OPPOSITION No B 2 338 013

Sociedad Anonima de Electronica Submarina-Saes, Carretera de Algameca, s/n, 30205 Cartagena (Murcia), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Memry Corporation, Berkshire Boulevard 3, Bethel, Connecticut 06801, United States of America (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 338 013 is partially upheld, namely for the following contested services:

Class 42: Engineering research in the field of medicine and medical instruments.

2.        European Union trade mark application No 12 309 861 is rejected for all the above services. 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 and services of European Union trade mark application No 12 309 861, namely against all the goods and services in classes 9, 40 and 42. The opposition is based on European Union trade mark registration No 4 715 868 and Spanish trade mark registration No 2 804 673. The opponent invoked Article 8(1)(b) EUTMR.

The earlier European Union trade mark registration No 4 715 868 is the figurative mark below

, ,

and Spanish trade mark registration No 2 804 673 is a verbal one, namely ‘SAES’.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 4 715 868 and Spanish trade mark registration No 2 804 673.  

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 03/01/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Spain from 03/01/2009 to 02/01/2014 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

(1) European Union trade mark registration No 4 715 868

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images (in particular radar and sonar apparatus).

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

(2) Spanish trade mark registration No 2 804 673

Class 9:        Scientific, nautical, geodesic, photographic, cinematographic, optical, weighing, measuring, signalling, controlling (inspection), rescue and teaching apparatus and instruments, apparatus and instruments for conducting, distribution, transformation, accumulation, regulation and control of the electricity, apparatus for the registration, transmission, reproduction of the sound and images, supports of magnetic registers, acoustic discs, automatic distributers and mechanisms for prepayment apparatus, cash registers, calculators, equipment for the treatment of the information (data processing) and computers, extinguishers.

Class 40:         Services of treatment of materials.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; scientific analysis and research services for medical purposes; design and development of computer hardware and software; services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computers specialists; services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/01/2016, pursuant to Rule 22(2) EUTMIR, the Office gave the opponent until 17/03/2016 to submit evidence of use of the earlier trade marks. The deadline was extended until 17/05/2016. On 29/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex A: two banners reflected in the website www.infodefensa.com appearing the promotion of SAES goods and also their promotion as specialist in electronic underwater;

• Annexes B1 – B3, B5 – B7, B13-15: several publications dated between 2009 and 2014, containing advertisements for goods such as tactical simulators, sonar simulators/stimulators, engineering model for development & integration, acoustic environmental modelling, interface & equipment simulators, solarsub RDTAS & TAHS, towed array sonar and handling system, DDS Diver Detection Sonar, Cylindrical Sonar Modernization, acoustic processing, acoustic classification, sonar performance prediction system, own noise monitoring system. Some of these advertisements mention that SAES is a company specializing in acoustics and underwater electronics with over 20 years of experience in the development and marketing of systems company sonar, AWS systems, processing sonobuoy, multi – influence, intelligence and acoustic classification, naval mines, protection systems and maritime surveillance stations, simulation and training under the mark represented below:

• Annex B4, B8: a document containing a business naval index in where SAES is included essentially in electronics, maintenance and systems and underwater equipment;

• Annexes B9 – B12: yearbooks of 2014 in Europe and Latam reflecting the presence of SAES in the defence field;

• Annex C: brochures and portfolio of the opponent;

• Annex D: annual financial reports of Sociedad Anonima de Electronica Submarina-Saes for 2009 – 2013;

• Annex E: pictures regarding some fairs in where the opponent participated in Spain and in Europe;

• Annex F: documents reporting different news of opponent’s goods and services, part of these dated between 2009 – 2013;

• Annex G: 4 invoices to clients from France and Spain, dated between 30/04/2014, two of these being in English, one of these being  for a sensor data link and the other one for design, development, manufacture, supply and support of ASW subsystem P3A;   

• Annex H: extracts from the opponent’s website, www.electronica-sumbarina.com and statistics about the visitors of the site generated by Google Analytics, most of them being outside the relevant period, one only concerning the period 01/11/2012 – 31/12/2013 and mentioning 9751 visitors on the site.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices and advertisements, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The invoices and extracts from third parts publications show that the place of use is the European Union and Spain. This can be inferred from the language of the documents (English, Spanish), the currency mentioned (euros) and some addresses in France and Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely invoices, financial reports, extracts from third parts publications, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence displays the earlier marks in its verbal form or the figurative form shown below:

 

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

‘…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.’

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for nautical, surveying, signalling, checking (supervision) apparatus and instruments; radar and sonar apparatus as subcategory of apparatus for recording, transmission or reproduction of sound or images in Class 9 and  technological services and design relating to nautical, surveying, signalling, checking (supervision) apparatus and instruments in Class 42. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for these goods and services.

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 4 715 868.

1. The goods and services

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

Class 9:        Nautical, surveying, signalling, checking (supervision) apparatus and instruments; radar and sonar apparatus.

Class 42:        Technological services and design relating to nautical, surveying, signalling, checking (supervision) apparatus and instruments.

The contested goods and services are the following:

Class 9:        Metal actuators, namely, electrical and thermal actuators.

Class 40:        Custom metallurgical services for production shape memory alloy components; specialized machining of metal alloy components; joining, welding, crimping and adhesion of metal alloys; custom grinding of metal alloy components; coating and plating of metal alloy components; shape setting and heat treatment of metal alloys; coiling of metal components; laser cutting of metal components; surface treatments for metals; melting, milling and manufacture of nickel-titanium alloy products.

Class 42:        Metallurgical and engineering research and new product development; metallurgical analysis and testing; Engineering research in the field of medicine and medical instruments.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested goods in Class 9 consist of actuators, a specific machine or part of a machine which moves or controls another part in response to an input (information extracted on 12/05/2017 from Collins Dictionary from https://www.collinsdictionary.com/dictionary/english/actuator). The earlier goods consist of nautical, surveying, signalling, checking (supervision) apparatus and instruments; radar and sonar apparatus, whereas the earlier services consist of technological services and design relating to these apparatus and instruments. The fact that the opponent’s goods may need an actuator to function is not sufficient to find them similar. Indeed, there are apparatus and instruments controlled through an actuator in various classes. Their natures and purposes differ, as do their producers, consumers and distribution channels. The contested goods are dissimilar to the earlier goods.

With regard to the opponent’s services, these are also dissimilar to the goods of the contested mark. The fields are not directly related; they all belong to a different area of activity, are of a different nature and have different origin, different purposes and end-users.

Contested services in Class 40

The contested services in Class 40 consist of metallurgical services. The earlier goods consist of nautical, surveying, signalling, checking (supervision) apparatus and instruments; radar and sonar apparatus, whereas the earlier services consist of technological services and design relating to these apparatus and instruments. The contested services in Class 40 are dissimilar to the earlier services. Their natures and purposes differ, as do their providers, consumers and distribution channels.

Moreover, the contested services in Class 40 are dissimilar to the earlier goods. The fact that the opponent’s goods may contain metallurgical parts is not sufficient to find them similar. Indeed, there are apparatus and instruments with metallurgical parts in various classes. Their natures and purposes differ, as do their producers, consumers and distribution channels.

Contested services in Class 42

There is a link between the contested engineering research in the field of medicine and medical instruments and the opponent’s technological services and design relating to signalling, checking (supervision) apparatus and instruments. Only to give an example, the sonar and the ultrasound apparatus for medical investigation use the same principle of investigation something with sounds. Therefore, these services share the nature and the purpose and may be provided by the same undertakings. The services are similar.  

The same does not apply to the remaining contested services, namely metallurgical and engineering research and new product development; metallurgical analysis and testing. In fact, both lists of services are relating to completely different fields. The applicant’s services relate to the metallurgical industry and the opponent’s services relate to nautical, surveying, signalling, checking (supervision) apparatus and instruments. Consequently they do not serve the same purpose. Furthermore these services are not provided by the same undertakings and the target public is not the same. As a consequence they are not in competition with each other. The services are dissimilar.

Furthermore, the contested metallurgical and engineering research and new product development; metallurgical analysis and testing are dissimilar to earlier goods as they are in different fields and directed at a different target public and are not provided by the same undertakings.

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, due to the specialised nature of the services found to be similar, they are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary from higher than average to high. 

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 verbal element ‘SAES’ of both marks has no meaning for the relevant public and is, therefore, distinctive.

It is very likely that the word ‘GROUP’ of the contested sign (present twice in the sign) will be understood by the relevant public as, inter alia, an association of companies under single ownership and thus has little or no trade mark significance. Moreover, the generic word ‘COMPANY’ of the contested sign is universally used as a reference to a business establishment and will be understood as such, especially by the English-speaking public and countries where a similar term is used such as Spain, Portugal, France, Romania and Germany (compañía, companhia, compagnie, kompanie). The letter ‘a’ of the contested sign will be perceived, at least by the English-speaking part of the public, as the indefinite article used for referring to someone or something for the first time or when people may not know which particular person or thing. It has no inherent trade mark value or distinctiveness. The word ‘MEMRY’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark is composed of a distinctive verbal element, ‘SAES’ and a less distinctive figurative element of a purely decorative nature. Consequently, the verbal element of the earlier mark is its most distinctive element.

The same applies for the arc which connects the letters ‘e’ and ‘y’ of the verbal element ‘memry’ of the contested mark, which is considered of a purely decorative nature.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The verbal elements ‘SAES group’ and ‘memry’ (although its typeface is slightly bigger than the element ‘SAES’) in the contested sign are the dominant elements as it is the most eye-catching.

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).

Visually, the signs coincide in the verbal element ‘SAES’ which represents the single verbal element of the earlier mark and it is present twice in the contested mark. However, they differ in rest of the verbal elements ‘group’ (listed twice), ‘memry’ and ‘a […] company’ of the contested sign, as well as in the figurative elements, colours and stylisation of both signs. These elements, apart from ‘memry’, are non-distinctive, as explained above, and therefore do not affect the visual comparison.

Therefore, the signs are visually similar to an average 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, /S/A/E/S/’, present identically in both signs (even twice in the contested mark). The pronunciation differs in the sound of the rest of the verbal elements ‘group’ (listed twice), ‘memry’ and ‘a […] company’ of the contested mark, which have no counterparts in the earlier sign. These elements, except for ‘memry’, were all found to be non-distinctive, as explained above, and therefore do not affect the aural comparison.

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

Conceptually, although the public in the relevant territory will perceive the meanings of part of the verbal elements of contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 and services 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 services are partly similar and partly dissimilar and the goods are dissimilar and target the business customers with specific professional knowledge or expertise. The degree of attention will vary from higher than average to high.

From the point of view of the relevant public, the signs are visually and aurally similar, inasmuch as they have in common the verbal element ‘SAES’, which is the only verbal element of the earlier mark and one of the most distinctive and dominant element of the contested mark, in which it appears twice, the rest of the words,  ‘group’ (listed twice) and ‘a […] company’ of the contested sign, which are not present in the earlier mark, were found to be non-distinctive, and in the figurative elements, which has a decorative nature, the stylisation and the colours of the signs. The signs also differ in the element ‘memry’ of the contested mark.

In addition, account should 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). 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).

The fact that the single verbal element of the earlier mark is entirely included in the contested sign may lead the public to believe that the services at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Moreover, the consumer will be lead to this conclusion by the presence of the elements ‘group’ and ‘a […] group company’ of the contested sign which will make him to believe that there is a group of companies under the earlier mark ‘SAES’ and the contested mark is one of this.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 4 715 868.

It follows from the above that the contested trade mark must be rejected for the services found to be similar (namely engineering research in the field of medicine and medical instruments) to those of the earlier trade mark.

The rest of the contested goods and services 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 goods and services cannot be successful.

The opponent has also based its opposition on the earlier Spanish trade mark No 2 804 673, ‘SAES’ (word mark), for nautical, surveying, signalling, checking (supervision) apparatus and instruments; radar and sonar apparatus in Class 9 and  technological services and design relating to nautical, surveying, signalling, checking (supervision) apparatus and instruments in Class 42.

Since this mark is almost identical to the one which has been compared (it is a word mark only) and cover the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTALOA

Francesca DINU

Rhys MORGAN

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.