CH COOPER & HUNTER | Decision 2619735
Date Published: Sep 24, 2017
OPPOSITION No B 2 619 735
Galileo S.p.A., Strada Galli, 27, 00019 Villa Adriana (RM), Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Tomacelli, 146, 00186 Rome, Italy, (professional representative)
a g a i n s t
Climate Control Technologies PC, 14-16 Churchill Way, Cardiff CF10 2DX, Wales, United Kingdom (applicant), represented by Katarzyna Binder-Sony, First Floor, 3 More London Riverside, London SE1 2RE, United Kingdom, (professional representative).
On 14/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 619 735 is upheld for all the contested goods.
2. European Union trade mark application No 14 494 454 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 494 454. The opposition is based on EUTM No 13 720 503. 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.
- The goods
The goods on which the opposition is based are the following:
Class 11: Electric hot-water bottles; steam sterilizers; ventilating fans; fan heaters; convector heaters; electric blankets; lamps; spot lamps; lightbulbs; hair driers [dryers]; space heaters; electric coffee percolators; electric coffee urns; toasters; ovens; cooking rings; frying machines; kettles; barbecues; contact grills; grill heating plates; apparatus for preparing waffles, muffins and doughnuts; fridges; freezers; electric popcorn making machines; machines for making ice cream; candy floss machines; bread baking machines.
The contested goods are the following:
Class 11: Air conditioners; air conditioners, namely, window, wall, mobile, ceiling mounted, cassette, duct, columns, multi-split systems conditioners, multi-zone systems and high-tech equipment for the conditioning of multi-storey buildings; water coolers; water coolers, namely, floor, table, with aeration and filtration built-in system water coolers; heaters; convectors; fan heaters; infrared heaters; oil heaters; humidifiers; ultrasonic and traditional humidifiers; household air cleaners; HEPA, ULPA, UV cleaners; water purification systems.
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 applicant’s list of goods to show the relationship of individual goods with a broader category, should be exclusive and restricts the scope of protection only to the specifically listed goods.
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 air conditioners; air conditioners, namely, window, wall, mobile, ceiling mounted, cassette, duct, columns, multi-split systems conditioners, multi-zone systems and high-tech equipment for the conditioning of multi-storey buildings overlap with the opponent’s convector heaters, as all these devices produce warmth. Therefore, they are identical.
The contested heater includes, as a broader category, the opponent’s convector heaters. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
A convector is a space-heating device from which heat is transferred to the surrounding air by convection. Therefore, the contested convectors are identical to the opponent’s convector heaters, as they are synonyms.
Fan heaters are identically contained in both lists of goods.
The contested infrared heaters; oil heaters are highly similar to the opponent’s convector heaters. As they are all heaters, they have the same purpose, nature and distribution channels; they target the same public and are in competition.
The contested water coolers; water coolers, namely, floor, table, with aeration and filtration built-in system water coolers are similar to the opponent’s fridges. They can have the same purpose, of refrigeration, and are sold in the same outlets; they target the same public and are produced by the same companies.
The contested humidifiers; ultrasonic and traditional humidifiers are similar to the opponent’s convector heaters. A humidifier is a device for keeping the atmosphere in a room moist. It is also used during winter to warm rooms. Therefore, they have the same purpose, of enhancing welfare in an apartment, can have the same purpose, namely warming a room, and are sold in the same shops.
The contested water purification systems are systems that remove bacteria from water. They are similar to the opponent’s steam sterilizers. They have the same purpose, of purification, can target consumers working in the medical field and have the same distribution channels.
The contested household air cleaners; HEPA, ULPA, UV cleaners are various types of air filters; HEPA stands for high efficiency particulate air, ULPA stands for ultra low penetration air and UV stands for ultraviolet. HEPA, ULPA and UV filters have many applications, including use in medical facilities and homes. The purpose of these disputed goods is to guarantee the wellbeing of those entering the building. Therefore, they are sold in the same outlets and target the same consumers who want to improve the atmosphere of the building. They are similar to a low degree to the opponent’s convector heaters.
The applicant argued that the contested goods require a good understanding of technology and are expensive, and, to that extent, they would be dissimilar to the opponent’s goods. The Opposition Division disagrees with this statement, insofar as the contested goods include, inter alia, humidifiers, household air cleaners and heaters, which also target the general public. Moreover, the important point is the way the goods are registered, not the way the applicant considers they will be purchased.
- 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.
The applicant considers that the relevant public is composed of customers of technical goods who will display a high degree of attention. Nevertheless, the Opposition Division disagrees with this undemonstrated opinion and considers that the goods found to be identical or similar are directed at the public at large.
The public’s degree of attentiveness may vary from average to rather high, depending on the price of the goods.
- The signs
KOOPER | CH COOPER & HUNTER |
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.
In the present case, the comparison will therefore focus on parts of the relevant public that pronounce the letters ‘C’ and ‘K’ in the same way, that is the French-, Polish- Portuguese- and Spanish-speaking parts of the relevant public.
It is important to take into account 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.
In the contested sign, the element ‘CH’ will be perceived as the initials of ‘COOPER & HUNTER’. Therefore, although ‘CH’ is the first element of the sign, its strength is somewhat reduced given its significance as initials (see, in that regard, 05/07/2016, R 500/2015-5, IMS ITALIAN MASTER SOMMELIER (fig.) / Court of Master Sommeliers (fig.) et al., § 58). To that extent, the first element on which the relevant public will focus is the element ‘COOPER’.
It cannot be totally excluded that a part of the public under analysis may perceive the element ‘CH’ as referring to Switzerland. For the part of the public that understands it as referring to a geographical indication, its influence is limited because geographical origin plays a secondary role (31/01/2012, T-205/10, La victoria de Mexico, EU:T:2012:36, § 72).
The words ‘KOOPER’, ‘COOPER’ and ‘HUNTER’ will be perceived as surnames by the part of the public under analysis. The applicant pointed out that the English-speaking part of the public might also understand ‘COOPER’ as a person who makes barrels and ‘HUNTER’ as a person who hunts wild animals. While this may be true, it remains that this is not the case for the public under analysis, namely the Spanish-, French-, Portuguese- and Polish-speaking parts of the relevant public.
Visually, the signs coincide in the string of letters ‘OOPER’, namely six letters out of seven in the earlier mark. They differ in the additional elements ‘CH’, ‘&’ and ‘HUNTER’ and in the letter preceding the string of letters ‘OOPER’, ‘K’ in the earlier mark and ‘C’ in the contested sign. Given the limited impact of ‘CH’ in the contested sign, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘C/K-OOPER’. The pronunciation differs in the sound of the word ‘HUNTER’ and the sound of the ampersand (which will be pronounced, depending on the language, as ‘y, ‘et’, etc.) in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, for part of the public under analysis, the signs are meaningless and therefore no conceptual comparison is possible. Moreover, although the public under analysis will perceive surnames in the marks at issue, these surnames do not evoke any concepts and, therefore, they remain neutral. Finally, for the part of the public for which ‘CH’ refers to Switzerland, the signs are conceptually dissimilar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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).
In the present case, the conflicting signs are visually and aurally similar to an average degree and the conceptual comparison has no influence for the vast majority of the relevant public, while for the other part the sign are conceptually dissimilar. The goods are identical or similar to various degrees and the earlier mark has a normal degree of distinctiveness.
Moreover, 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).
Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In decision 26/03/2015, B 2 193 087, the marks at issue were ‘LEYDA’ and ; therefore, unlike the present case, the comparison was made between a figurative mark and a word mark.
In decision 26/01/2017, B 2 661 950, the marks in conflict were ‘PER UNA’ and ‘UNO & UNA’. Therefore, unlike the present case, the identical word is depicted at the ends of both signs, whereas the dissimilar element is the first element of both signs.
In decision 01/12/2016, B 2 643 289, the signs were ‘PER UNA’ and . Therefore, unlike the present case, one mark is figurative and the verbal element that the signs have in common is the final element of the earlier mark.
Finally, the applicant refers to decision 07/08/2012, B 1 865 255, in which, according to the applicant, the marks at issue were ‘Orwell’ and ‘H&M Rowells’. However, in this decision, the marks at issue are different, namely and
; therefore, the applicant’s reasoning cannot be followed.
Considering all the above, there is a likelihood of confusion on the part of the public for which the letters ‘C’ and ‘K’ have the same pronunciation, such as the French-, Polish-, Spanish- and Portuguese-speaking parts of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s earlier EUTM. It follows that the contested trade mark must be rejected for all the contested goods in Class 11.
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Ignacio IGLESIAS ARROYO | Patricia LOPEZ FERNANDEZ DE CORRES | Martina GALLE |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.