OPPOSITION Nо B 3 104 088

Josef Sigl, Brauhausgasse 2, 5162 Obertrum am See, Austria (opponent), represented by Cms Reich-Rohrwig Hainz Rechtsanwälte GmbH, Gauermanngasse 2, 1010 Wien, Austria (professional representative)

a g a i n s t

Fangguo Jiang, No. 59, Qiliyu Village, Liantang Village Committee, Rongjiang Town, Xing'an County, Guangxi, People’s Republic of China (applicant), represented by Manuel de Arpe Tejero, Calle Islas de Cabo Verde 86 1º, 28035 Madrid, Spain (professional representative).

On 17/12/2020, the Opposition Division takes the following

DECISION:

1.

Opposition No B 3 104 088 is partially upheld, namely for the following contested goods: Class 21: Mess-tins [rice cooking canteens]; mess-tins; lunch boxes; bento boxes; scoops for household purposes; cups, not of precious metal; plates not of precious metal; cruet stands; basins [bowls]; household or kitchen containers; cutting boards for the kitchen; napkin holders; chopsticks; mixing spoons [kitchen utensils]; ice tongs; salad tongs; ice cream scoops; serving scoops [household or kitchen utensil]; mugs, not of precious metal; drinking cups [not of precious metal].

2.

European Union trade mark application No 18 122 809 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 some of the goods and services of European Union trade mark application No 18 122 809 (figurative mark), namely against some of the goods in Class 21. The opposition is based on Austrian trade mark registration No 268 725 ‘EINFACH LEBEN’ (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 21: Glasses; glassware, not included in other classes.

The contested goods are the following:

Class 21: Mess-tins [rice cooking canteens]; mess-tins; lunch boxes; bento boxes; scoops for household purposes; cups, not of precious metal; plates not of precious metal; cruet stands; basins [bowls]; household or kitchen containers; cutting boards for the kitchen; napkin holders; chopsticks; mixing spoons [kitchen utensils]; ice tongs; salad tongs; ice cream scoops; serving scoops [household or kitchen utensil]; mugs, not of precious metal; drinking cups [not of precious metal]; soap boxes; soap holders; towel rails and rings; toothbrush holders; toilet brush holders.

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.

The contested cups, not of precious metal; mugs, not of precious metal; drinking cups [not of precious metal] are highly similar to the opponent’s glasses because they coincide in nature, purposes and methods of use. They are distributed through the same commercial channels to the same relevant public. Moreover, they are manufactured by the same undertakings.

The contested mess-tins [rice cooking canteens]; mess-tins; lunch boxes; bento boxes; scoops for household purposes; plates not of precious metal; cruet stands; basins [bowls]; household or kitchen containers; cutting boards for the kitchen; napkin holders; chopsticks; mixing spoons [kitchen utensils]; ice tongs; salad tongs; ice cream scoops; serving scoops [household or kitchen utensil] are all kitchen utensils and containers. These goods are, at least, similar to a low degree to the opponent’s glassware, not included in other classes since they serve a somewhat similar purpose, in so far as they are used in the preparation, storage or serving of food and beverage. They can also coincide in the relevant public and distribution channels.

The opponent states that the contested soap boxes; soap holders; towel rails and rings; toothbrush holders; toilet brush holders are similar to the opponent’s goods since these goods are frequently made of glass. However, the mere fact that these goods may be made of glass is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite different. Furthermore, neither they are complementary nor in competition. Therefore, they are dissimilar.

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 similar to varying degrees are directed at the public at large. The degree of attention is considered to be average

c) The signs

EINFACH LEBEN
Earlier trade mark	Contested sign

The relevant territory is Austria.

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 verbal elements of the marks ‘EINFACH/EINFACHES’ and ‘LEBEN’ are meaningful in the relevant territory. ‘LEBEN’ will be understood as ‘course of life’ (information extracted from Duden Dictionary on 11/12/2020 at https://www.duden.de/rechtschreibung/Leben) and ‘EINFACH/EINFACHES’ means, inter alia, ‘easy to understand, feasible; can be solved without effort; uncomplicated, not difficult’ (information extracted from Duden Dictionary on 11/12/2020 at https://www.duden.de/rechtschreibung/einfach_einmal_simpel; translation by the examiner). These verbal elements have no direct or indirect link to the relevant goods and therefore, they are considered distinctive.

The earlier mark consists of the word combination ‘EINFACH LEBEN’ which will be understood for the relevant public as ‘simple life’.

The contested mark is a figurative mark composed of the verbal elements ‘EINFACHES LEBEN’ depicted in a slightly stylised typeface where the verbal element ‘LEBEN’ is depicted below the verbal element ‘EINFANCHES’ and in a smaller size. These elements will be understood by the relevant public as ‘simpler life’, and as they have no direct or indirect relation to the relevant goods, they are considered distinctive. Above these verbal elements, a depiction which seems to be an unfinished black hexagon appears. As it has no relation to the goods in question, it is distinctive.

The stylisation of the verbal elements in the contested sign will be merely perceived as a graphical means of bringing the verbal elements to the attention of the public and, therefore, its impact on the comparison of the signs will be limited.

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). This principle is fully applicable to the case in question, where the consumers would focus on the verbal element, which will naturally be seen as the name of the product. Therefore, the figurative element of the contested mark will have a limited impact in the overall impression of the sign.

The word ‘EINFACHES’ and the figurative element are the codominant elements in the contested sign, as they are the most eye-catching.

Visually, the signs coincide in ‘EINFACH** LEBEN’ which makes up the whole of the earlier mark. They differ in the letters ‘ES’ placed at the end of the first element of the contested mark and in the figurative element of the contested sign and its stylisation which, as seen above, are of lesser impact.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EINFACH LEBEN’, present identically in both signs. The pronunciation only differs in the sound of the letters ‘ES’ of the first element in the contested mark which will be practically unnoticed.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.  Both signs will be associated with a very similar meaning. Therefore, taking into account the figurative element in the contested mark, the signs are conceptually highly 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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 (recital 11 of the EUTMR). 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 (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).

The goods are partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public composed by the public at large, is average. The earlier mark is considered to have a normal degree of distinctiveness.

The signs are visually similar to an above average degree and aurally and conceptually highly similar. The earlier mark is entirely incorporated in the contested sign. The differences between the signs are confined to the additional two letters in the first verbal element of the signs as well as the typeface and the figurative element of the contested mark, which, as explained above, have a limited impact overall. Therefore, these differences are not capable of outweighing their similarities, even in relation to lowly similar goods by application of the above-mentioned principle of interdependence.

Moreover, 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. Indeed, 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 according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, consumers could be led to believe that the contested mark is a variation or a newer version of the earlier mark and will be led to believe that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees 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

 

Inés GARCIA LLEDO

Claudia SCHLIE

Helen Louise MOSBACK

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.