OPPOSITION No B 2 665 928

SMS group GmbH, Eduard-Schloemann-Str. 4, 40237 Düsseldorf, Germany (opponent), represented by Patentanwälte Hemmerich & Kollegen, Hammerstr. 2, 57072 Siegen, Germany (professional representative)

a g a i n s t

Excelsys Technologies Ltd., 27 East Gate Drive, East Gate Business Park, Little Island, Cork, Ireland (applicant), represented by Purdylucey Intellectual Property, 6-7 Harcourt Terrace, Dublin 2, Ireland (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 928 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 14 829 253. The opposition is based on European Union trade mark registration No 11 397 429. 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 7:        Machines for the metallurgical industry; Machines for the steel works industry; Continuous casting machines; Rolling machines for rolling metals; Forging machines; Metal presses (machines); Machines for processing plastics; Machine tools; Parts for the aforesaid machines, included in class 7; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles).

Class 9:        Electric and electronic regulating and control apparatus for machines for the metallurgical industry, machines for the steelmaking industry, continuous casting machines, machines for rolling metals, forging machines, metal presses; Weighing, measuring, signalling and checking (supervision) apparatus and instruments; Data processing equipment and computers for the metallurgical industry and for the steelmaking industry; Computer programs recorded on data carriers for controlling or regulating machines for the metallurgical industry, machines for the steelmaking industry, continuous casting machines, machines for rolling metals, forging machines and metal presses.

Class 11:        Furnaces for metallurgical works, steel works, continuous casting, rolling mill, forging and pressing installations; Cooling installations for machines for the metallurgical industry, machines for the steelmaking industry, continuous casting machines, machines for rolling metals, forging machines and metal presses; Equipment and apparatus for drying, ventilating and water supply for metallurgical works, steel works, continuous casting, rolling mill, forging and pressing installations.

Class 37:        Installation, assembly, repair and maintenance of industrial and mechanical installations, namely of machines for the metallurgical industry, of machines for the steelmaking industry, of continuous casting machines, of machines for rolling metals, of forging machines, of metal presses, of machines for plastics processing, of machine tools, of motors and engines (except for land vehicles), of couplings and devices for power transmission (except those for land vehicles), and of furnaces for metallurgical works, steel works, continuous casting, rolling mill, forging and pressing installations, of cooling systems for machines in the metallurgical industry, for machines in the steelmaking industry, for continuous casting machines, for machines for rolling metals, for forging machines, for metal presses, for equipment and apparatus for drying, ventilating and water supply for metallurgical works, steel works, continuous casting, rolling mill, forging and pressing installations; Construction consultation.

Class 42:        Building and construction drafting; Technical construction drafting; Engineering services; Design and development of computer hardware for the metallurgical industry and the steelmaking industry; Technical consultancy and surveying.

The contested goods are the following:

Class 9:        Electric power converters; Power connectors; Power controllers; Power conditioners; Power units [transformers]; Power modules; Electrical power control apparatus; Electric power supply units; AC/DC power supplies; DC input power supplies; Transformers; Electric transformers; Electrical transformers; Electricity transformers; Electric voltage transformers; Electrical reducing transformers; Electric current transformers; Current transformers; Mains transformers (Electric -); Power transformers for amplification; Electrical transformers [for telecommunication apparatus]; Tap changers for electric transformers; Transformers [electricity]; Electronic transformers; Impedance transformers; Voltage transformers; Software.

Some of the contested goods are identical to goods on which the opposition is based such as the opponent’s computer programs recorded on data carriers for controlling or regulating machines for the metallurgical industry, machines for the steelmaking industry, continuous casting machines, machines for rolling metals, forging machines and metal presses and the contested software. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. 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 that are assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. 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 word ‘X-Cellize’ has no meaning for the relevant public, and it has an average degree of distinctiveness in relation to the goods. Even if the red hyphen stands out to a certain extent as compared to the black lettering, it cannot be clearly determined as the most dominant element.

The word ‘excelsys’ has no meaning for the relevant public and is, therefore, distinctive. The rectangle and the brush strokes are less distinctive as they are banal, commonplace shapes and have therefore, a purely decorative function.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs only coincide in the letters ‘x’ and ‘cel-’ however, they are found in different positions in the signs and of particular importance is the their differing beginnings. The latter is relevant since consumers generally tend to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that 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. Further they differ in the letters ‘-lize’ and the red hyphen of the earlier trade mark and the letters ‘e-’ ‘-sys’ as well as the less distinctive figurative aspects of the contested sign, that is, the grey rectangle with the brush strokes of the contested sign. They also have a different typeface.

The fact they share the same number of letters is not of any particular significance in the current scenario since even if the signs share letters, their order is different and consumers are not in the habit of dissecting signs to such an extent that they would perceive this. Further, the length of the signs combined with the differing beginnings and endings means the sequence ‘cel’ in the middle of the signs is not decisive and when considering the signs as a whole, they are considered visually dissimilar.

Aurally, considering all the different pronunciation rules in different parts of the relevant territory, it is the English-speaking part of the public that will find more similarity between the signs. In this case, the pronunciation of the signs coincides in the syllables ‘ex-cel’ since the ‘x’ of the earlier mark will be pronounced in the same way as the ‘ex’ of the contested sign. The pronunciation differs in the syllable ‘lize’ and ‘sys’ of the earlier and contested signs respectively. Moreover, they differ in the stressed syllable, ‘x’ in the earlier mark and ‘cel’ in the contested sign. Therefore, the signs are aurally similar to a low degree.

In other languages of the European Union, the first letter ‘x’ of the earlier trade mark will be pronounced in a different way than the first syllable ‘ex’ of the contested sign, for example ‘ekis’ in Spanish or ‘iks’ in German, Italian or French. Consequently, the signs are aurally even less 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 to a low degree in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

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).

In the present case, for reasons of procedural economy, the Opposition Division did not undertake a full comparison of the goods and assumed that all the contested goods were similar to the opponent’s goods. They are directed at the public at large and at a more specialised public, whose degree of attention will vary from average to high. The earlier mark has an average degree of inherent distinctiveness.

The signs are visually dissimilar, their phonetic similarity is low and there is no conceptual aspect that could help consumers to associate the signs with each other. Contrary to the opponent’s argument, the Opposition Division is of the opinion that the slight similarities, stated in section c) above, are not sufficient to counteract the differences and, therefore, reasonably observant and circumspect consumers would not believe that the goods come from the same undertaking or from economically-linked undertakings. The contested sign is sufficiently removed from the earlier mark and any existing similarity is diluted in the overall impression created by the signs and the slight aural similarity is not sufficient to overcome this.

In view of the foregoing, even considering the assumption of identity of the goods, the signs can be differentiated and the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Vanessa PAGE

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.