OPPOSITION Nо B 3 104 549

 

Sonifer S.A., Av. de Santiago, 86, 30007 Murcia, Spain (opponent), represented by María Desamparados Díaz Pachezo, Centro de Negocios Vega Plaza Oficina 14 Avda. de Granada s/n, 30500 Molina del Segura (Murcia), Spain (professional representative) 

 

a g a i n s t

 

Jinchannel Import & Export Co., Ltd., Room 301, Unit 1, block E, Building T4, Tian'an Cyper Park, Huangge North Road, Longgang District, Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 Rue Ramey, 75018 Paris, France (professional representative).

On 24/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 104 549 is partially upheld, namely for the following contested goods: Class 9: Mouse [computer peripheral]; telecommunication apparatus in the form of jewellery; digital photo frames; tripods for cameras. Class 11: Light bulbs, electric; bicycle lights; kettles, electric; beverage cooling apparatus; air purifying apparatus and machines; electric fans for personal use; heating apparatus, electric; bath fittings; water filtering apparatus; socks, electrically heated.
2.		European Union trade mark application No 18 096 108 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 18 096 108 ‘Orbecco’ (word mark). The opposition is based on European Union trade mark registration No 5 827 233 ‘ORBEGOZO’ (word mark). 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.

  

a) The goods

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

 

Class 7: Machines for washing, wringing, drying and ironing clothes and machines for washing and drying dishes, electromechanical apparatus for the kitchen, namely blenders, grinders, mixers, fruit presses, electric knives, vacuum cleaners, electric parquet wax-polishers, electric polishing apparatus and machines for household use, electric apparatus to apply cleaning foam to mats and carpets.

Class 9: Apparatus for recording, reproduction and amplification of sound and images, computers, micro-computers and printers therefor, electric magnets, coffee dispensers.

Class 11: Stoves, heaters, cookers, ovens, toasters, electric grills, stove grills, oven grills, water-heaters, refrigerators, freezers, apparatus for lighting, heating, cooking, refrigerating, ventilating and air-conditioning, clothes driers.

Class 34: Electric lighters.

The contested goods are the following:

Class 9: Mouse [computer peripheral]; time recording apparatus; scales; signal bells; telecommunication apparatus in the form of jewellery; digital photo frames; tripods for cameras; switches, electric; divers' masks; electric door bells.

Class 11: Light bulbs, electric; bicycle lights; kettles, electric; beverage cooling apparatus; air purifying apparatus and machines; electric fans for personal use; heating apparatus, electric; bath fittings; water filtering apparatus; socks, electrically heated.

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 and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. 

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 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 9

The contested mouse [computer peripheral]; telecommunication apparatus in the form of jewellery are at least similar with the opponent’s computers in Class 9 since they coincide at least in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested digital photo frames; tripods for cameras are at least similar with the opponent’s apparatus for reproduction of images as they coincide, at least, in relevant public and distribution channels. Furthermore they are complementary.

The contested time recording apparatus; scales; signal bells; switches, electric; divers' masks; electric door bells comprise very specific products that do not have anything in common with any of the opponent’s goods. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 11

The contested light bulbs, electric; bicycle lights are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested kettles, electric are included in the broad category of the opponent’s water-heaters. Therefore, they are identical.

The contested beverage cooling apparatus are included in the broad category of the opponent’s refrigerators. Therefore, they are identical.

The contested air purifying apparatus and machines; electric fans for personal use are included in the broader category of the opponent’s ventilating apparatus. Therefore, they are identical.

The contested heating apparatus, electric; socks, electrically heated are included in the broader category of the opponent’s heaters. Therefore, they are identical.

The contested bath fittings overlaps with the opponent’s water-heaters. Therefore, they are identical.

The contested water filtering apparatus are similar with the opponent’s water-heaters as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

 

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 at least similar are directed at the public at large and as well as business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

c) The signs

 

ORBEGOZO	Orbecco
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 earlier trade mark’s might be perceived as a surname by the Spanish-speaking consumers. Since this factor might enhance the conceptual difference between the signs, the Opposition Division finds appropriate to focus the comparison on the part of the public for which the signs do not convey any clear meaning and are, therefore, distinctive. For instance, the Italian-speaking consumers.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that 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 and aurally, the signs coincide in the sequence of letters ‘ORBE*O’ whereas they differ in the letters ‘GOZ’ of the earlier mark and ‘CC’ of the contested application.

Since both marks are word marks the use of upper- or lower-case letters is immaterial. Moreover, a visual similarity is found among of the shape of the letters ‘G and O’ of the earlier mark and the two ‘C’ of the contested application. Therefore, the signs are visually and aurally similar to an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity 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.

 

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

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found partly identical, partly at least similar and partly dissimilar. They target both the general and professional public. The degree of attention is considered to be average. The degree of distinctiveness of the earlier mark is normal.

The signs under comparison have been found visually and aurally similar to an average degree insofar as they coincide in the sequence of letters ‘ORBE*O’. Specifically, the signs mostly coincides in their initial letters i.e. those where consumers tend to focus.

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods are likely to think that they come from the same undertaking or from economically linked undertakings.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for which the signs do not convey any clear meaning, such as for the Italian-speaking consumers. 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 sign must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

  

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

  

 

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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.