OPPOSITION No B 2 935 065

Sieger Design GmbH & Co. KG, Schloss Harkotten, 48336 Sassenberg, Germany (opponent), represented by Klawitter Neben Plath Zintler Knpz Rechtsanwälte, Kaiser-Wilhelm-Str. 9, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Shenzhen Aohao Science and Technology Co., Ltd., Room 1906, Block b, Jianye Building, Nonglin Road, Futian District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Arcade & Asociados, c/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 11/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 935 065 is upheld for all the contested goods.

2. European Union trade mark application No 16 651 002 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 651 002 (figurative mark: ), namely against all of the goods in Classes 11 and 21. The opposition is based on, inter alia, European Union trade mark registration No 4 669 909 (figurative mark: ). The opponent invoked Article 8(1)(a) and (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 4 669 909 (figurative mark: ).

a) The goods

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

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 21: Household or kitchen utensils and container (not of precious metals or coated therewith), combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes, steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware included in this class; other than household or kitchen utensils including in particular hand-operated tin openers and frozen food saws, corkscrews, paring and household knives, screw caps and crown corks, bottle openers, corkscrews, foil cutters, stoppers for sekt (sparkling wine) bottles, of metal and not of metal, knife sharpeners, apple corers, pastry wheels, vegetable peelers, baked potato forks, tin piercers, nutcrackers, not of precious metal, lever corkscrews, cheese slicers, pizza cutters, ice-cream scoops, serving tongs, stoppers for wine bottles, of metal and not of metal, quick peelers, jar openers, garlic presses, pull peelers, drip trays, baking brushes, spaghetti spoons, potato mashers, whisks, fish slices, basting spoons for kitchen use, slotted spoons, ladles, meat forks, vegetable slicers, waiter's corkscrews, bell corkscrews, champagne tongs, hand-operated tin opening machines for catering and uncorking machines, all the aforesaid goods hand-operated and electric.

The contested goods are the following:

Class 11: Electric torches; Ceiling lights; Chinese lanterns; Aquarium lights; Diving lights; Headlights for automobiles; Bicycle lights; Roasting spits; Griddles [cooking appliances]; Coffee machines, electric; Barbecues; Electric appliances for making yogurt; Bread-making machines; Fireplaces, domestic; Water distribution installations; Irrigation sprinklers; Flexible pipes being parts of shower plumbing installations; Flexible pipes being parts of sink plumbing installations; Bath installations; Hand-held showers; Pocket warmers; Bed warmers.

Class 21: Mills for household purposes, hand-operated; Noodle machines, hand-operated; Garlic presses [kitchen utensils]; Knife rests; Coffee grinders, hand-operated; Coffee filters, non-electric; Coffeepots, non-electric; Nozzles for watering hose; Sprinklers; Ironing board covers, shaped; Toilet paper dispensers; Soap dispensers; Ironing boards; Sprinklers for watering flowers and plants; Gardening gloves; Oven mitts; Barbecue mitts.

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 electric torches; ceiling lights; chinese lanterns; aquarium lights; diving lights; headlights for automobiles; bicycle lights are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested roasting spits; griddles [cooking appliances]; barbecues; bread-making machines are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested fireplaces, domestic are included in the broad category of the opponent’s apparatus for heating. Therefore, they are identical.

The contested water distribution installations; bath installations include as a broader category, or overlap with, the opponent’s apparatus for water supply. 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 contested irrigation sprinklers; flexible pipes being parts of shower plumbing installations; flexible pipes being parts of sink plumbing installations; hand-held showers are at least similar to the opponent’s apparatus for water supply. The purpose of the goods may coincide. They may be directed at the same relevant consumer via the same distribution channels. Producers may also coincide.

The contested pocket warmers; bed warmers are at least similar to the opponent’s apparatus for heating. The purpose of the goods may coincide. They may be directed at the same relevant consumer via the same distribution channels. Producers may also coincide.

The contested coffee machines, electric; electric appliances for making yogurt are similar to the opponent’s apparatus for cooking. The nature of these goods coincides. They may be sold through the same distribution channel and directed at the same relevant public. The producers may also coincide.

Contested goods in Class 21

The contested mills for household purposes, hand-operated; noodle machines, hand-operated; garlic presses [kitchen utensils]; knife rests; coffee grinders, hand-operated; coffee filters, non-electric; coffeepots, non-electric; toilet paper dispensers; soap dispensers; ironing boards are included in the broad categories of, or overlap with, the opponent’s household or kitchen utensils and containers (not of precious metal or coated therewith). Therefore, they are identical.

The contested oven mitts; gardening gloves; barbecue mitts; ironing board covers, shaped are similar to the opponent’s household or kitchen utensils (not of precious metal or coated therewith). The nature of the goods is broadly similar being for use in the home (of which the garden is a part). They may be sold in the same distribution channels and directed at the same relevant public. In addition they may come from the same producers.

The contested sprinklers; sprinklers for watering flowers and plants; nozzles for watering hose are at least similar to the opponent’s apparatus for water supply in Class 11. The purpose of the goods may coincide. They may be directed at the same relevant consumer via the same distribution channels. Producers may also coincide.

b) 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 or similar are directed at the public at large and at the professional public.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price. Some apparatus for cooking, for example, are purchased infrequently, are usually quite costly and will warrant a higher than average degree of attention.

c) 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘SIEGER’ is meaningful in certain territories, for example where German is understood it means ‘winner’. ‘Sieges’ is the genitive form of ‘Sieg’ (meaning ‘winning’ or ‘victory’). ‘SIEGER’ and even ‘Sieges’ may be considered laudatory terms relating to the quality of the goods and would be therefore a weaker element for the German speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for whom the coincidence between the signs occurs in distinctive elements.

The earlier mark is a figurative mark with the verbal element ‘SIEGER’ which is meaningless and distinctive. It appears in a basic black capital typeface over which appears a black star with eight points. Five point stars are often used as an indication of quality. The eight point star in question may be perceived by part of the public as relating to the star quality of the products. For this part its distinctiveness would be limited. For the rest of the public, who notice that it is not the typical five point quality star, it has no meaning and is a distinctive element. 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).

No element is more dominant than another in the earlier sign.

The contested sign is a figurative mark that is composed of the verbal element ‘sieges’ depicted in a lower case black fairly basic typeface, apart from the letter ‘i’ which is a stylised depiction of a grey rose with a thick thorny black stem. ‘sieges’ is meaningless and is distinctive. The figurative device of the rose is meaningless with respect to most of the goods in question, and so is distinctive for those goods. For gardening gloves, for example, it may be perceived as referring to the intended purpose of the goods and would be weak in relation to these goods which relate to gardening. In any case, it is less dominant in the sign and may only be perceived clearly on closer scrutiny.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the first 5 letters ‘SIEGE’ of the distinctive verbal elements in the signs which are both displayed in a black fairly basic typeface. They differ in the last letters of those verbal elements, ‘r’ in the earlier mark and ‘s’ in the contested sign. They also differ regarding the less dominant figurative device of the rose (the distinctive character of which depends on the goods in question), the star device of the earlier mark (the distinctive character of which depends on the consumer perception), the typefaces, and the colour grey that only appears in the contested sign.

Therefore, the signs are visually similar to at least an above average degree, slightly higher when the figurative devices are considered weak.

Aurally, the pronunciation of the signs coincides at the beginning in the sound of the letters ‛SIEGE’, present identically in both signs in a distinctive element. They differ in the pronunciation of the last letter of that verbal element, ‘r’ of the earlier mark and ‘s’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although neither of the signs has a meaning as a whole the figurative elements, included in both signs, will be associated with the meanings explained above. Since the signs will be associated with different meanings the signs 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.

d) 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, despite the presence of an element in the mark with limited distinctiveness for part of the public, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

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, § 22 et seq.).

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 marks may be offset by a lower degree of similarity between the goods, 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).

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). Even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case the goods are identical or similar. The signs are visually similar to at least an above average degree, aurally highly similar and they are conceptually not similar. The degree of attention of the relevant public varies from average to above average and the earlier mark has a normal degree of distinctive character.

The signs coincide at the beginning in all but the last letter of their only verbal elements which are also distinctive. This is where the consumer’s attention will be focused, as mentioned, as consumers read from left to right and will use the verbal element when referring to the marks. The signs differ in their figurative devices and this is what leads to them being conceptually not similar. However, the figurative elements have a lesser impact on the consumer than the verbal elements, regardless of their distinctive character.

The similarities between the signs in their distinctive verbal elements outweigh the differences which are insufficient to avoid a likelihood of confusion among the relevant public, both general and professional. This can be said even when the figurative devices are considered to be distinctive elements given their lesser impact on the consumer.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 669 909 (figurative mark: ). It follows that the contested trade mark must be rejected for all the contested goods found to be identical and similar to the opponent’s goods.

As the earlier right European Union trade mark registration No 4 669 909 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Swetlana BRAUN

Lynn BURTCHAELL

Marta Maria CHYLIŃSKA

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.