IVEO | Decision 2669433
Date Published: Oct 1, 2017
OPPOSITION No B 2 669 433
Ideal Standard International NV, Corporate Village – Gent Building, Da Vincilaan 2, 1935 Zaventem, Belgium (opponent), represented by Sipara Limited, Seacourt Tower, Third Floor, West Way, Oxford OX2 0JJ, United Kingdom (professional representative)
a g a i n s t
Burgbad AG, Kirchplatz 10, 57392 Schmallenberg, Germany (applicant), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft mbB, Herrnstr. 44, 80539 München, Germany (professional representative).
On 06/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 669 433 is upheld for all the contested goods.
2. European Union trade mark application No 14 860 563 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 14 860 563. The opposition is based on European Union trade mark registration No 10 997 294. 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: Installations and apparatus for water supply and sanitary purposes; bathroom suites; baths; lavatories, basins, bidets, water closets, urinals (none of the aforesaid including portable toilets); cisterns and flushing apparatus for lavatories; water closet seats; pedestals for washbasins; sinks including metal sinks; whirlpool tubs and hydromassage tubs; parts and fittings for all the aforesaid goods.
Class 20: Furniture, especially bathroom furniture; furniture and furniture fittings for bathrooms, washrooms, changing rooms, saunas and kitchens; mirrors; frames for mirrors and pictures; mirror holders; storage units; toilet and medicine cabinets; non-metallic bathroom hooks; hooks for towels and/or bath robes; shelves and shelving; non-metallic fittings for furniture, especially handles and hooks; support rails and grips; grab rails; clothes stands, clothes racks, clothes rails; towel dispensers not of metal; water pipe valves of plastic; plugs (stoppers) not of metal; sanitary furnishings; knobs and handles of porcelain or ceramics; parts and fittings for all the aforesaid goods.
Class 21: Small domestic utensils and containers, as well as holders therefor; dishes, holders and dispensers for soap, lotions and shampoos; closet brushes; toilet brushes, tooth brushes and drinking vessels; holders and dispensers for brushes, toilet paper, towels or drinking vessels; towel rails, rings and holders; waste bins; trays; towel baskets; laundry baskets; parts and fittings for all the aforesaid goods.
The contested goods are the following:
Class 11: Ceramic sanitary installations, namely washstands, washbasins (sanitary installations), washstand columns, bidets, toilet seats, cisterns, urinals, bath tubs, shower trays; Fittings for ceramic sanitary installations, namely washstand taps, taps for baths, taps for showers, shower fittings, stink traps, drainage fittings.
Class 20: Bathroom furniture, including washstands (furniture); Mirrors (silvered glass); Shelves [furniture]; Towel hooks, None of the aforesaid goods being of precious metals.
Class 21: Glass holders with and without glasses, soap holders and soap dishes; Toilet brush sets; Towel holders and rings, bath towel holders, the aforesaid goods not being of precious metals.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The terms ‘including’, used in the applicant’s list of goods, and ‘especially’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is 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.
Contested goods in Class 11
The contested ceramic sanitary installations, namely washstands, washbasins (sanitary installations), washstand columns, bidets, toilet seats, cisterns, urinals, bath tubs, shower trays; fittings for ceramic sanitary installations, namely washstand taps, taps for baths, taps for showers, shower fittings, stink traps, drainage fittings are included in the broad category of, or overlap with, the opponent’s installations and apparatus for water supply and sanitary purposes. Therefore, they are identical.
Contested goods in Class 20
The contested bathroom furniture, including washstands (furniture); mirrors (silvered glass); shelves [furniture]; towel hooks, none of the aforesaid goods being of precious metals are included in the broad category of the opponent’s furniture and furniture fittings for bathrooms, washrooms, changing rooms, saunas and kitchens. Therefore, they are identical.
Contested goods in Class 21
The contested soap holders and soap dishes; the aforesaid goods not being of precious metals are included in, or overlap with, the broad category of the opponent’s
dishes, holders and dispensers for soap. Therefore, they are identical.
The contested towel holders and rings, bath towel holders; the aforesaid goods not being of precious metals are included in, or overlap with, the broad category of the opponent’s towel rails, rings and holders. Therefore, they are identical.
The contested glass holders with and without glasses; the aforesaid goods not being of precious metals are included in, or overlap with, the broad category of the opponent’s small domestic utensils and containers, as well as holders therefor. Therefore, they are identical.
The contested toilet brush sets; the aforesaid goods not being of precious metals overlap with the opponent’s toilet brushes. Therefore, they are identical.
- 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, most of the goods found to be identical are directed at the public at large. Some of the goods are specialised goods (e.g. drainage fittings) directed at business customers with specific professional knowledge or expertise. The degree of attention is considered average.
- The signs
Véo | IVEO |
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).
Both signs are word marks consisting of one word, namely ‘Véo’ (the earlier mark) and ‘IVEO’ (the contested sign).
The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in title case letters, as the earlier mark is, or upper case letters, as the contested sign is.
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 Opposition Division finds it appropriate to focus the comparison on the part of the public to which the signs themselves convey no meaning, for example the
Czech-, German-, Hungarian-, Polish- and Slovak-speaking parts of the public.
The signs, each consisting each of one word, have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘veo’. However, they differ in the first letter of the contested sign, ‘i’, and in the accent above the letter ‘é’ in the earlier mark.
The applicant argues that ‘the first letter … has an accelerated position since it forms the first part of the sign which will normally be especially perceived by the public’. The Opposition Division acknowledges that the signs differ in the first letter of the contested sign; however, the other three letters are identical.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛veo’, present identically in both signs. The pronunciation differs in the sound of the letter ‛i’ of the contested sign, which has no counterpart in the earlier mark. Consequently, the lengths and intonations of the signs under comparison are almost the same.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the relevant public indicated above. 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.
- 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
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The whole earlier mark, ‘Véo’, with the exception of the accent above the letter ‘e’, is identically included in the contested sign (which includes the additional letter ‘i’), which results in an average degree of visual similarity and a high degree of aural similarity between the marks. Although the marks under comparison are rather short signs, the differences between the marks are not sufficient to exclude a likelihood of confusion.
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).
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).
Therefore, a significant part of the relevant public, when encountering identical goods under the marks in question, is likely to believe that the goods come from the same undertaking or from economically linked undertakings, taking into account also that for a part of the public the signs have no meanings that could help consumers to distinguish between them, and that the degree of attention is average.
The applicant refers to a previous judgment of the General Court to support its arguments (i.e. 16/01/2008, T-112/06, IKEA, EU:T:2008:10). 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 case referred to by the applicant is not relevant to the present proceedings, as the factual and legal circumstances are different. Therefore, the applicant’s argument has to be set aside.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public to which the signs do not convey any meaning, for instance the Czech-, German-, Hungarian-, Polish- and Slovak-speaking parts of the public., and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 997 294. 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 that the contested trade mark must be rejected for all the contested goods.
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
Natascha GALPERIN | Michal KRUK | Ana MUÑIZ RODRÍGUEZ |
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.