ODIGO | Decision 2789009
Date Published: Sep 24, 2017
OPPOSITION No B 2 789 009
Carl Freudenberg KG, Höhnerweg 2-4, 69469 Weinheim, Germany (opponent), represented by Monika Sigrid Ripper, Höhnerweg 2-4, 69469 Weinheim, Germany (professional representative)
a g a i n s t
TCC Global N.V., World Trade Centre, Zuidplein 84, 1077XV Amsterdam, the Netherlands (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 789 009 is partially upheld, namely for the following contested goods:
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; ceramics for kitchen use, ceramics of household purposes, glassware, glass ornaments, porcelain, earthenware; electric and non-electric toothbrushes; knife blocks; knife rests; non-electric utensils and containers for household or kitchen use; household or kitchen utensils and containers; small domestic utensils and containers; combs and sponges; brushes; glassware, porcelain and earthenware; tableware; plates and ornamental plates; wall plaques of glass; cruet sets; pepper mills; salt mills; drinking vessels; mugs; jugs; tankards; bottles, insulated bottles and flasks; jars; egg cups; lunch boxes; coasters; serving trays; candlesticks; napkin rings and holders; soap boxes; soap holders; tooth brushes; boxes of common metal for household use; paper plates and cups.
2. European Union trade mark application No 15 176 944 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 176 944 for the word mark ‘ODIGO’, namely against all the goods in Class 21. The opposition is based on European Union trade mark registration No 13 656 756 for the word mark ‘Origo’. 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 21: Articles for cleaning purposes, in particular household cloths, window cloths of leather and artificial leather, dusting cloths, dishcloths, cleaning rags, dusters, materials [cloths] for polishing, all-purpose cloths, floor cloths, micro-fiber cloths, sponge cloths, cloths of non-woven fabric, cloths of woven or knitted fabric, dry disposable cloths; pot cleaners of non-woven material with and without sponge components; steel wool for cleaning, in particular steel wool cleaners, optionally with a foam handle; steel wool pads with soap; sponges for household purposes, in particular scouring sponges coated with plastic, scouring sponges, cleaning sponges of viscous or plastic; household or kitchen utensils, in particular hand-operated, non-electric mechanical cleaning apparatus, brooms, brushes, dust-pans, mops, devices for wringing out mops, toilet brushes, water closet brush holders, window cleaning devices, water wipers, household gloves of latex or plastic; disposable gloves for household and gardening purposes; gardening gloves and wiping gloves; laundry airing devices; laundry drying racks, rotary washing lines, drying mounts; clothes-pegs; ironing boards; sleeve boards, ironing board covers, ironing cloths (shaped ironing board covers), cleaning cloths for irons; containers for household and kitchen use, especially water buckets, pedal bins, dustbins, sorting containers of plastic for laundry; laundry baskets of plastic; components, not of metal, for hand-operated, non-electrical cleaning devices, namely handles, handgrips, connecting parts, links, couplings, not of metal, being fitted goods; spray bottles for cleaning liquids; wiping pads.
The contested goods are the following:
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steel wool; ceramics for kitchen use, ceramics of household purposes, glassware, glass ornaments, porcelain, earthenware; electric and non-electric toothbrushes; knife blocks; knife rests; non-electric utensils and containers for household or kitchen use; household or kitchen utensils and containers; small domestic utensils and containers; combs and sponges; brushes; glassware, porcelain and earthenware; ornaments, statuettes and figurines of ceramic, china, crystal, glass, earthenware, terra cotta and porcelain; tableware; plates and ornamental plates; wall plaques of glass; cruet sets; pepper mills; salt mills; drinking vessels; mugs; jugs; tankards; bottles, insulated bottles and flasks; jars; egg cups; lunch boxes; coasters; serving trays; candlesticks; napkin rings and holders; soap boxes; soap holders; tooth brushes; boxes of common metal for household use; paper plates and cups.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Household or kitchen utensils and containers; articles for cleaning purposes; containers for household or kitchen use; household or kitchen utensils and containers; brushes (listed twice) are identically contained in both lists of goods (including synonyms).
The contested brush-making materials; steel wool; combs and sponges (listed twice); electric and non-electric toothbrushes are included in the broad category of, or overlap with, the opponent’s articles for cleaning purposes. Therefore, they are identical.
The contested ceramics for kitchen use, ceramics of household purposes, glassware, glass ornaments, porcelain, earthenware; knife blocks; knife rests; non-electric utensils for household or kitchen; small domestic utensils; tableware; plates and ornamental plates; wall plaques of glass; cruet sets; pepper mills; salt mills; drinking vessels; mugs; egg cups; coasters; serving trays; candlesticks; napkin rings and holders; soap holders; paper plates and cups are included in the broad category of, or overlap with, the opponent’s household or kitchen utensils. Therefore, they are identical.
The contested small domestic containers; soap boxes; lunch boxes; jugs; tankards; bottles, insulated bottles and flasks; jars; boxes of common metal for household use are included in the broad category of, or overlap with, the opponent’s containers for household and kitchen. Therefore, they are identical.
The contested ornaments, statuettes and figurines of ceramic, china, crystal, glass, earthenware, terra cotta and porcelain serve a decorative purpose. These goods have nothing relevant in common with the opponent’s goods in Class 21, which are mainly articles for cleaning purposes, household and kitchen utensils and containers, gardening articles and parts/fittings for these goods. Although the contested goods and the opponent’s goods can be made of the same materials, this does not lead to a finding of similarity. Furthermore, these goods are neither complementary nor necessarily in competition. They differ in nature, purpose and method of use, are commonly distributed through different channels and do not originate from the same manufacturers. It follows that they must be considered dissimilar.
- 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 are directed at the public at large. The degree of attention is considered average.
- The signs
Origo | ODIGO |
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). This applies by analogy to international registrations designating the European Union. 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 Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs do not evoke any concept, such as the Dutch- and German-speaking parts of the relevant public.
Both signs are word marks. The earlier mark is composed of the word ‘Origo’ and the contested sign is composed of the word ‘ODIGO’. Neither of the words has meaning for the relevant public. These words are, therefore, distinctive.
In the case of word marks, it is the word as such that is protected, regardless of the way in which it is depicted. Therefore, the fact that the earlier mark is in title case letters and the contested sign is in upper case letters is of no relevance for the purposes of the comparison of the signs.
Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the letters ‘O*IGO’. However, they differ in their second letters (‘R’ versus ‘D’). The number of syllables (namely three) and the length of the signs are the same and they coincide in four out of five letters, which appear in the same order.
Therefore, the signs are visually and aurally highly similar
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 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 8 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).
The goods covered by the trade marks in dispute are partly identical and partly dissimilar. They target the public at large and the degree of attention is average. The distinctiveness of the earlier mark is normal.
The signs are similar to a high degree from both a visual and an aural perspective because they coincide in four out of five letters and have the same structure. The only differing letters, namely the second letter, ‘R’, of the earlier mark and the second letter, ‘D’, of the contested sign, are not sufficient to counteract the significant similarity between the signs. The beginning and ending of the signs are the same, as are their structure, rhythm and intonation.
Furthermore, account must 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, EU:C:1999:323, § 26).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch- and German-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 from the above that the contested sign must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
Andrea | Birgit FILTENBORG | Michele M. BENEDETTI-ALOISI |
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.