Rainbow brush | Decision 2695636
Date Published: Oct 1, 2017
OPPOSITION No B 2 695 636
Suomen Osuuskauppojen Keskuskunta, Fleminginkatu 34, 00510 Helsinki, Finland (opponent), represented by Berggren OY AB, Eteläinen Rautatiekatu 10 A,
00100 Helsinki, Finland (professional representative)
a g a i n s t
Ningbo Beilaier Trading Co., LTD., Room 14-5, No.299 Jiangnanyipin Garden,
Hi-Tech Zone, Ningbo City, Zhejiang Province, The People's Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo 65 - Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 695 636 is upheld for all the contested goods in Classes 8 and 21, namely
Class 8 (in its entirety): Abrading instruments [hand instruments]; Pedicure sets; Nail files; Razors, electric or non-electric; Curling tongs; Manicure sets; Manicure sets, electric; Hair curling (Hand implements for -); Hair clippers for personal use, electric and non-electric; Cattle shearers; Blades [hand tools].
Class 21 (in its entirety): Kitchen utensils; Rags for cleaning; Drinking vessels; Thermally insulated containers for food; Stretchers for clothing; Toilet utensils; Drying racks for washing; Cleaning instruments, hand-operated; Combs; Brushes.
2. European Union trade mark application No 15 018 955 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 018 955 (figurative mark: “”), namely against all the goods in Classes 8 and 21. The opposition is based on, inter alia, European Union trade mark registration No 4 746 442 (figurative mark:
“”). 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 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 4 746 442.
- The goods
The goods in Classes 3, 8, 20 and 21 on which the opposition is based are, inter alia, the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; but not including products made of plastic foam, plastic foam shaped products, or products for holding, supporting, containing and displaying natural and/or artificial plants and flowers.
Class 21: Combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; but not including vases, plant pots, cages, or products and containers for holding, supporting, containing and displaying natural and/or artificial plants and flowers.
The contested goods in Classes 8 and 21 are the following:
Class 8: Abrading instruments [hand instruments]; Pedicure sets; Nail files; Razors, electric or non-electric; Curling tongs; Manicure sets; Manicure sets, electric; Hair curling (Hand implements for -); Hair clippers for personal use, electric and non-electric; Cattle shearers; Blades [hand tools].
Class 21: Kitchen utensils; Rags for cleaning; Drinking vessels; Thermally insulated containers for food; Stretchers for clothing; Toilet utensils; Drying racks for washing; Cleaning instruments, hand-operated; Combs; Brushes.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 8
The contested razors, electric or non-electric are identically covered in the opponent’s list of goods, namely as razors (despite the different wording).
The contested Abrading instruments [hand instruments]; Hair curling (Hand implements for -); Curling tongs; Nail files are included in the broad category of the opponent’s Hand tools and implements (hand operated). Therefore, they are identical.
The contested Hair clippers for personal use, electric and non-electric; Cattle shearers are included in the broad category of, or overlap with, the opponent’s Hand tools and implements (hand operated). Therefore, they are identical.
The contested Blades [hand tools] have the same purpose as the opponent´s Hand tools and implements (hand operated). They can coincide in their producer, end users and distribution channels. Furthermore, they are complementary. Therefore, they are similar to a high degree.
The contested Pedicure sets; Manicure sets; Manicure sets, electric have the same purpose, distribution channels and public as the opponent´s razors. Therefore, they are similar.
Contested goods in Class 21
Combs are identically contained in both lists of goods.
The contested Brushes include, as a broader category, the opponent’s brushes (except paint brushes). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested Drinking vessels; Thermally insulated containers for food are included in the broad categories of, or overlap with, the opponent’s glassware, porcelain and earthenware not included in other classes; but not including vases, plant pots, cages, or products and containers for holding, supporting, containing and displaying natural and/or artificial plants and flowers. Therefore, they are identical.
The contested Rags for cleaning; Cleaning instruments, hand-operated are included in the broad category of, or overlap with, the opponent’s articles for cleaning purposes. Therefore, they are identical.
The contested Kitchen utensils overlap with the opponent’s glassware, not included in other classes; but not including vases, plant pots, cages, or products and containers for holding, supporting, containing and displaying natural and/or artificial plants and flowers. Therefore, they are identical.
The contested Toilet utensils overlap with the opponent’s articles for cleaning purposes. Therefore, they are identical.
The contested Stretchers for clothing; Drying racks for washing have the same distribution channels, public and producers as the opponent´s goods in Class 20 goods (not included in other classes) of plastics; but not including products made of plastic foam, plastic foam shaped products, or products for holding, supporting, containing and displaying natural and/or artificial plants and flowers. Therefore, they are similar.
- 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 to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attention may vary from average to lower than average, because some of the goods are cheap and will be consumed on a daily basis.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
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.
The coinciding element ‘RAINBOW’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom.
The coinciding element ‘Rainbow’ will be understood as ‘an arch of colours formed in the sky in certain circumstances, caused by the refraction and dispersion of the sun’s light by rain or other water droplets in the atmosphere’ (Oxford Dictionary) by the relevant public. As this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
Both signs are figurative marks. The figurative elements of the earlier trade mark consist of the particular typeface of the word ‘RAINBOW’, which is in upper case letters in an arch, with one line above the word and another line below it. These figurative elements are of a decorative nature and so the word ‘RAINBOW’ is the most distinctive element of the earlier mark.
The figurative elements of the contested sign consist of three stripes forming a rainbow. The word ‘Rainbow’ is integrated in this depiction of a rainbow. For the same reasons as above, the word ‘RAINBOW’ is considered more distinctive than the figurative elements. The second word, ‘brush’, is much smaller than the word ‘RAINBOW’ and appears at the end of the rainbow device.
The element ‘brush’ of the contested sign will be associated with ‘an implement with a handle, consisting of bristles, hair, or wire set into a block, used for cleaning or scrubbing, applying a liquid or powder to a surface, arranging the hair, or other purposes’ (Oxford Dictionary). Bearing in mind that some of the relevant goods are for cleaning purposes, this element is non-distinctive for some of the goods, such as cleaning instruments, hand-operated; brushes. For the rest of the goods, it is distinctive.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
The element ‘Rainbow’ and the stylised depiction of a rainbow in the contested sign are the dominant elements, as they are the most eye-catching.
Visually, the signs have the word, ‘Rainbow’, in common, although it is depicted differently. Their figurative elements differ (see above). The second word of the contested sign, ‘brush’, is rather small and is not distinctive for some of the goods. Therefore, the signs are visually similar to at least an average degree.
Aurally, the figurative elements will not be taken into account. The coinciding element ‘Rainbow’ will be pronounced in the same way in both signs. The additional word of the contested sign, ‘brush’, will not have a significant impact because it is in a secondary position and consumers tend to focus on the first element, which, in this case, is distinctive. Furthermore, the word ‘brush’ is non-distinctive for some of the goods. Therefore, the signs are aurally similar to an above average degree.
Conceptually, the coinciding element ‘Rainbow’ will be understood with the same meaning (see above) in both signs. On account of the coincidence in the semantic content of the distinctive element ‘Rainbow’ (which is reinforced by the figurative element in the contested sign) and considering that the word ‘brush’ is non-distinctive for some of the goods, the signs are conceptually similar to at least an average degree.
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
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).
The contested goods are partly identical and partly similar to different degrees. The signs are similar to at least an average degree at all three levels of the comparison.
Taking into account the at least average degree of similarity between the signs, the average degree of distinctiveness of the earlier trade mark and the facts that the goods are partly identical and partly similar and that the degree of attention is at most average, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This is particularly relevant when the degree of attention of the public is low. Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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.
The applicant has not submitted any observations. Therefore, its arguments cannot be examined.
The opposition is well founded under Article 8(1)(b) EUTMR.
As the earlier right ‘leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Denitza STOYANOVA-VALCHANOVA | Peter QUAY | Magnus ABRAMSSON |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.