OPPOSITION No B 2 705 245
Bernd Brandes, Kalkhüttenweg 9, 23701 Eutin, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Martin Landolf Lobemeier, Holtenauer Str. 57, 24105 Kiel, Germany (professional representative)
a g a i n s t
Stacon TIS Duszak sp.j., ul. Ogrodowa 5, 07-420 Kadzidło, Poland (applicant) represented by Biuro Rzecznika Patentowego Izabella Raniszewska, ul. Narutowicza 23d/7, 10-581 Olsztyn, Poland (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 705 245 is partially upheld, namely for the following contested services:
Class 37: Construction of galleries; house building; building of offices; building of commercial properties; building of industrial properties; building construction supervision; building services relating to building for industry purposes; construction of structures for the storage of crude oil; construction of structures for the storage of natural gas; building construction advisory services; insulation of pipes; building insulating.
Class 42: Professional consultancy relating to technology; engineering design and consultancy; professional consultancy relating to architecture; development of construction projects; conducting technical project studies for construction projects.
2. European Union trade mark application No 15 376 643 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 15 376 643 namely against all the services in Classes 37 and 42. The opposition is based on, European Union trade mark registration No 4 251 881. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 09: Scientific apparatus and instruments in the form of laboratory equipment; heavy current and light current engineering apparatus and instruments for measuring, line conversion, monitoring, controlling, storing, recording, regulating and processing data; apparatus, instruments and devices consisting of such apparatus, instruments and attachments, including parts of said goods included in this class as well as monitors, sensors and sensing computers for monitoring leaks in. pipes and line systems; navigating, measuring, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments; cables, electrical wires, conductors and armatures for electrical and pneumatic/electrical connections; electrical equipment for remote control of open ting procedures and industrial processes as well as power plants; apparatus and devices for optical and opto-technical measurement of impulse travel time; apparatus and equipment for measuring and electrical monitoring of pressure loss in pneumatic sensor tubes; devices and instruments for regulating, monitoring and locating leaks in pipe and line systems.
Class 37: Installation and assembly of equipment and instruments for regulating, monitoring and locating leaks in pipe and line systems; said services being included in this class.
Class 42: Architectural planning and consultation relating to devices and instruments for regulating and monitoring leaks, related engineering, physics and technical services.
The contested services, after the limitation that was requested by the applicant on 31/10/2016, are the following:
Class 37: Construction of galleries; House building; Building of offices; Building of commercial properties; Building of industrial properties; Building construction supervision; Building services relating to building for industry purposes; Construction of structures for the storage of crude oil; Construction of structures for the storage of natural gas; Building construction advisory services; Rental of construction and building equipment; Insulation of pipes; Building insulating.
Class 42: Professional consultancy relating to technology; Engineering design and consultancy; Professional consultancy relating to architecture; Development of construction projects; Conducting technical project studies for construction projects.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 services in Class 37
The contested building construction advisory services involve consultation relating to building construction which would occur after the phase of architectural planning. The opponent’s architectural consultation relating to devices and instruments for regulating and monitoring leaks in Class 42 involves a specific consultation relating to architectural aspects. The fields of building and architecture are closely related, as is explained in detail below. The services in question are considered similar because they have the same nature and purpose. They may also be directed at the same consumers through the same distribution channels.
The contested construction of galleries; house building; building of offices; building of commercial properties; building of industrial properties; building construction supervision; building services relating to building for industry purposes; construction of structures for the storage of crude oil; construction of structures for the storage of natural gas; building insulating are all building services that cover all the services involved in the physical construction of buildings or structures. Architectural planning in general covers the services rendered by an architect in preparing preliminary sketches, drawings or plans of the work to be executed, especially graphic representations with detailed construction plans. It includes planning and designing form, structure, and combinations of details or features for buildings. These services are indispensable for building services and, therefore, they are complementary. Furthermore, these services are often offered together through the same distribution channels and target the same end consumer. Therefore, they would be considered similar. However, in the present case, the opponent´s services only cover a very specific type of architectural planning in Class 42, namely architectural planning in relation to devices and instruments for regulating and monitoring leaks. This specific type of architectural planning is not indispensable but rather advisable for the building in question. Therefore, although these services may be offered together through the same distribution channels and target the same end consumer, they cannot be considered complementary and so are only similar to a low degree to the contested goods.
The contested insulation of pipes has the purpose of reducing heat loss and preventing freezing which can cause pipes to burst and lead to leaks. Therefore one of its main purposes is to prevent leaks. The opponent’s services installation and assembly of equipment and instruments for regulating, monitoring and locating leaks in pipe and line systems are directly related to locating leaks in pipes. Therefore it is logical that the consumer would expect both services to come from the same company. Furthermore, these services could be offered together through the same distribution channels and target the same end consumer. Therefore they are considered similar to a low degree.
The contested rental of construction and building equipment is dissimilar to the opponent’s installation and assembly of equipment and instruments for regulating, monitoring and locating leaks in pipe and line systems; said services being included in this class. The contested services would include the rental of equipment such as bulldozers, scaffolding, cranes and tools related to building that would be used during the construction. These services generally come from specialised companies and may also be offered by the construction companies themselves. However the opponent’s services are highly specialised installation services related to highly technical apparatus for the detection of leaks. Such services will not normally be offered by the same kind of company that rents building equipment. The nature of the services are different as is their purpose and they are not in competition with each other.
The contested rental of construction and building equipment is also dissimilar to the rest of the opponent’s goods and services. The nature, purpose and method of use differ. The services are neither in competition nor are they complementary. Distribution channels and relevant public will not normally coincide and the services do not normally have the same origin.
Rental/leasing services are in principle always dissimilar to the goods rented/leased. Therefore it is not necessary to establish if the opponent’s goods in Class 9 fit into the category of construction and building equipment. Even if they did they would be dissimilar to the contested rental of construction and building equipment. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the nature and purpose of the goods are different as is the method of use. They are neither in competition nor are they complementary and they would not normally come from the same provider/producer.
Contested services in Class 42
The contested professional consultancy relating to technology; professional consultancy relating to architecture include as broader categories, or overlaps with the opponent’s architectural consultation relating to devices and instruments for regulating and monitoring leaks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested engineering design and consultancy; development of construction projects are included in or overlap with the opponent’s architectural planning and consultation relating to devices and instruments for regulating and monitoring leaks, related engineering, physics and technical services. Therefore they are identical.
The contested conducting technical project studies for construction projects are included in the opponent’s technical services. Therefore they are identical.
- 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 services found to be identical and similar to a low degree are directed mainly at a professional public with specific professional knowledge or expertise but also at the public at large.
The degree of attention is considered to be high. The services at hand are costly and in some cases imply risk and so the consumer will be especially attentive since the consequences of making a poor choice through lack of attentiveness could have adverse effects.
- The signs
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STATCON
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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 earlier mark is the word mark STATCON which has no meaning in relation to the services at issue. Therefore, it is distinctive.
The contested sign is a figurative mark that contains the word element ‘stacon’ in a dark grey lower case fairly standard typeface. This word is meaningless in relation to the services at hand and therefore is distinctive. Above the word element to the left is a figurative device made up of two interlocking semi-circular elements, one in orange and one in red. This figurative element has no meaning in relation to the services at issue and so is distinctive.
The contested sign has no elements that could be considered clearly more dominant than other elements.
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).
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.
Visually, the signs coincide in ‘STA-CON’ which is the distinctive verbal element of the contested mark. However, they differ in the additional letter ‘T’, in the earlier mark and in the graphic aspect of the contested sign including the distinctive figurative device. Therefore, the signs visually are similar to an above 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 ‘STA-CON’, present identically in both signs. The signs differ in the pronunciation of the sound of the letter ‛T’ in the middle of the earlier sign, which has no counterpart in the contested mark. Therefore, the signs are aurally highly similar.
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 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
In the present case the goods and services have been found to be partly identical, partly similar to a low degree and partly dissimilar. The signs are aurally similar to a high degree, visually similar to an above average degree and the conceptual aspect does not influence the similarity between the signs.
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). 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 the above the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public. The verbal elements of the marks are almost identical. The distinctive figurative element in the contested sign may not be overlooked by the consumer but it is not enough to rule out a likelihood of confusion on the part of the relevant public given the high level similarity of the verbal elements that coincide in six of seven letters. As mentioned the verbal elements, that start and end with the same letters, will have a greater impact on the consumer.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public despite the high degree of attentiveness and even for the services that are only similar to a low degree. The similarity between the signs outweighs the low degree of similarity between the services in question Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to a low degree.
The rest of the contested 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 services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
| Tobias KLEE
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Lynn BURTCHAELL | Claudia MARTINI
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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.