OPPOSITION No B 2 971 854

KME Germany GmbH & Co KG, Klosterstrasse 29, 49074 Osnabrück, Germany (opponent), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

SC Ratio Term SRL, str. Careiului, nr. 164, 440187 Satu Mare, Romania (applicant).

On 31/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 971 854 is upheld for all the contested goods, namely:

Class 11: Regulating and safety accessories for water and gas installations; burners, boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment; refrigerating and freezing equipment; heating, ventilating, and air conditioning and purification equipment (ambient); sanitary installations, water supply and sanitation equipment.

2. European Union trade mark application No 16 750 713 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 750 713 for the figurative mark , namely against all the goods and services in Classes 11 and 37. The opposition is based on European Union trade mark registration No 4 577 251 for the word mark ‘Q-Tec’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary note on the scope of the opposition

As stated above, the scope of the opposition initially covered all the goods and services specified in Classes 11 and 37 of the contested EUTM application.

Subsequently, on 20/02/2018, the opponent requested a limitation of the scope of its opposition to some of the goods covered by Class 11 only. The opposition against the following goods was maintained:

Class 11: Regulating and safety accessories for water and gas installations; burners, boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment; refrigerating and freezing equipment; heating, ventilating, and air conditioning and purification equipment (ambient); sanitary installations, water supply and sanitation equipment.

Accordingly, the Opposition Division will proceed considering only the contested goods in Class 11, as listed above.

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 6: Unwrought and partly wrought common metals and their alloys; pipes and tubes of metal; pipes and pipework covered in plastic, in particular heat-insulated pipes of copper or copper alloy; parts for pipe connections, and pipe fastenings of metal and/or plastic.

Class 11: Pipes and pipework covered in plastic for use in heating, ventilation, refrigerating and sanitary installations.

Class 17: Insulating flexible tubes and shaped parts of plastic for sheathing installation pipes, plastic insulating objects for the connecting and branch-off points of insulated pipework.

The contested goods are the following:

Class 11: Regulating and safety accessories for water and gas installations; burners, boilers and heaters; food and beverage cooking, heating, cooling and treatment equipment; refrigerating and freezing equipment; heating, ventilating, and air conditioning and purification equipment (ambient); sanitary installations, water supply and sanitation equipment.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces 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 include, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the methods of use and whether they are in competition with each other or complementary to each other.

The contested regulating and safety accessories for water and gas installations may include accessories such as pipes, and therefore overlap with the opponent’s pipes and pipework covered in plastic for use in heating, ventilation, refrigerating and sanitary installations in Class 11. Consequently, they are identical.

The contested burners, boilers and heaters are complementary to the opponent’s pipes and pipework covered in plastic for use in heating installations in Class 11, as the latter are used as parts for the contested goods. Furthermore, they target the same consumers through the same distribution channels and may also have the same producers. Therefore, they are similar to an average degree.

The contested refrigerating and freezing equipment is similar to an average degree to the opponent’s pipes and pipework covered in plastic for use in refrigerating installations in Class 11, as the opponent’s goods are parts of the contested goods. They have the same distribution channels and producers. They also target the same consumers.

The contested heating, ventilating, and air conditioning and purification equipment (ambient) is similar to an average degree to the opponent’s pipes and pipework covered in plastic for use in heating and ventilation installations in Class 11, as these goods are complementary. They have the same producers and target the same consumers through the same distribution channels.

The contested sanitary installations, water supply and sanitation equipment and the opponent’s pipes and pipework covered in plastic for use in sanitary installations in Class 11 are functionally complementary. Furthermore, they target the same consumers through the same distribution channels and may also have the same producers. Therefore, they are similar to an average degree.

The opponent’s pipes and pipework covered in plastic, in particular heat-insulated pipes of copper or copper alloy in Class 6 are parts of or are used in connection with the contested food and beverage cooking, heating, cooling and treatment equipment, making them complementary. Furthermore, they are distributed through the same retailers to the same relevant public and they have the same producers. Therefore, they are similar to an average degree.

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 contested goods target the general and professional publics and the goods of the earlier mark target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Q-Tec
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.

Some of the verbal elements of the signs are not meaningful in certain territories, for example where Spanish is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public such as the public in Spain.

In the case of word marks, the word itself is protected, and not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters or in a combination of both.

The earlier trade mark is a word mark consisting of a combination of letters and a hyphen, ‘Q-Tec’. The element ‘Q’ has no meaning for the goods at issue and is, therefore, distinctive. The element ‘Tec’ may be perceived by the relevant public as an abbreviation for ‘técnico/tecnología’ (technical/technology) and will as such refer to the technical nature of the relevant goods. Therefore, ‘tec’ is considered weak, or even non-distinctive, for the relevant public in relation to the goods at issue.

The contested sign is a figurative mark containing the verbal element ‘QTEQ’ in grey upper case letters. Above the verbal element is a figurative element consisting of a large letter ‘Q’ in a stylised bright green font. The verbal element ‘QTEQ’ has no meaning for the relevant public and is, therefore, distinctive. The figurative element of the letter ‘Q’ will be perceived as reinforcing the first letter of the sign’s verbal element, ‘QTEQ’. As for the remaining stylistic elements, these must be considered to have limited impact on the assessment, as they primarily serve a decorative purpose, namely to bring the verbal elements to the attention of the public. None of the elements in the contested sign is considered visually more dominant than other elements.

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).

Furthermore, 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 verbal elements at the beginnings of the signs, ‘Q’ and ‘TE’, coincide. The signs differ in their last letters, ‘C’ and ‘Q’, and in the additional hyphen between the first and second letters of the earlier sign. Furthermore, they differ in the figurative element of the letter ‘Q’ and the stylistic elements of the contested sign, which for the reasons stated above have limited impact.

Taking the above into account, the signs are visually similar to an average degree.

Aurally, both signs will be pronounced as ‘KU/TEK’. The figurative letter ‘Q’ of the contested sign will most likely not be pronounced, as it may be perceived as a decorative letter used to reiterate and enforce the first letter of the verbal element of the contested sign, ‘QTEQ’.

Therefore, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Tec’ of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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 a weak, or even non‑distinctive, element in the mark, as stated above in section c) of this decision.

5. 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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are partly identical and partly similar to an average degree. The relevant public for assessing likelihood of confusion in the present case is the professional public, the degree of attention of which varies from average to high. The earlier mark as a whole enjoys an average degree of inherent distinctiveness.

The signs are visually similar to an average degree, as they have the letters ‘QTE’ in common at the beginnings of the signs. Aurally, they are identical. The signs are not conceptually similar.

The differences between the signs lie in their last letters and in the stylistic elements of the contested sign, which have limited impact. The difference originating from the figurative element of the letter ‘Q’ of the contested sign is, in the Opposition Division’s view, not sufficient to differentiate the signs, as it merely reinforces the coinciding first letter, ‘Q’, of the signs’ verbal elements. Furthermore, despite the presence of a weak, or even non-distinctive, element, ‘Tec’, in the earlier mark, the signs are still aurally identical, which contributes to a further risk of confusion between the two signs.

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 high 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 view of all the relevant factors in the present case, in particular the fact that the signs are aurally identical, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public, even when a higher than average degree of attention is displayed.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 577 251. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. It follows from the above that the contested trade mark must be rejected for all the contested 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 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

Martin EBERL

Tu Nhi VAN

Tobias KLEE

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.