OPPOSITION No B 2 385 410

Continental Emitec Verwaltungs GmbH, Hauptstraße 128, 53797 Lohmar, Germany (opponent), represented by KNH Patentanwälte Kahlhöfer NEumann Rößler Heine Partg Mbb, Rossstr. 92, 40476 Düsseldorf, Germany (professional representative)

a g a i n s t

Dinex A/S, Fynsvej 39, 5500  Middelfart, Denmark (applicant), represented by WTC Advokaterne, Slotsgade 36 B, 1 floor, 3400 Hillerød, Denmark (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 385 410 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 12 648 614. The opposition is based on, inter alia, German trade mark registration No 30 2010 049 769. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 2010 049 769.

1. The goods

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

Class 7: Combustion engines, apart from land vehicles, parts of combustion engines, including of combustion engines for land vehicles, in particular exhaust gas catalytic converters and catalytic converter carriers, (all of the above goods included in class 7)

Class 9: Electric and electronic monitoring, regulating and control apparatus and devices for use with exhaust gas catalytic converters; parts of all of the above goods included in class 9

Class 12: Combustion engines for land vehicles (included in class 12)

The contested goods are the following:

Class 1: Catalysts

Class 7: Exhaust systems and emission technology apparatus and instruments, in particular for vehicles, including emission control systems, filters, catalytic converters, systems for re-circulation of exhaust gases, in particular in diesel engines for vehicles, exhaust silencers and exhaust pipes for vehicles.

Some of the contested goods are identical to goods on which the opposition is based. 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 assumed to be identical are directed at the professional public with specific knowledge or expertise in the field of exhaust systems and emission technology. The level of attention will be higher than average according to the level of specialisation of the goods, their price and the frequency of purchase.

3. The signs

E-SCR	F-SCR
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier sign consists of the element ‘E-SCR’ and the contested sign of the element ‘F-SCR’. The relevant public will break these down into elements as at least the first letters are separated through the use of a hyphen and ‘SCR’ has a specific meaning. This follows from settled case-law that states that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Indeed, the element ‘SCR’ is the acronym for ‘Selective Catalytic Reduction’ which is a means of converting nitrogen oxides, also referred to as NOx, with the aid of a catalyst into diatomic nitrogen (N2) and water (H2O). The relevant public will understand this foreign acronym which is commonly used in the industry in connection with the goods in question. As the goods are related to ‘exhaust systems of some machines containing a catalyst and emission technology’, this element is therefore non-distinctive for all the goods.  

On the other hand, the letter ‘E’ in the earlier mark and the letter ‘F’ in the contested sign have no meaning for the relevant public and are, therefore, distinctive. Even if the applicant considers that the ‘E’ indicates that the “emission control includes an electrically heated catalyst” and that the ‘F’ designates a “SCR coated filter”, apart from the webpage from the parties submitted by the applicant, no further documentation can confirm that these letters have these specific meanings in the present case.

Visually and aurally, the signs coincide in the acronym/sound sequence ‘SCR’ which is non distinctive for the goods. They differ in their first letter, respectively an ‘E’ for the earlier mark and an ‘F’ for the contested sign. Since these two letters are distinctive for the relevant public, placed at the beginning of each sign and pronounced differently in German, the signs are visually and aurally similar to only a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘SCR’, included in both signs, will be associated with the meaning explained above. As it is the non-distinctive element of the sign, they are therefore conceptually similar to only a low degree.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs have been found visually, aurally and conceptually similar to only a low degree. This conclusion has been reached in light of the fact that the overlapping element in the signs ‘SCR’ is non distinctive for the relevant public. The difference in the letter ‘E’ and ‘F’ is clearly perceivable since these letters occupy the first position of the signs and is sufficient to exclude any likelihood of confusion between the marks.

 

Considering all the above, even assuming that the goods are identical and bearing in mind that the level of attention is higher than average, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the German trade mark registration No 30 2010 049 771 for the word mark ‘E-SCRi’. The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the lowercase letter ‘i’ at the end of the sign which is not present in the contested trade mark. Moreover, it covers the same goods. Since, the outcome cannot be different with respect to goods for which the opposition has already been rejected, there is no likelihood of confusion between the contested sign and the other earlier right invoked by the opponent.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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

Vita VORONECKAITE

Lucinda CARNEY

Vanessa PAGE

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.