OPPOSITION No B 2 011 073

Altecnic Limited, Mustang Drive, Stafford  ST16 1GW, United Kingdom (opponent), represented by Swindell & Pearson LTD, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)

a g a i n s t

Altec Systemtechnik AG, Industriegebiet 1, 07924 Crispendorf, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft MBB 

Widenmayerstraße 47, 80538 München, Germany (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 011 073 is partially upheld, namely for the following contested goods:

Class 6:        Metal building materials for solar installations; small items of metal hardware for solar installations; fittings of metal for solar installations; roof hooks and fastening profiles of metal for solar-technology installations; refractory construction materials of metal for solar installations; metallic extrusions and gratings of metal for solar installations; metal bars, props of metal for solar installations; shims of metal for solar installations; linings of metal (building) for the construction of solar installations.

Class 9:        Solar energy collectors for electricity generation; solar batteries; photovoltaic installations and parts therefor for obtaining electrical energy and for both power supply and independent use; lightning conductor devices for solar installations; inverters for solar installations.

Class 11:        Solar installations for the transformation of solar energy into heat; solar warming, heating and cooling installations for utility water; gas generators; water purification installations; evaporators.

2.        European Union trade mark application No 10 443 547 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 10 443 547. According to the letter sent to the Office on 03/02/2017, the opponent declared that it wishes to base its opposition on European Union trade mark registration No 2 135 341 and European Union trade mark application No 10 651 511 only. The opponent invoked Articles 8(1)(b),8(4) and 8(5) 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 mark. The EUTM application No 10 651 511 was successfully registered on 16/04/2017 and this mark covers the broadest scope of goods, consequently, the Opposition Division finds it appropriate to first examine the opposition in relation to this earlier mark in order to examine the best scenario for the opponent.

1. The goods

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

Class 11:        Apparatus and installations for heating, water circulation, water supply and sanitary purposes; plumbing fixtures, fittings and components; heating components; valves, thermostatic mixing valves; radiators, radiator valves; shower valves; taps; mixer taps; chilled water installations and apparatus; central heating installations and apparatus; pressurisation units for maintaining the pressure within water systems; solar collectors; solar heating panels; solar powered heating apparatus and installations; boilers; heat interface units; parts and fittings for all the aforesaid goods.

Following the limitation filed by the applicant on 24/04/2012 the contested goods are the following:

Class 6:        Metal building materials for solar installations; small items of metal hardware for solar installations; carports of metal; fittings of metal for buildings, for solar installations; roof hooks and fastening profiles of metal for solar-technology installations; refractory construction materials of metal for solar installations; metallic extrusions and gratings of metal for solar installations; metal bars, props of metal for solar installations; framework of metal for building, except framework for transportable buildings of metal for halls, hall frames, tents and tent frames; shims of metal for solar installations; linings of metal (building) for the construction of solar installations; fences of metal.

Class 9:        Solar energy collectors for electricity generation; solar batteries; photovoltaic installations and parts therefor for obtaining electrical energy and for both power supply and independent use; electric accumulators; anti-theft warning apparatus, in particular for raising the alarm about manipulation of solar installations for generating electrical energy; lightning conductor devices for solar installations; inverters for solar installations; electric branch or junction boxes; electrical connecting parts for electric conduits, in particular for operating photovoltaic installations; dispensing pumps for electric service stations.

Class 11:        Solar installations for the transformation of solar energy into heat; solar warming, heating and cooling installations for utility water; gas generators; water purification installations; evaporators.

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 applicant’s 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).

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 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 6

The contested metal building materials for solar installations; small items of metal hardware for solar installations; fittings of metal for solar installations; roof hooks and fastening profiles of metal for solar-technology installations; refractory construction materials of metal for solar installations; metallic extrusions and gratings of metal for solar installations; metal bars, props of metal for solar installations; shims of metal for solar installations; linings of metal (building) for the construction of solar installations have some connections with the opponent’s solar collectors; solar heating panels; solar powered heating apparatus and installations; parts and fittings for all the aforesaid goods. The goods under comparison have the same purpose, methods of use and coincide in consumers and distribution channels. Furthermore, they may be complementary. Therefore, they are similar.

The remaining contested carports of metal; fittings of metal for buildings, framework of metal for building, except framework for transportable buildings of metal for halls, hall frames, tents and tent frames; fences of metal are mostly metal materials and articles for use in manufacturing or construction and other various applications. Their nature and intended purpose is different from those of the opponent’s goods in Class 11. Even if some of the goods under comparison are made of the same material (in this case, of metal), this is clearly insufficient to consider them similar. The goods under comparison do not have the same producers and distribution channels. Therefore, they are dissimilar.

Contested goods in Class 9

The contested solar energy collectors for electricity generation have some connections with the opponent’s solar collectors; parts and fittings for all the aforesaid goods. The goods may have the same ultimate purpose, which is production of electricity. They are often sold in the same sections of shops, usually manufactured by the same undertakings and target the same consumers. Furthermore, they are complementary. Consequently, these goods are considered highly similar.

The contested solar batteries have some common points with the opponent’s solar heating panels; parts and fittings for all the aforesaid goods. These goods serve to capture solar radiation that can be used for different types of applications, for example for heating purposes. They may have the same purpose, methods of use and coincide in consumers and distribution channels. Therefore, they are similar

Likewise, the contested photovoltaic installations and parts therefor for obtaining electrical energy and for both power supply and independent use and the opponent’s solar powered heating apparatus and installations; parts and fittings for all the aforesaid goods have some relevant connections because they may easily coincide in the same ultimate purpose and serve for heating. These goods are usually manufactured by the same undertakings and target the same consumers. Consequently, they are considered similar

The contested lightning conductor devices for solar installations; inverters for solar installations and the opponent’s solar powered heating apparatus and installations; parts and fittings for all the aforesaid goods are considered similar as these goods share the same ultimate purpose and are often sold in combination or next to each other in the same sections of shops. Furthermore, they may be manufactured by the same undertakings and target the same consumers.

The contested anti-theft warning apparatus, in particular for raising the alarm about manipulation of solar installations for generating electrical energy; electrical connecting parts for electric conduits, in particular for operating photovoltaic installations: electric accumulators; electric branch or junction boxes; dispensing pumps for electric service stations are dissimilar to all the opponent’s goods. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Therefore, these electric components included in Class 9 are dissimilar to the opponent’s goods in Class 11.

Contested goods in Class 11

The contested broad category of the applicant’s solar installations for the transformation of solar energy into heat overlap with the opponent’s broader category of  solar powered heating apparatus and installations; parts and fittings for all the aforesaid goods. These broad categories of goods cannot be clearly separated and are, therefore, considered identical.

The contested solar warming, heating and cooling installations for utility water overlap with the broad category of the opponent’s apparatus and installations for heating, water circulation, water supply and sanitary purposes; parts and fittings for all the aforesaid goods. These broad categories of goods cannot be clearly separated and are, therefore, considered identical.

The contested gas generators are devices for generating gas for different types of applications; for example, they can be used for heating and therefore are covered by or overlap with the opponent’s broad category of apparatus and installations for heating purposes; parts and fittings for all the aforesaid goods. Therefore, they are identical.

The contested water purification installations are included in the broad category of the opponent’s apparatus and installations for water circulation, water supply and sanitary purposes; parts and fittings for all the aforesaid goods. Therefore, they are identical.

The contested evaporators are steam generating apparatus used to remove for example the desirable drinking water from the undesired products, like for example salt and are, thus included in the opponent’s broad category of apparatus and installations for water circulation, water supply and sanitary purposes; parts and fittings for all the aforesaid goods . Therefore, they are identical. 

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 found to be identical or similar are directed at the public at large and 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 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.

The signs in their entirety are meaningless for the relevant goods for the English-speaking part of the public. As a result, the Opposition Division finds it appropriate to focus the comparison of the signs on this public.

Both marks are figurative. The earlier mark is composed of the word element ‘altecnic’, written in slightly standard black lowercase letters. The first letter ‘a’ contains a small black dot.

As regards the figurative elements of present in both signs, such as the black, small dot inside the letter ‘a’, size of the letters and their slight stylisation, etc., account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign is composed of the word element ‘ALTEC’, reproduced in standard, uppercase red letters.

None of the marks has a meaning in relation to the relevant goods for the relevant public.

The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘ALTEC’, which entirely forms the contested sign and constitutes first five letters of the earlier mark. The signs differ in the letters ‘NIC’ of the earlier mark as well as their figurative elements.

The signs in question coincide in their first and the most significant, initial parts. Consumers generally tend to focus on the beginning 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.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ALTEC’, present identically in both signs. The pronunciation differs in the sound of the letters ‘NIC’ of the earlier mark.

Therefore, the signs are aurally similar to an average 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The contested goods have been found partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods. They are directed at the public at large and at and 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.

The marks in question share a similar structure; they are composed of one verbal element. Visually and aurally the signs are similar to an average degree due to the coincidence in their first five letters ‘ALTEC’, which at the same time constitute the contested sign. Consequently, these coinciding initial five letters will catch immediately the attention of the relevant public. The signs do not convey any concept and therefore, the conceptual aspect does not influence the comparison of the signs.

The differentiating letters ‘NIC’ belonging to the earlier mark are placed in its final part, which make them less noticeable to the relevant public. Furthermore, the figurative elements present in both signs such as the black dot included in the letter ‘a’ of the earlier mark, size of letters and their slight stylisation are less important than the coincidence in the initial verbal element ‘ALTEC’. As a result, these elements are not sufficient to exclude a likelihood of confusion between the marks in question.

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). Therefore, considering their similar structure (one verbal element), as well as the visual and aural similarities between the signs, it is concluded that consumers, relying on their imperfect recollection of the earlier mark, may think that the contested goods, found to be identical or similar, come from the same or economically linked undertakings. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 10 651 511. 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 trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 21 353 41 for the word mark ‘ALTECNIC’ for goods in Class 11.

Since this mark covers narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The opposition based on Article 8(1) is not successful insofar as the remaining contested goods are concerned. Therefore, the Opposition Division will now proceed to examine the other ground of the opposition, namely Article 8(5) EUTMR in relation to those contested goods.

 

REPUTATION – ARTICLE 8(5) EUTMR

In the Notice of Opposition the opponent claimed having reputation in relation to the following earlier trade mark:

• European Union trade mark registration No 2 135 341 for the word mark ‘ALTECNIC’

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 07/05/2012 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit has been extended on many occasions and expired on 23/11/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

In the letter sent to the Office on 03/02/2017, the opponent declared that it wishes to base its opposition on European Union trade mark registration No 2 135 341 and European Union trade mark application No 10 651 511 only. Since the opponent did not explicitly referr to whether he wished to continue the opposition as based on Art. 8(4) EUTMR, the Opposition Division finds it appropriate to examine the opposition also in relation to this ground.

In the Notice of Opposition the opponent claimed, that his non-registered trade marks,  ‘ALTECNIC’ and were used in the course of trade of more than mere local significance in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 07/05/2012 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit has been extended on many occasions and expired on 23/11/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Gueorgui IVANOV

Monika CISZEWSKA

Robert MULAC

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.