NOBU | Decision 2683384
Date Published: Sep 28, 2017
OPPOSITION No B 2 683 384
Glen Dimplex Nordic AS, Havnegata 24, 7502 Stjørdal, Norway (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds, Leeds LS2 8PA United Kingdom (professional representative)
a g a i n s t
Inventor A.G. Anonymi Emporiki Etaireia Ilektrikon Eidon, 24ο km. Ε.Ο. Athinon-Lamias & Thoukydidou 2, 14565 Agios Stefanos Attikis, Greece (applicant), represented by Panagiotis Perivolaris, Agiou Nikolaou 41-43, 26221 Patra, Greece (professional representative).
On 16/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 683 384 is upheld for all the contested goods.
2. European Union trade mark application No 14 823 488 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 823 488. The opposition is based on European Union trade mark registration No 12 618 724. 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 and services
The goods and services on which the opposition is based are the following:
Class 9: Electronic thermostats and electronic apparatus for automatic regulation; signalling; control and communication in conjunction with electric energy saving systems.
Class 11: Apparatus for lighting; heating; cooking; refrigerating; drying and ventilation.
Class 35: Administration of purchase ordering; administrative processing of purchase orders; advertising; sales of Apparatus for lighting, heating, cooking, refrigerating, drying, ventilation, electronic thermostats and electronic apparatus for automatic regulation, signaling, control and communication in conjunction with electric energy saving systems.
The contested goods are the following:
Class 11: Air-conditioning, refrigerators, dehumidifiers.
The contested refrigerators are included in the broad category of the opponent’s apparatus for refrigerating. Therefore, they are identical.
The contested air-conditioning and dehumidifiers are included in the broad category of the opponent’s apparatus for drying and ventilation. 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, the goods found to be identical or similar are directed at the public at large and at the professional customers with specific knowledge or expertise.
The public’s degree of attentiveness, irrespective of whether the general public or the professional public is concerned, may vary from average to high, depending on the price, technical aspects and complexity of the purchased goods.
- The signs
NOBO | |
Earlier trade mark | Contested sign |
The relevant territory is 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 earlier mark is a word mark and as such it is irrelevant whether it is written in lower or upper case letters or in a combination thereof since it is the word as such that is protected and not its written form. The word ‘NOBO’ has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is a figurative mark consisting of the word ‘NOBU’ written in slightly stylised dark grey capital letters. This word has no meaning for the relevant public and is, therefore, distinctive.
Visually, the signs coincide in the three letters ‘NOB’, placed in the same order and in the same position, at the beginning of each sign. The signs are the same length (four letters). They differ in their final letters, ‘O’ versus ‘U’ and in the slight stylisation of the contested sign. However, the letters of the contested sign are represented in a simple font, where the letters come across just in a bit more ‘square-ish’ shape than the usual fonts and therefore the sign could be easily perceived as a word mark. Moreover, because of the font in which the contested sign is portrayed, the letter ‘O’ and ‘U’ look very similar.
Therefore, the signs are similar to a high 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 ‘NOB’, present identically at the beginning of each sign. Furthermore, the signs have the same rhythm (two syllables) and intonation. The pronunciation differs only in the sound of the signs’ final letters, /o/ versus /u/, which are both vowels.
Given that the signs differ aurally only in their last vowels, they are considered similar to a high 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.
- 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 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).
Furthermore, 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).
The goods at issue are identical. The signs are visually and aurally highly similar whereas none of the signs has a meaning that could help to differentiate them.
The similarities between the signs result from the three letters ‘NOB’, placed identically at the beginning of each sign. The differences are only in the slight stylisation of the contested sign and in the signs’ last letter, ‘O’ and ‘U’ respectively, which however are depicted in a similar way. In addition, the difference between the sounds of these vowels, irrespective of the different pronunciation rules in different parts of the relevant territory, is not striking.
In addition, account should also be 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 Meyer, EU:C:1999:323). 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).
In its observations, the applicant argued that the actual use of the conflicting signs demonstrates that there is no likelihood of confusion, since the contested trade mark is used together with the word ‘INVERTER’. To support this argument, the applicant submitted several invoices as the evidence. The applicant also claims that its goods are different to the opponent’s goods as it could be clearly seen from its website www.nobuklima.gr.
However, the Opposition Division notes that when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).
As to the comparison of the goods and services, this must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Moreover, as far as the Opposition Division could understand from the indicated website, which is in Greek, the goods presented there are mainly air-conditioning and dehumidifiers. As already stated above these goods are identical to the opponent’s apparatus for drying and ventilation as the latter include the contested goods. All these goods can be characterized as being for “environmental control” in the sense that they change the surrounding environment since their purpose is to control for example the humidity, ventilation, and air temperature in a building or a vehicle.
In view of the foregoing, taking into account the facts that the goods are identical (which brings the principle of interdependence into play) and that the signs are visually and aurally similar to a high degree, the Opposition Division considers that the differences between the signs are not sufficient to enable consumers to safely distinguish between the marks at issue and therefore they are likely to believe that the goods originate from the same undertaking or from economically related undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 618 724. 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
Konstantinos MITROU | Renata COTTRELL | Denitza STOYANOVA-VALCHANOVA |
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.