water. Moreover, they tend to be made of different materials and have different structures.

The competing goods also differ in their intended purpose. The function of sinks is to provide a place for washing various products or the human body, whereas lighting apparatus and parts thereof are intended to illuminate spaces.

For that reason, they are neither in competition nor complementary in the sense that one is indispensable or important for the use of the other. Complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience. This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20).

Furthermore, sinks and apparatus for lighting are in principle sold through different distribution channels and not manufactured by the same undertakings, since the installations, machines, equipment and also expertise for producing them are fundamentally different and they are installed by different experts (electricians versus plumbers).

The opponent points out that some of the contested goods might be incorporated in sinks. However, the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). In the present case, where the goods serve clearly different purposes and are commonly sold through different distribution channels, the public will not expect these goods to originate from the same undertakings.

In view of the all foregoing, the goods at issue must be deemed dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected. Since the opposion is not successful, there is no need to request the opponent for proof of renewal of the earlier mark.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Mads Bjørn Georg JENSEN

Maria Slavova

Adriana VAN ROODEN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.