OPPOSITION No B 2 760 588

Ice IP S.A., rue des Tilleuls, 3, 8832 Rombach, Luxemburg (opponent), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Avi Rebibo, 37 rue Paul Vaillant Couturier, 92300 Levallois Perret, France (applicant).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 588 is partially upheld, namely for the following goods:

Class 9: Information technology and audiovisual equipment; diving equipment; devices for treatment using electricity; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; recorded content; apparatus, instruments and cables for electricity; scientific research and laboratory apparatus, educational apparatus and simulators; magnets; measuring, detecting and monitoring instruments, indicators and controllers; optical devices, enhancers and correctors.

2.        European Union trade mark application No 15 449 515 is rejected for all the above goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 449 515 namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 10 915 213. The opponent invoked Article 8(1)(b) EUTMR.

 

SUBSTANTIATION

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 is 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, on 01/09/2016 the opponent was given until 06/01/2017 to substantiate its earlier rights. The evidence filed by the opponent on 03/01/2017 in relation to International trade mark registration designating the European Union No 1 152 655 and No 1 029 087 consist of an extract from the eSearch plus data base.

However, according to Rule 19(2)(a)(ii) EUTMIR, the extract from eSearch is not sufficient to substantiate the earlier rights in question. An extract emanating from the WIPO should have been provided.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

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 10 915 213.

1. The goods

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

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; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software not for calculating insurance tariffs; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Information technology and audiovisual equipment; diving equipment; devices for treatment using electricity; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; recorded content; apparatus, instruments and cables for electricity; scientific research and laboratory apparatus, educational apparatus and simulators; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; optical devices, enhancers and correctors.

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.

The contested signalling devices; measuring instruments are identically contained in both lists of goods (including synonyms).

The contested information technology equipment includes, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested audiovisual equipment includes, as a broader category, the opponent’s cinematographic apparatus and instruments. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested diving equipment includes instruments such as submersible pressure gauges that are used to monitor the remaining breathing gas supply in scuba cylinders and consequently overlap with the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested devices for treatment using electricity are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested safety, protection devices are devices used to prevent serious or fatal accidents. Therefore, they are included in the broad category of the opponent’s life-saving apparatus and instruments and they are identical.

The contested security devices overlap with the opponent’s signalling apparatus and instruments, because both categories include, for example, acoustic alarms. Therefore, they are identical.

The contested navigation, guidance, tracking, targeting and map making devices include devices such as marine GPS and overlap with the opponent’s nautical apparatus and instruments. Therefore, they are identical.

The contested apparatus, instruments for electricity include, as a broader category, or overlap with, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested measuring indicators and controllers are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested monitoring instruments, indicators and controllers are included in the broad category of the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested recorded content includes as a broader category the opponent’s computer software not for calculating insurance tariffs. Therefore, they are identical.  

The contested detecting instruments, indicators and controllers is similar to the opponent’s signalling apparatus and instruments since they are complementary and their producer will normally coincide. They can also be purchased at the same points of sale and they are addressed to the same end consumer.

An electromagnet is a type of magnet that runs on electricity and that works because an electric current produces a magnetic field. An electromagnet consists of a length of conductive wire, usually copper, wrapped around a piece of metal. A current is introduced, either from a battery or another source of electricity, and flows through the wire. This creates a magnetic field around the coiled wire, magnetizing the metal as if it were a permanent magnet. Consequently, the contested magnets are similar to the opponent’s apparatus and instruments for conducting electricity since they have a similar nature and share the same purpose. They can be manufactured by the same producer and provided through the same undertakings. Finally, the end consumer may also coincide.

The contested magnetizers and demagnetizers are devices that make a substance or an object magnetic or that remove these magnetic properties. To that extent, they are dissimilar to any of the opponent’s goods since they have different natures and purposes. They also have a different method of use and are neither complementary nor in competition. Furthermore, producers and distribution channels will normally not coincide.

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 at business customers with specific professional knowledge or expertise.

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

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. Indeed, the common element ‘ICE’ will be understood as such in those countries where English is understood. As it is not descriptive of any characteristic of the goods in question, this word is distinctive.

As regards the word ‘SWISS’ and the representation of the Swiss flag inside the two snowflakes in the earlier mark, they will be understood as ‘belonging or coming from Switzerland’ and will therefore inform the consumer about the geographical origin of the goods. To that extent, these elements are considered to have a weak distinctive character. The snowflakes in themselves are distinctive since they are not providing information of any kind.

The word ‘WATTS’ in the contested sign will be associated to ‘a unit of power, equal to a power rate of one joule per second’. Given that the goods in question all need energy for their functioning, this word is also considered to be weak since it alludes to one of their characteristic. On the contrary, the zipper and the peaks are distinctive.

The signs have no elements that could be considered clearly more dominant than other elements.

Nevertheless, it must be noted 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).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left or on the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the word ‘ICE’ and in the colours used to represent them, namely, red, white and black, albeit that they are used in a different way. However, they differ in the word ‘WATTS’ in the contested sign, in the zipper, in the peaks and in the circle that have no counterpart in the earlier mark. They also differ in the word ‘SWISS’ in the earlier mark, in the flags and in the snowflakes that have no counterpart in the other sign.

Despite the reduced distinctive character of some of the differentiating elements and the little impact of the rest of the figurative components will cause on consumers, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘ICE’, present identically in both signs. The pronunciation differs in the additional sound of the word ‛WATTS’ in the contested sign and in the additional sound of the word ‘SWISS’ in the earlier mark. Although these additional elements, if pronounced, will create a different intonation, their reduced distinctive character will not cause such of an impact on consumers.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average 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 some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. 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).

In the present case, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The signs are visually similar to a low degree and aurally and conceptually similar to an average degree. Indeed, the coincidence in the word ‘ICE’ is particularly relevant both because it is the word that will first catch the consumer attention and because of its distinctiveness. Furthermore, the fact that the verbal elements within the signs are positioned in the same way, namely on two lines, the second word being less distinctive, can lead the consumer to confuse the trade marks themselves, or to make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings. Indeed, it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal (words and numbers) or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image.

Consequently, although the coincidences in the signs are visually less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role within the signs.

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 partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 915 213. 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 goods cannot be successful.

The opposition is also based on the following earlier trade marks for which Article 8(1)(b) is also invoked:

• European Union trade mark registration No 10 465 763 for in Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; magnetic cards; computer software; telephone apparatus; telephone receivers; telephone transmitters; computer games apparatus; photographic apparatus; radio receivers; radio transmitters; computer hardware; parts and accessories for handheld and mobile digital electronic devices; parts and accessories for mobile telephones; mobile telephone covers; mobile phone covers; batteries; chargers; headphones; loudspeakers; microphones; apparatus for connecting and charging portable and handheld digital electronic devices; parts and fittings for all the aforesaid.

• European Union trade mark registration No 10 331 734 for  in Class 9: Telecommunications apparatus and instruments; electronic devices; computers; telephones, mobile telephones, video telephones, cameras; radio receivers; radio transmitters; video cameras; computer hardware and software, parts and fittings for portable and mobile electronic digital devices; parts and accessories for mobile telephones; batteries, chargers, headphones, loudspeakers, microphones; audio apparatus for cars, parts and fittings for all the aforesaid goods.

The contested magnetizers and demagnetizers are dissimilar to any of the earlier goods just mentioned for the same reasons as already given in part a) of the decision, namely they have different natures and purposes. They also have a different method of use and are neither complementary nor in competition. Furthermore, producers and distribution channels will normally not coincide. Therefore, the outcome cannot be different with respect to the contested goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Martina GALLE

Sandra IBAÑEZ

Boyana NAYDENOVA

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.