OPPOSITION No B 2 905 241

Peter Chung-Yuan Chang, 6469 Flanders Drive, San Diego, California, 92121, United States of America (opponent), represented by Abecsa Patentes y Marcas, Alcalá, 117, 2 Izqda., 28009 Madrid, Spain (professional representative)

a g a i n s t

Alfi GmbH Isoliergefässe Metall- und Haushaltswaren, Ernst-Abbe-Str. 14, 97877 Wertheim, Germany (applicant), represented by Schwan Schorer & Partner mbB, Bauerstr. 22, 80796 München, Germany (professional representative).

On 28/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 905 241 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 135 006 for the figurative mark , namely against all the goods in Class 21. The opposition is based on international trade mark registration No 1 311 696 designating the European Union for the word mark ‘AROMA’. 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 21: Cookware, namely, stoneware cookware, namely, bowls, grills, pots, pans, steamers, non-electric kettles, food warmers, and bakeware, earthenware cookware, namely, bowls, grills, pots, pans, steamers, food warmers, and bakeware; clay cookware, namely, bowls, grills, pots, pans, steamers, food warmers, and bakeware; crockery, namely, pots, dishes, drinking cups, bowls, serving bowls, and trays; non-electric kettles, cooking pots, fondue pots without heat source; frying pans and containers for household or kitchen use.

The contested goods are the following:

Class 21: Vacuum jugs (Non-electric -); Thermally insulated containers for food; Hip flasks; Non-electric portable coldboxes; Bottle coolers [receptacles]; Glasses, drinking vessels and barware; Non-electric coffee drippers for brewing coffee.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

3. The signs

AROMA
Earlier trade mark	Contested sign

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 contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about commercial origin due to similarities that pertain solely to non-distinctive or weak elements.

The word ‘AROMA’, which constitutes the entire earlier mark and is included in the contested sign, will be understood in all the languages of the European Union because either it exists as such (e.g. in Croatian, Czech, Danish, Dutch, English, German, Hungarian, Italian, Portuguese and Spanish,) or there is a close equivalent word (e.g. ‘aromi’ in Finnish, ‘arôme’ in French, ‘aromat’ in Polish, ‘aromă’ in Romanian and ‘arom’ in Swedish).

The word ‘AROMA’ means ‘a distinctive, typically pleasant smell’. In addition, in some languages, such as German, it could also mean ‘a distinctive pleasant taste’ or ‘condimental flavour’. As the goods are cookware, drinking vessels, coffee drippers and containers for kitchen use, this verbal element cannot be regarded as descriptive in any way, as it does not indicate any direct characteristic of the goods in question (as the goods themselves do not give off any particular aroma). However, ‘AROMA’, in both meanings, is somewhat allusive and laudatory, as it brings to mind a pleasant association with the smell or taste of goods that are put in the containers or cookware. Therefore, the distinctiveness of this element is weak. Contrary to the applicant’s argument, the General Court in 12/05/2016, T‑749/14, AROMA, EU:T:2016:286, did not find this word very distinctive. What the court stated was that a minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal. This does not mean, however, that all the trade marks that have been registered have the same high level of distinctiveness. On the contrary, some trade marks are of limited distinctiveness. In the case brought up by the applicant, the court stated that the trade mark ‘AROMA’ could demonstrate an indirect connection with the goods, thus making it suggestive or allusive (12/05/2016, T‑749/14, AROMA, EU:T:2016:286, § 46).

For English speakers, the word ‘SAFE’, included in the contested trade mark, will be understood as ‘not dangerous or likely to cause harm’. With regard to the relevant goods, which are kitchen equipment, this word is non-distinctive, as it will be perceived merely as implying that the goods in question are not bad for one’s health and do not contain any substances that might interact with food.

Moreover, for the part of the public that speaks English, the expression ‘AROMA SAFE’ of the contested mark, taken as a whole, must be considered non-distinctive for at least some of the goods (although the word ‘AROMA’, taken alone, is of limited distinctiveness). This is because the expression will merely indicate that the goods at issue are smell proof (e.g. not allowing smell to go in or out of the container), which could be an important characteristic of the goods.

For the part of the public that does not understand English and, therefore, will not understand the meaning of the word ‘SAFE’, this verbal element must be considered distinctive.

The figurative, three-dimensional element of the contested sign, depicting a small sphere within a sphere-like device, is considered distinctive. Moreover, contrary to the opponent’s argument, it is also dominant in the contested trade mark, since it is the largest and most visually outstanding element of the mark.

The graphic depiction of the expression ‘AROMA SAFE’ in the contested mark is very simple and purely decorative; therefore, it must be considered non-distinctive.

Visually, the signs coincide in the word ‘AROMA’. They differ in the word ‘SAFE’ and the figurative elements of the contested mark. However, the coinciding verbal element is of limited distinctiveness (or even non-distinctive in the contested sign for the English-speaking public, which will perceive it together with ‘SAFE’). Moreover, it is visually the least prominent element of the sign, as it is depicted in a small, thin, grey font in contrast to the bold font of the differing element ‘SAFE’ and the dominant figurative device.

Therefore, the signs are visually similar to at most a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛AROMA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛SAFE’ of the contested mark, which have no counterpart in the earlier sign.

However, taking into consideration that the earlier sign, which is encompassed in its entirety in the contested mark, is at the same time a weak or even non-distinctive element therein (depending on the public, as explained above) and that for the non-English-speaking public the word ‘SAFE’ will be, in contrast, distinctive, the trade marks are aurally similar to a low degree.

Conceptually, the conflicting signs coincide in the concept of the word ‘AROMA’, as explained above. For the part of the public that does not recognise any meaning in the word ‘SAFE’, the trade marks under comparison are conceptually similar to a low degree, since they coincide in a weak element.

For the part of the public that understands the word ‘SAFE’, the expression ‘AROMA SAFE’ refers to the goods being smell proof. Since this concept is non-distinctive, it will not help consumers to identify the origin of the goods. Therefore, for this part of the public the trade marks are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, 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.

The opponent did not explicitly claim that his 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. 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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In the present case, the goods are considered identical. The relevant public’s degree of attention is average. The signs are visually similar to at most a low degree, aurally similar to a low to average degree and conceptually similar to a low degree or not similar. The distinctiveness of the earlier sign is limited.

For the English‑speaking public, the marks coincide in an element that is part of a non-distinctive expression in the contested mark. The word ‘AROMA’ in ‘AROMA SAFE’ will be understood as a description of the characteristics of the goods themselves rather than as an indication of their commercial origin. For this part of the public, the distinctive and dominant element of the contested mark will be the figurative device, which is visually outstanding. This element will have most influence on the overall impression created by the contested mark and, therefore, it will help consumers to identify the origin of the goods in question.

For the non-English‑speaking part of the public, the marks coincide in a weak element. Taking into account that the contested mark comprises other elements, which are both much more distinctive and visually more prominent, the Opposition Division finds that the relevant consumers will identify the origin of the goods in question through the remaining, distinctive, bold word ‘SAFE’ and the dominant sphere-like device. This is because, when marks have in common an element with a low degree of distinctive character, the assessment of likelihood of confusion must focus on the impact of the non-coinciding components on the overall impressions conveyed by the marks. Considering this, the abovementioned additional elements of the contested trade mark suffice to offset the commonality between the signs, which lies in the coinciding weak element.

Considering all the above, even assuming that then goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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, he 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

Claudia MARTINI

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.