OPPOSITION No B 2 938 978

Keeeper GmbH, Postdamm 43, 32351 Stemwede, Germany (opponent), represented by Busse & Busse Patent- Und Rechtsanwälte Partnerschaft mbB, Grosshandelsring 6, 49084 Osnabrück, Germany (professional representative)

a g a i n s t

Keeplit International, LLC, 8350 Ashlane Way, Suite 104, The Woodlands, TX 77382, United States of America (applicant), represented by Lehmann & Fernandez S.L., Calle Alvarez de Baena 4, 28006 Madrid, Spain (professional representative).

On 29/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 938 978 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 625 816 . The opposition is based on, inter alia, European Union trade mark registration No 14 586 457 . 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.

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 14 586 457.

1. The goods

The goods on which, inter alia, the opposition is based are the following:

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); Dustbins, mugs (not of precious metal), flower pots, window-boxes, cutting boards for the kitchen, bread bins, domestic bread baskets, ironing boards, butter dishes, closures for pot lids, tins (not of precious metal), buckets, bottles, bottle openers, ice cube moulds, heat insulated containers for beverages, kitchen containers (not of precious metal), tableware, other than knives, forks and spoons (not of precious metal), baskets for domestic use (not of precious metal), refrigerating elements for food, cold boxes (non electric), lunch boxes, mixing spoons (kitchen utensils), salad bowls (not of precious metal), brushes for cleaning tanks and containers, basins (bowls), dishes (not of precious metal), trivets (table utensils), soap boxes, soap holders and soap dishes, sieves (not of precious metal), trays for domestic purposes (not of precious metal); Baby baths of plastic; Potties of plastic; Toilet seats for children; Baby bath seats of plastic; Insulated bags for baby bottles.

The contested goods are the following:

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Brush-making materials; Articles for cleaning purposes; Steel wool for cleaning; Unworked or semiworked glass (except glass used in building); Articles of glassware, porcelain and earthenware; Containers for storage and transport of foodstuffs, for household use; Containers for storage and transport of water, for household use; Containers for mixing beverages; Containers for storage and transport of snacks, for household use; Containers for storage and transport of salads, for household use; Containers for storage and transport of protein-based dietary supplements, for household use.

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

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 earlier mark is a figurative mark containing a word ‘keeeper’ and underneath the words ‘keep on keeping’ in much smaller typeface.

The element ‘keeeper’ has no meaning for the relevant public and is, therefore, distinctive. It cannot be excluded, however, that part of the English-speaking public perceives it as a misspelling of the word ‘keeper’, referring to ‘something or someone that holds items in place or maintains them in certain conditions’. As such, it might be allusive and therefore less distinctive for some of the goods, such as household or kitchen containers (not of precious metal or coated therewith); dustbins, mugs (not of precious metal), flower pots, window-boxes, bread bins, domestic bread baskets, butter dishes, closures for pot lids, tins (not of precious metal), buckets, bottles, heat insulated containers for beverages, kitchen containers (not of precious metal), baskets for domestic use (not of precious metal), refrigerating elements for food, cold boxes (non electric), lunch boxes, salad bowls (not of precious metal), basins (bowls), dishes (not of precious metal), soap boxes, soap holders and soap dishes, trays for domestic purposes (not of precious metal); insulated bags for baby bottles. The word would be distinctive for the remaining goods.

The elements ‘keep on keeping’ of the earlier sign will be perceived, by the English-speaking public, as a promotional slogan proposing that something or someone that holds items in place or maintains them in certain conditions continues doing so. As such, the phrase as a whole and also the words ‘keep’, ‘keeping’ alone might be allusive and therefore weak for some of the goods, such as household or kitchen containers (not of precious metal or coated therewith); dustbins, mugs (not of precious metal), flower pots, window-boxes, bread bins, domestic bread baskets, butter dishes, closures for pot lids, tins (not of precious metal), buckets, bottles, heat insulated containers for beverages, kitchen containers (not of precious metal), baskets for domestic use (not of precious metal), refrigerating elements for food, cold boxes (non electric), lunch boxes, salad bowls (not of precious metal), basins (bowls), dishes (not of precious metal), soap boxes, soap holders and soap dishes, trays for domestic purposes (not of precious metal); Insulated bags for baby bottles. The words would be distinctive for the remaining goods, and also for the public that perceives no meaning in them.

The element ‘keeeper’ in the earlier sign is the dominant element as it is the most eye-catching.

The contested mark is a figurative mark. On its topmost part is a word ‘keeplit’ in lower case letters and in various tones of green and the letter ‘t’ directed to the other side. Underneath is a word ‘keep’ and on a next line, in much larger size, ‘&GO’. These words are depicted in various colours and placed on a multi-coloured round shaped background.

The element ‘keeplit’ as such has no meaning for the relevant public and is, therefore, distinctive. The English-speaking consumers might perceive it as incorrectly conjoined words ‘keep’ and ‘lit’, meaning ‘keep light shining on something’. This word combination is distinctive in respect of the goods at hand.

The element ‘keep &GO’ can be perceived, by the English-speaking consumers, as a suggestion that someone/something continues holding items in place or maintaining them in certain conditions for transferring them. As such, the phrase as a whole and also the word ‘keep’ alone might be allusive and therefore weak for some of the goods, such as Household or kitchen containers; articles for cleaning purposes; steel wool for cleaning; containers for storage and transport of foodstuffs, for household use; containers for storage and transport of water, for household use; containers for mixing beverages; containers for storage and transport of snacks, for household use; containers for storage and transport of salads, for household use; containers for storage and transport of protein-based dietary supplements, for household use. The words would be distinctive for the remaining goods, and also for the public that perceives no meaning in them.

The element ‘&GO’ in the contested sign is the dominant element as it is the most eye-catching due to its size.

Visually, the signs coincide in the word ‘keep’, present in both marks. This word has been found allusive and less distinctive for part of the public and part of the goods. However, the signs differ in their dominant elements, and in on all other word elements, such as ‘keeeper’, ‘keeplit’, ‘&GO’, and in the figurative and stylisation elements of the contested mark. The marks also differ in their beginnings ‘keeeper’/‘keeplit’.

Therefore, the signs are visually similar to 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 element ‘keep’ present in both marks. This word has been found allusive and less distinctive for part of the public and part of the goods. Moreover, it occupies a less prominent position in the marks than the other elements.

The pronunciation differs in the sound of the remaining word elements of the contested mark, which have no counterparts in the earlier sign contrary to the arguments of the opponent.

Therefore, the signs are aurally similar to a low degree.

Conceptually, since the coinciding term ‘keep’ is weak for the public understanding it (for part of the goods) and the other words have no or different concepts, it is concluded that the marks are similar to a low degree only.

For the remaining public that perceive no meaning in the marks, the conceptual aspect does not influence the comparison of the signs.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a less‑distinctive element in the mark for part of the public and for part of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods have been assumed to be identical. The similarities and dissimilarities of the marks have been described in detail in section c).

The level of attention of the relevant public will be average.

The signs are similar to the extent that they share the element ‘keep’. However, the signs differ significantly in the remaining word elements in both marks, and in colours and figurative elements of the contested mark. All these differing elements diminish the relevance of the coinciding but not very prominent elements in the marks, which are likely to be overlooked by consumers when considering the mark as a whole.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T‑488/07, Egléfruit, EU:T:2010:145). Therefore a low degree of visual similarity in the present case is not sufficient to find a likelihood of confusion.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same as is the case here.

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

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 15 473 358 for goods, inter alia, in Class 21;

European Union trade mark registration No 14 779 326 for goods, inter alia, in Class 21.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain a further figurative element namely, the image of a squirrel, which is not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Zuzanna STOJKOWICZ

Erkki Münter

Marine DARTEYRE

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.