OPPOSITION DIVISION
OPPOSITION No B 2 370 560
ABM-REXEL, S.L.U., Avd. De La Recomba, 7 Y 9, Plg. Ind. La Laguna, 28914,
Leganes, Madrid, Spain (opponent), represented by Pons Consultores De
Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010, Madrid, Spain
(professional representative)
a g a i n s t
Eaton Corporation, 1000 Eaton Boulevard, Cleveland, Ohio, 44122, United States
of America, (applicant), represented by Gevers, Brussels Airport Business Park,
Holidaystraat, 5, 1831, Diegem, Belgium (professional representative).
On 21/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 370 560 is upheld for all the contested goods.
2. European Union trade mark application No 12 642 179 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
PRELIMINARY REMARK:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 12 642 179 ‘ABM’, namely against all the goods in Class 9. The
opposition is based on, inter alia, European Union trade mark registration
No 6 517 452, . The opponent invoked Article 8(1)(b) EUTMR.
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, now Article 47(2) and (3) EUTMR), 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
Decision on Opposition No B 2 370 560 page: 2 of 7
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.
On 12/10/2016, the applicant requested that the opponent submit proof of use of all
the trade marks on which the opposition is based, namely European Union trade
mark registration Nos 369 181 ‘ ’, 4 299 764 ‘ ’, 6 517 452 ‘ ’
and Spanish trade mark registration No 2 042 456(6) ‘ ’.
In the present case, the contested sign was published on 24/03/2014. Therefore, if
any of the earlier relied upon registrations were registered more than five years prior
to the publication of the contested sign, they were the subject of the proof of use
claim. Therefore, the proof of use provisions applied to each of the earlier
registrations except for European Union trade mark registration No 6 517 452 ‘
’, which was registered on 02/07/2010. Since this is less than five years of
the publication of the contested sign (24/03/2014) the proof of use provisions do not
apply and although evidence was submitted in relation to this registration, it was not
necessary and shall not be considered.
In view of this the Opposition Division finds it appropriate to first examine the
opposition in relation to the opponent’s European Union trade mark registration
No 6 517 452 ‘ ’.
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and
binding compositions; fuels (including motor spirit) and illuminants;
candles and wicks for lighting.
Decision on Opposition No B 2 370 560 page: 3 of 7
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; magnetic data carriers, recording
discs; automatic vending machines and mechanisms for coin-
operated apparatus; cash registers, calculating machines, data
processing equipment and computers; fire-extinguishing apparatus.
Class 11: Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 19: Building materials (non-metallic); non-metallic rigid pipes for building;
asphalt, pitch and bitumen; non-metallic transportable buildings;
monuments, not of metal.
Class 35: Advisory services for the organization and the direction of business;
employment and accounting consultancy; Import-export services;
advertisement services; office functions and business administration.
Class 36: Tax and financial advisory services; Real-estate and financial affairs;
insurance services.
Class 37: Building construction; repair; installation services.
Class 38: Telecommunications and communications via global information
networks.
Class 39: Transport; packaging and storage of goods; travel arrangement.
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.
Class 45: Legal services; security services for the protection of property and
individuals; personal and social services rendered by others to meet
the needs of individuals.
The contested goods are the following:
Class 9: Apparatus, namely, sensors, software and computer hardware for
supplying and controlling electrical power, namely, increasing life,
speeding recharging time and notifying of failure of batteries in
connection with uninterruptible power supplies; and computer
operating software for controlling such systems.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
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.
Decision on Opposition No B 2 370 560 page: 4 of 7
Contested goods in Class 9
As previously stated, use of the term ‘namely’ restricts the scope of protection only to
the goods which precede it. In this instance, they are sensors, software and
computer hardware for supplying and controlling electrical power, namely, increasing
life, speeding recharging time and notifying of failure of batteries in connection with
uninterruptible power supplies. Whilst the aforementioned term contains a second
‘namely’ the subsequent terms to it serve to describe the intended purpose of the
goods in question.
The contested Apparatus, namely, computer hardware for supplying and controlling
electrical power, namely, increasing life, speeding recharging time and notifying of
failure of batteries in connection with uninterruptible power supplies are included in
the broad category of the opponent’s Class 9 computers. Therefore, they are
identical.
The contested Apparatus, namely, sensors for supplying and controlling electrical
power, namely, increasing life, speeding recharging time and notifying of failure of
batteries in connection with uninterruptible power supplies overlap with the
opponent’s Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments. Therefore, they are identical.
The contested Apparatus, namely, software for supplying and controlling electrical
power, namely, increasing life, speeding recharging time and notifying of failure of
batteries in connection with uninterruptible power supplies are similar to the
opponent’s Class 9 Data processing apparatus as they can coincide in producer, end
user and distribution channels. Furthermore they are complementary.
When interpreting list of goods and services the use of a semi-colon typically
separates goods from those listed previously to them. However, there are some
instances where despite the existence of a semi-colon the latter goods do have an
impact on the goods previously listed. In the present case, the contested ‘;and
computer operating software for controlling such systems’ are to be interpreted in
relation to the preceding goods. Otherwise the term is ambiguous. In other words, the
use of ‘and’ plus ‘such systems’ is interpreted to refer to sensors, software and
computer hardware for supplying and controlling electrical power, namely, increasing
life, speeding recharging time and notifying of failure of batteries in connection with
uninterruptible power supplies. Accordingly, the contested computer operating
software for controlling such systems [sensors, software and computer hardware for
supplying and controlling electrical power, namely, increasing life, speeding
recharging time and notifying of failure of batteries in connection with uninterruptible
power supplies] are considered to be similar to the opponent’s Class 9 data
processing equipment since they can coincide in producer, end user and distribution
channels. Furthermore they are complementary.
b) 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.
Decision on Opposition No B 2 370 560 page: 5 of 7
In the present case, the relevant goods found to be identical or similar are
specialised goods directed at business customers with specific professional
knowledge or expertise. The degree of attention will be higher than average.
c) The signs
ABM
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 trade mark is a figurative mark consisting of the letters ‘ABM’ which have
no meaning in relation to the goods. They are placed above a banal blue rectangle.
Behind the letter ‘m’ is a basic depiction of a sun. The figurative elements are basic
geometrical shapes and therefore are of weak distinctive character. In view of the
above, the letters in the earlier mark are considered to be more distinctive.
The verbal element is the element considered to be more dominant. 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 a word mark, ABM. Since it has no meaning to the relevant
public in relation to the goods in question, it is distinctive.
Visually, the signs coincide in ‘ABM’ which makes up the contested sign. They
merely differ in the figurative elements in the earlier sign which have no counterpart
in the contested sign. However, these elements are considered to be of weak
distinctive character.
Therefore, the respective marks are considered to be visually similar to a high
degree.
Aurally, the figurative elements in the earlier mark will not be pronounced. Therefore,
the respective sign will be pronounced as ‘A-B-M’. They are aurally identical.
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
Decision on Opposition No B 2 370 560 page: 6 of 7
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 in section
c) of this decision.
e) Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the
circumstances of the case. Likelihood of confusion implies some interdependence
between the relevant factors, and in particular a similarity between the trade marks
and between the goods or services. Accordingly, a lesser degree of similarity
between the goods or services may be offset by a greater degree of similarity
between the marks, and vice versa (20/09/1998, C-39/97, Canon, EU:C:1998:442, §
17 et seq.).
In the present case, the respective goods have been found to be either identical or
similar to various degrees. The respective marks have the identical three letters in
the same sequence. They only differ insofar that the earlier trade mark contains
additional figurative elements which are considered to be of less importance.
However, these elements do not counter the finding that they are visually similar to a
high degree and aurally identical. A conceptual comparison is not possible.
It has also been found that the relevant public will pay a higher than average degree
of attention upon purchasing the goods and the earlier mark has a normal degree of
distinctive character.
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, there is a clear likelihood of confusion on the part of the
public. Therefore, the opposition is well founded on the basis of the opponent’s
European Union trade mark registration No 6 517 452 ‘ ’. It follows that the
contested trade mark must be rejected for all the contested goods.
As the aforementioned earlier right ‘ ’ leads to the success of the opposition
and to the rejection of the contested trade mark for all the goods against which the
opposition was directed, there is no need to examine the other earlier rights invoked
Decision on Opposition No B 2 370 560 page: 7 of 7
by the opponent nor the proof of use filed (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Ioana MOISESCU Mark KING Francesca DRAGOSTIN
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.