OPPOSITION No B 3 048 447

Vaillant GmbH, Berghauser Str. 40, 42859 Remscheid, Germany (opponent), represented by Carsten Popp, Berghauser Str. 40, 42859 Remscheid, Germany (employee representative)

a g a i n s t

Elenos S.r.l., Via G. Amendola, 9, 44028 Poggio Renatico, Italy (applicant), represented by Giammario Ruzzu, Via Gulli, 5, 40068 San Lazzaro di Savena (BO), Italy (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 447 is partially upheld, namely for the following contested goods:

Class 9: Heat sinks; Heat regulating apparatus; Heat regulating apparatus.

2. European Union trade mark application No 17 654 302 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 654 302 for the figurative mark , namely against all the goods in Classes 9 and 11. However, as a consequence of a limitation filed by the applicant, the opposition remained directed against all remaining goods in Class 9. The opposition is based on German trade mark registration No 96 996 and international trade mark registration No 187 879 designating Austria, both for the word mark ‘Geyser’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 03/09/2018, the Office granted the applicant a time limit to submit observations in reply to the notice of opposition and to facts, evidence and arguments submitted by the opponent until 08/11/2018. The applicant did not submit any observations within the set time limit. On 08/01/2019 the applicant requested the Office for a continuation of proceedings and submitted observations. On 22/01/2019, the Office informed the parties that pursuant to Article 105 EUTMR such a request was granted and, therefore, the consequences for the applicant of having failed to observe the time limit were deemed as not occurred.

PROOF OF USE

The applicant states that the opposition should be rejected because the opponent did not prove that the mark on which it relied was in use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use. Moreover, for the request for proof of use to be admissible, it has to be submitted as an unconditional request in a separate document according to Article 10(1) EUTMDR. The applicant´s statement was not submitted in a separate document and, therefore, is also not in compliance with Article 10(1) EUTMDR.

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 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, 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 German trade mark registration No 96 996 for the word mark ‘Geyser’.

a) The goods

The goods on which the opposition is based are the following:

Classes 6, 7, 9, 11 and 21:

Water and steam boilers, economical and rapid heating boilers and/or apparatus, kitchen ranges (cooking stoves), steam and gas cooking apparatus, flushing apparatus; bath, heating, ventilating and lighting apparatus and installations, i.e.: bathtubs, gas ovens, steam and coal-burning ovens optionally composed of copper, brass, zinc, iron, majolica, porcelain, earthenware or kiln-bricks. Shower apparatus, ventilation and heating regulating devices, preheaters, cooling pipes, heating coils, gas burners and oil burners for lighting and heating; boilers and vats, cast, riveted, brazed, welded, stamped, embossed, made of iron, copper, brass and other metal sheets, zinc-plated, tin-plated, lead-plated, enamelled and electroplated; technical pipe fittings, i.e.: valves, pressure gauges/manometers, taps/faucets, water level indicators, thermometers, dampers/gate valves.

The contested goods, after the limitation filed on 08/01/2019, are the following:

Class 9: Heat sinks; Heat regulating apparatus; Heat regulating apparatus; Broadcasting equipment; Transmitters; Radio-frequency transmitter; Apparatus for broadcasting sound, data or images; Wireless high frequency transmission instruments; Radio-frequency receivers; Radio frequency amplifiers; Radio frequency adapters; Radio-frequency components; Demodulators; Modulators; Radio-frequency filters; Radio frequency repeaters; Antennas.

The applicant, in its observations from 08/01/2019, proposed a further limitation by indicating that ‘should the wording "Cooling apparatus for radio-frequency power electronic equipment" be acceptable as a products limitation instead of "Heat regulating apparatus", said limitation is requested as well’. However, where the applicant wishes to withdraw or restrict the contested application, it must do so by way of a separate document. Therefore, the said limitation cannot be accepted.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

The contested heat regulating apparatus (included twice in the applicant’s list) are included in the broad category of the opponent’s heat regulating devices. These goods are considered to be identical.

The contested heat sinks are highly similar to the opponent’s heating coils. Both are metal structures especially designed to conduct and radiate heat from an electrical component (extracted from Collins Dictionary on 18/07/2019 at https://www.collinsdictionary.com/dictionary/english/heat-sink). Nowadays the structure is made out of metal plates and at the time of filing of the earlier mark the structure were mainly curled wires; but both convert electric current into heat (for either air or water). Therefore, the purpose of the goods, the distribution channels, producers and method of use are the same, moreover, these goods are in competition with each other.

The contested broadcasting equipment; transmitters; radio-frequency transmitter; apparatus for broadcasting sound, data or images; wireless high frequency transmission instruments; radio-frequency receivers; radio frequency amplifiers; radio frequency adapters; radio-frequency components; demodulators; modulators; radio-frequency filters; radio frequency repeaters; antennas are dissimilar to the opponent’s goods as their nature, purpose, method of use, distribution channel and producer are different. The opponent’s goods comprise refrigerating/heating technical apparatus and not broadcasting devices, radio transmitters devices used in relation to altering frequency or varying one or more properties of a periodic waveform in the telecommunication field (as the case with demodulators and modulators can be), etc.

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 are specialised goods that can be directed at the general public as well as at business customers with specific professional knowledge or expertise.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.

c) The signs

Geyser
Earlier trade marks	Contested sign

The relevant territory is Germany.

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 ‘Geyser’ is an English word meaning ‘a hole in the Earth’s surface from which hot water and steam are forced out, usually at irregular intervals of time’ (extracted from Collins Dictionary on 18/07/2019 at https://www.collinsdictionary.com/dictionary/english/geyser) and will also be understood in the relevant territory because of the very similar German equivalent, ‘Geysir’. The verbal element has a normal distinctiveness as it is not descriptive, allusive or otherwise weak/non-distinctive for the relevant goods.

The contested sign is composed of a stylised verbal element ‘Geysertek’ and a figurative element. The applicant is correct in so far that words should not be artificially dissected, however, the perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. In this regard, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, in the present case, the Opposition Division is of the view that the relevant public will split the verbal element ‘Geysertek’ into the elements ‘Geyser’ (with meaning and distinctiveness, as explained above) and ‘tek’ which will be perceived by a significant part of the relevant public as an abbreviation of the word ‘technology’ (e.g. ‘Technologie’ in German). Therefore, the Opposition Division concurs with the opponent, that the element ‘tek’ is considered weak in relation to the goods at issue, given that they are of technical nature, as they merely indicate the nature of these goods (27/1/2017, R 1260/2016-5, GALVOTEK LASER (fig.) / GRAVOTECH §28).

The figurative element is distinctive, as it has no relation to the relevant goods, contrary to the opponent’s statement, as it is not a simple geometrical shape and cannot be considered to serve merely decorative purposes. The contested sign has no element that could be considered clearly 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).

Visually, the signs coincide in the distinctive element ‘GEYSER’. The contested sign includes the ending ‘tek’, which is weakly distinctive and a distinctive figurative element. However, the verbal element will have more impact than the figurative element, as the consumer will rather refer to the verbal element than to the figurative element. As the earlier sign is completely included in the beginning of the verbal element of the contested sign, the Opposition Division considers the signs similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the distinctive word ‘Geyser’, present identically in both signs. The pronunciation differs in the ending ‘tek’ of the contested sign. Nevertheless, as this element is weakly distinctive and at the end of the word, it does not undermine the high aural similarity between the signs. As the figurative element is not pronounced, it has no impact in this comparison.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will understand the distinctive, verbal element of both signs ‘Geyser’ and will also perceive the weak element ‘tek’ related to ‘technology’. Therefore, the signs are conceptually highly similar. The figurative element, which does not evoke any concept, will not undermine this similarity.

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.

e) Global assessment, other arguments and conclusion

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).

The identical goods target the general and professional public, who will pay an average to high level of attention. The signs are aurally and conceptually highly similar and visually similar to a higher than average due to the complete inclusion of the earlier sign ‘GEYSER’ in the contested mark.

Furthermore, the relevant public will not pay as much attention to the weak element ‘TEK’ as to the other more distinctive element ‘GEYSER’ of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

Although the contested sign has a distinctive figurative element, the relevant public will rather refer to the distinctive verbal element, which will have a stronger impact, than to the figurative device.

As both signs have the same verbal element, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way, through the suffix ‘tek’ and the figurative element, according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The figurative element, although distinctive, is not enough to differentiate the signs coming from different undertakings. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant German public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 96 996.

The similarity of the goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, on which the opposition is based. As part of the contested goods is dissimilar, the opposition cannot be successful against these goods.

The opponent has also based its opposition on the following earlier trade mark, namely international trade mark registration No 187 879 designating Austria for the word mark ‘Geyser’. Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA	Astrid Victoria WÄBER	Martin EBERL

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.