EKORAD | Decision 2592841 - KORADO, a.s. v. Keith Bastian
Date Published: Oct 1, 2017
OPPOSITION No B 2 592 841
Korado, a.s., Bří Hubálků 869, 56002 Česká Třebová, Czech Republic (opponent), represented by Lukáš Dlabáček, Bolzanova 5, 618 00 Brno, Czech Republic (professional representative)
a g a i n s t
Keith Bastian, 715 Aylestone Road, Leicester LE2 8TG, United Kingdom (applicant), represented by Sanderson & Co., D2 Knowledge Gateway, Nesfield Road, Colchester, Essex CO4 3ZL, United Kingdom (professional representative).
On 01/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 592 841 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 392 716. The opposition is based on European Union trade mark registrations No 5 039 342 and No 11 120 581, international trade mark registration No 741 202 designating Spain, Ireland, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Germany, Finland and France, Czech trade mark registrations No 171 983 and No 221 119, and Slovak trade mark registration No 172 929. The opponent invoked Article 8(1)(b) EUTMR.
Proof of use of earlier European Union trade mark registration No 5 039 342, international trade mark registration No 741 202, Czech trade mark registrations No 171 983 and No 221 119, and Slovak trade mark registration No 172 929 was requested by the applicant (i.e. all the earlier marks, except for European Union trade mark registration No 11 120 581 which was not yet subject to proof of use requirement). However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.
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 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 European Union trade mark registration No 5 039 342 for the word mark ‘KORADO’, and Czech trade mark registration No 171 983 for the figurative sign .
- The goods
The goods on which the opposition is based are, inter alia, the following:
- European Union trade mark registration No 5 039 342
Class 11: Heating apparatus, radiators, central heating radiators, electric radiators, heating plates, water heaters, radiator caps, heating dampers, heat regenerators, hot water heating installations, expansion tanks for central heating installations, heat exchangers, pipe line cocks, washers for water taps, air conditioning apparatus and installations, sanitary apparatus and installations, water conduits installations, taps and plumbing fixtures.
- Czech trade mark registration No 171 983
Class 9: Control and automated systems and computer centers.
Class 11: Heating and airing equipment, for distribution and warming-up of water, drying and air-conditioning, atypical air conditioning.
The contested goods are the following:
Class 9: Thermostat controllers.
Class 11: Apparatus for heating; Radiators; Convector heaters; Fires; Electric heaters; Thermostatic control valves for heating installations.
Contested goods in Class 9
The contested thermostat controllers are included in the broad category of the opponent’s control and automated systems in Class 9 of earlier mark 2. Therefore, they are identical.
Contested goods in Class 11
The contested apparatus for heating; radiators; convector heaters; fires; electric heaters; thermostatic control valves for heating installations are identical to the opponent’s heating apparatus in Class 11 of earlier mark 1, either because they are identically contained in both lists (despite minor differences in wordings) or because the opponent’s goods include, as a broader category, or overlap with, the contested goods. For example, as the contested fires include gas-powered or electric domestic fireplaces that are used for heating a room and operate with an in-built firebox, these goods cannot be clearly separated from the opponent’s heating apparatus.
In addition, the abovementioned contested goods are identical to the opponent’s heating and airing equipment, for distribution and warming-up of water, drying in Class 11 of earlier mark 2, either because the opponent’s goods include, as a broader category, or overlap with, the contested goods.
- 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 at issue are directed at the public at large and at business customers with specific professional knowledge or expertise in relation to heating systems. The public’s degree of attentiveness is considered to be higher than average, given the relatively high price, specialised nature, and low frequency of purchasing such goods.
- The signs
KORADO
| |
Earlier trade marks | Contested sign |
In relation to earlier EU trade mark registration No 5 039 342 (earlier mark 1) the relevant territory is the European Union. In relation to earlier Czech trade mark registration No 171 983 (earlier mark 2) the relevant territory is the Czech Republic.
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 contested sign consists of a fanciful depiction of the words ‘EKO’ and ‘RAD’, none of them being more visually eye-catching than the other. The slightly stylised graphemes of the word ‘EKO’, in colours from yellow to orange, are placed against a green circle each. The element ‘EKO’ will be understood by the majority of the relevant public concerning earlier mark 1, and the entire relevant public concerning earlier mark 2, as referring to ‘ecology’ or ‘ecological’. It is either because this word (compound form) exists as such in some of the languages (e.g. in Czech, Slovak or Latvian), or because it is very close to the equivalents in other languages (e.g. ‘eco’ in English), or because of the extensive use of this word, and variations thereof, in trade and marketing. Since the word as such refers to objective or desirable characteristics of the goods in question, but it is depicted in an unusual manner, the element ‘EKO’ as a whole has low capacity to indicate commercial origin.
The second word of the contested sign, ‘RAD’, is depicted in standard lettering, in orange. As regards earlier mark 1, the relevant public in different language areas may attach different meanings to it (e.g. in Slovak it means, inter alia, ‘row’, ‘order’, or ‘line’; in Swedish it means, inter alia, ‘row’; in German it means, inter alia, ‘wheel’; in Polish it means, inter alia, ‘glad’, ‘pleased’). The semantic content associated with this word can affect its distinctiveness. However, for the other part of the public, such as English- and Czech-speaking consumers, it has no clear meaning and is distinctive. The Opposition Division will first examine the opposition in relation to the part of the public for which the word ‘RAD’ does not create a conceptual difference between the signs and has a normal degree of distinctiveness.
From the perspective of English- and Czech-speaking consumers, the two earlier marks are composed of an invented word, ‘KORADO’, which has no identifiable components and is distinctive for the goods at issue. In earlier mark 2, the word is stylised and depicted in blue and white.
Visually, the signs coincide in the letters ‘KORAD’. However, they differ in the last letter, ‘O’, of the two earlier marks, the first letter, ‘E’, of the contested sign, and the clearly different figurative elements (including the stylisations of the words and the colour combinations) of earlier mark 2 and the contested sign.
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 present case, the beginnings of the signs are strikingly different, being ‘KOR-’ in the earlier marks and ‘EKO’ in the contested sign. Furthermore, by weighing in the weak distinctiveness of the contested sign’s element ‘EKO’, it can be reasonably assumed that the public’s attention will be directed at the sign’s more distinctive part, ‘RAD’, which is visually readily perceptible as an independent component. That dramatically reduces the visual similarity between the signs.
The opponent emphasises that the signs are composed of the same number of letters (six) and that five of them are identical, in the same order. That, according to the opponent, leads to a high similarity between the signs. In that regard, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).
The overlap in five letters is insufficient for leading to a relevant point of visual similarity, since the stylistic means used in the contested sign break it down into two elements, ‘EKO’ and ‘RAD’, thus giving the signs completely different structures and eclipsing the fact that the signs share a string of letters.
As the signs only coincide in an irrelevant aspect confined to a letter string that is visually not perceptible as a separate element but hidden in the contested sign, it is concluded that the signs are not visually similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas which the present assessment focuses on, the pronunciations of the signs coincide in the sound of the letters ‘KORAD’. The pronunciations differ in the last sound in the two earlier marks, ‘O’, and the first sound in the contested sign, ‘E’.
The differences in the beginnings of the pronunciations are striking. Furthermore, the weak distinctiveness of the element ‘EKO’ in the contested sign means that consumers are likely to put more emphasis on the third syllable which is more distinctive.
Although the length of the pronunciations is the same (three syllables), the distribution of the syllables is different (e.g. the earlier marks are likely to sound like /KO-RA-DO/, with a stress on the second syllable, whereas the contested sign will probably be pronounced like /E-KO-RAD/, where the second syllable will not be stressed). Therefore, the intonations and rhythms of the pronunciations are not the same.
All in all, the signs are similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Since the earlier marks 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.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier marks have no meaning for any of the goods in question from the perspective of the public in the relevant language areas. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- Global assessment, other arguments and conclusion
The opponent argues that there exists a very high likelihood of confusion on the part of the public, as the global impressions of the contested sign and the earlier marks are very similar. According to the opponent, that makes the goods covered by the signs in question likely to be considered by the public as originating from the same undertaking, or from undertakings having a juridical, organizational, economic or other kind of link between them.
However, as shown in detail in section c) of this decision, the only level on which there is some similarity between the signs is from the phonetic point of view. Nevertheless, that similarity is low. Visually and conceptually, the signs are not similar.
The tenuous similarity between the signs is clearly outweighed by the striking differences. They are clearly sufficient to enable the relevant public, being English- or Czech-speaking consumers (for which the contested sign’s element ‘RAD’ is conceptually neutral), to immediately distinguish between the signs, despite the fact that the goods at issue are identical, and that the earlier marks are endowed with an average degree of inherent distinctiveness. The relatively high degree of attention that the relevant public, whether the general public or professionals, will have at the moment of choosing the goods in question must be given due consideration. Any likelihood that the average consumer might perceive the goods marketed under the conflicting signs as originating from the same undertaking, or economically linked undertakings, can be safely ruled out.
The opponent refers to a previous decision 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. Decision of 16/09/2016, B 2 585 464, ‘CONRAD’ / ‘KORAD’ is not relevant to the present proceedings. That is because, in the previous case referred to by the opponent, the signs were considered similar to an average degree visually and highly similar aurally (on account of the identical pronunciation of the letters ‘C’ and ‘K’, and the mere addition of the letter ‘N’ in one of the signs), without this impression being altered by any conceptual perception, from the perspective of Italian-speaking part of the public in the European Union. However, as concluded in the comparison of the signs in the present case, the signs do not show such similarities even when assessing the opponent’s claims in the best possible light. Therefore, the opponent’s arguments are set aside.
Considering all the above, there is no likelihood of confusion on the part of English- or Czech-speaking public. This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘RAD’ in the contested sign creates a conceptual difference between the signs, albeit with a possibly limited distinctiveness in some language areas. A meaning conveyed by the element ‘RAD’ would render the signs even less similar and reinforce the split into ‘EKO’ and ‘RAD’ which already exists on a visual level.
Therefore, the opposition must be rejected, insofar as it is based on earlier European Union trade mark registration No 5 039 342 for the word mark ‘KORADO’, and Czech trade mark registration No 171 983 for the figurative mark .
The opponent has also based its opposition on the following earlier trade marks:
- European Union trade mark registration No 11 120 581 for the word mark ‘KORADO BULGARIA’;
- International trade mark registration No 741 202 for the figurative mark , designating Spain, Ireland, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Germany, Finland and France;
- Czech trade mark registration No 221 119 for the figurative mark ;
- Slovak trade mark registration No 172 929 for the figurative mark .
Earlier Slovak trade mark is identical to the one which has been compared (i.e. Czech trade mark No 171 983). The rest of the earlier marks invoked by the opponent are less similar to the contested sign. This is because they contain further figurative elements, or an additional verbal element, which are not present in the contested sign (even though the word ‘BULGARIA’ has no distinctive character on its own as it merely indicates the geographic scope of availability of the goods at issue). Moreover, the other earlier marks do not cover any goods that would be similar to a higher degree than those which have been already compared and found identical. Therefore, the outcome of the opposition cannot be different based on the other earlier marks invoked by the opponent; no likelihood of confusion exists with respect to those.
Consequently, the opposition must be rejected in its entirety.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent in relation to earlier European Union trade mark registration No 5 039 342, international trade mark registration No 741 202, Czech trade mark registrations No 171 983 and No 221 119, and Slovak trade mark registration No 172 929.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Michaela SIMANDLOVA | Solveiga BIEZA | Julie GOUTARD |
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.