OPPOSITION DIVISION
OPPOSITION No B 2 745 670
F.A.R.H.O. Fabrica De Radiadores Hermanos Ochoa SLU, Pol. de Tabaza II.
Parcela 9 – 13, 33439 Carreño (Asturias), Spain (opponent), represented by P.E.
Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain
(professional representative)
a g a i n s t
Internet group d.o.o., Savski nasip 7, 11070 Beograd, Serbia (holder), represented
by Von Boetticher Rechtsanwälte Partnerschaftsgesellschaft mbB, Oranienstr.
164, 10969 Berlin, Germany (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 745 670 is partially upheld, namely for the following
contested goods:
Class 11: electric fans for personal use; cooling installations and machines;
cooling apparatus and installations; freezers; refrigerating cabinets;
refrigerating chambers; refrigerating display cabinets [display cases];
refrigerating containers; refrigerating apparatus and installations; refrigerators;
humidifiers for central heating radiators; desiccating apparatus; driers
[apparatus]; drying apparatus and installations; electric laundry driers; air
deodorizing apparatus; air filtering installations; air-purifying apparatus and
machines; air sterilizers; deodorizing apparatus not for personal use; ionization
apparatus for the treatment of air.
2. International registration No 11 251 407 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of international
registration designating the European Union No 11 251 407, namely against all the
Decision on Opposition No B 2 745 670 page: 2 of 13
goods in Class 11. The opposition is based on Spanish trade mark registration
No 2 858 873. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority 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.
For international registrations designating the European Union, the ‘date of filing’ or,
where applicable, the ‘date of priority’ of the contested mark within the meaning of
Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year
period of use obligation for the earlier mark, is considered to be the date of
registration, the date of subsequent designation of the European Union or the date of
priority of the contested international registration, as applicable. The earlier mark is
subject to the use obligation if, at that date, it has been registered for at least five
years.
The holder requested that the opponent submit proof of use of Spanish trade mark
registration No 2 858 873.
The request was submitted in due time and is admissible given that the earlier trade
mark was registered more than five years prior to the relevant date mentioned above.
The relevant date for the contested international registration (priority date) is
17/11/2014. The opponent was therefore required to prove that the trade mark on
which the opposition is based was put to genuine use in the European Union, the
from 17/11/2009 to 16/11/2014 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 11: Apparatus for lighting; heating; steam generating; cooking; refrigerating;
drying; ventilating; water supply and sanitary purposes.
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 8/12/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until
8/02/2017 to submit evidence of use of the earlier trade mark. On 20/01/2017, within
the time limit, the opponent submitted evidence of use.
Decision on Opposition No B 2 745 670 page: 3 of 13
On 15/05/2017, after expiry of the time limit, the opponent submitted additional
evidence in relation to the electric heaters under the earlier mark.
The Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take
into account the additional evidence submitted by the opponent on 15/05/2017.
However,since the evidence submitted within the time limit is sufficient to prove the
required genuine use of the earlier trade mark at least for part of the goods and
because, in any event, the belated evidence would not add to the scope of goods for
which the use of the earlier mark has been proven, the Opposition Division considers
it appropriate not take into account the evidence filed late by the opponent. Moreover,
it is noted, that this approach does not prejudice the rights of the opponent.
As the opponent requested to keep certain commercial data contained in the
evidence confidential vis-à-vis third parties, the Opposition Division will describe the
evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
Undated pictures of the electric heater called ‘TESSLA Model LH’, bearing the
mark TESSLA represented as follows: .
An undated brochure in Spanish, relating to the general characteristics of the
TESSLA heaters and providing technical information on the opponent’s model
of heaters: TESSLA DOMOTIC LHD, TESSLA LH and TESSLA DH. On the
pictures of the heaters the earlier mark is presented as follows:
.
Copies of 37 invoices issued by the opponent corresponding to the time
period from 29/10/2010 to 02/02/2015. The mark TESLA appears on the
invoices next to the description of the products (heaters). In particular, these
invoices refer to the sale of the same models of TESSLA heaters that appear
in the above mentioned documents, namely TESSLA LH and TESSLA LHD.
Most of the invoices are issued to clients located in Spain, except for a few of
them issued to clients in Uruguay.
A report regarding a household heating assessment related to an eight-flat
building situated in A Guardia (Pontevedra), Spain. The assessment was
conducted by the opponent’s technical department in October 2014 and refers
to the model TESSLA LH as the heating system. A picture of said model of
heater is included in the report, together with a table of its characteristics.
The holder 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, the
picture of the heaters, the brochure and the invoices, and their self-explanatory
character, the Opposition Division considers that there is no need to request a
translation.
Place of use
Decision on Opposition No B 2 745 670 page: 4 of 13
The brochure, the report and the invoices show that the place of use is Spain. This
can be inferred from the language of the documents (Spanish) and the addresses of
several invoices in Spain. Therefore, the evidence relates to the relevant territory.
As regards the invoices issued outside Spain, namely to what appears to be the
same customer in Uruguay, it is observed that according to Article 15(1), second
subparagraph, point (b) EUTMR, the following also constitutes use within the
meaning of paragraph 1: affixing of the European Union trade mark to goods or to the
packaging thereof in the Union solely for export purposes.
From the evidence submitted, it is apparent that the goods in question, electric
heaters, were manufactured in Spain and sold to Uruguay. The invoices issued to
Uruguay clearly show that the goods were exported from the relevant territory.
As regards to the invoices issued outside the European Union, in accordance with
Article 15(1), second subparagraph, point (b) EUTMR, such evidence of use is
considered to contain sufficient indications concerning the place of use.
Time of use
Evidence referring to use made outside the relevant timeframe is disregarded unless
it contains conclusive indirect proof that the mark must have been put to genuine use
as well during the relevant period of time. Events subsequent to the relevant time
period may make it possible to confirm or better assess the extent to which the
earlier mark was used during the relevant time period and the real intentions of the
EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer,
EU:C:2004:50).
Most of the evidence is dated within the relevant period. The sufficient degree of the
duration of use is indicated by the fact that the opponent submitted several invoices
for each year of the relevant period.
In the case at hand, the evidence referring to use outside the relevant period
confirms use of the opponent’s mark within the relevant period. This is because, in
the case of the invoices, although they cover the period between 2010-2015, they still
refer to use relatively close in time to the relevant period.
Extent of use
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.
Although the documentation filed is not particularly extensive, it provides the
Opposition Division with sufficient information concerning the commercial volume, the
territorial scope, the duration, and the frequency of use.
Decision on Opposition No B 2 745 670 page: 5 of 13
In particular, the amounts on the invoices in relation to electric heaters range from
several hundred euros to several thousands, depending on the quantity of articles.
Furthermore, with regard to the frequency of use, the invoices leave no doubt that
sales transactions under the mark were carried out regularly throughout the relevant
period.
The holder argues that the sales revenue reflected in the invoices as well as the
number of products sold within the relevant period is rather low. In this respect it is
noted that use of the mark need not be quantitatively significant for it to be deemed
genuine. And in any event, the documents taken into consideration altogether
indicate that the physical volumes of sales were not merely token, and sufficient for
establishing a commercial scale of transactions related to some of the goods at
issue. Moreover, the invoices submitted by the opponent are only samples and do
not represent the total sales (which can be inferred from the non-consecutive
numbering and dates of the invoices). Those factors support the conclusion, in the
context of a global assessment of whether the use to which the mark was put was
genuine, that the extent of its use was fairly significant. In that regard, it must also be
remembered that the purpose of the requirement for genuine use of the contested
mark is not to assess commercial success of the undertaking in question.
In the light of the above, it is clear from the evidence that the opponent distributed
goods bearing the earlier mark in the relevant market.
Therefore, the Opposition Division considers that the opponent has provided
sufficient indications concerning the extent of the use of the earlier mark.
Nature of use
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.
In the present case, the earlier mark has been used as a trade mark to identify some
of the goods in Class 11.
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.
The purpose of Article 15(1), second subparagraph, point (a), ‘is to allow its
proprietor, on the occasion of its commercial exploitation, to make variations in the
sign, which, without altering its distinctive character, enable it to be better adapted to
the marketing and promotion requirements of the goods or services concerned. In
accordance with its purpose, the material scope of that provision must be regarded
as limited to situations in which the sign is actually used by the proprietor of a trade
mark to identify the goods or services in respect of which the mark was registered
constitutes the form in which that same mark is commercially exploited. In such
situations, where the sign used in trade differs from the form in which it was
Decision on Opposition No B 2 745 670 page: 6 of 13
registered only in negligible elements, so that the two signs can be regarded as
broadly equivalent, the abovementioned provision envisages that the obligation to
use the trade mark registered may be fulfilled by furnishing proof of use of the sign
which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03,
Bainbridge, EU:T:2006:65, § 50).
It is appropriate to consider whether the mark as used differs from its registered form
in a way that would affect its distinctive character or, in spite of some differences, the
mark as used and its registered form are essentially the same.
The Spanish trade mark No 2 858 873 consists of the word mark ‘TESSLA’. However,
in the documents submitted, namely the pictures of products, the brochure and the
report demonstrates use of the element ‘TESSLA’ as , that is to
say with a graphical representation of the letters in blue and white, their contours
being delimited by a double blue line.
As to the white and blue colours used, it is evident that word marks are registered in
black and white. However, it is customary to use marks in colour. Such use does not
constitute a variant use of the registered mark. With regard to the specific stylised
font, such a depiction is one of the many variations in which commercial designations
are used in the course of trade. It is considered to constitute an acceptable means of
bringing the mark in question to the public’s attention and, consequently, does not
materially affect the distinctiveness of the word mark ‘TESSLA’, which is still clearly
distinguishable and readable in the sign.
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 mark during the relevant
period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods covered by the earlier trade mark.
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:
Decision on Opposition No B 2 745 670 page: 7 of 13
…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 various models of electric
heaters, belonging to the following category in the specification: apparatus for
heating.
The holder claims that “the general term ‘heating’ [rectius, apparatus for heating],
contained in Class 11 can be divided into various subcategories, e.g. heating
apparatus for vehicles; electric heaters; heaters for industrial use; radiant heating
apparatus, air heating apparatus, infrared heating apparatus”, etc.
However, the opponent is not required to prove all the conceivable variations of the
category of goods for which the earlier mark is registered. Therefore, in order to
respect the legitimate interest of the opponent in not being stripped of all protection
for not proving all conceivable variations of goods and since the goods for which use
has been proved do not constitute a coherent subcategory within the broad category
in the specification to which they belong, the Opposition Division considers that the
evidence shows genuine use of the trade mark for the following goods,
Class 11: apparatus for heating.
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
Decision on Opposition No B 2 745 670 page: 8 of 13
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
The goods on which the opposition is based are the following:
Class 11: apparatus for heating
The contested goods are the following:
Class 11: Lamp reflectors; lamps for lighting; electric lamps; electric light bulbs not for
use in connection with vehicles; light bulbs; light- emitting diode [LED] lighting
apparatus not for use in connection with vehicles; lighters; lighting apparatus and
installations not for use in connection with vehicles; electric lights for Christmas trees;
flashlights; safety lamps; street lamps; flashlights for lighting; luminous tubes for
lighting; electric pressure cookers; bakers’ ovens; barbecues; beverage-cooling
apparatus; bread baking machines; bread-making machines; coffee roasters; electric
coffee percolators; electric coffee machines; cookers (cooking stoves); cooking rings;
electric cooking utensils; cooking apparatus and installations; electric deep friers;
extractor hoods for kitchens; fruit roasters; heating showcases; electric heaters for
feeding bottles; heating plates; hot plates; electric kettles; kitchen ranges [ovens];
malt roasters; microwave cooking apparatus; microwave ovens for industrial use;
oven fittings made of fire clay; pasteurizers; plate warmers; electric pressure cooking
saucepans; roasters; grills [cooking appliances]; roasting jacks; roasting spits;
rotisseries; electric waffle apparatus; water softening apparatus and installations;
electric appliances for making yogurt; filters for drinking water; electric fans for
personal use; hair driers; hand-drying apparatus for washrooms; hot water bottles;
air driers; desiccating apparatus; driers [apparatus]; drying apparatus and
installations; electric laundry driers; cooling installations and machines; cooling
apparatus and installations; cooling installations for liquids; cooling installations for
tobacco; freezers; ice machines and apparatus; ice cube machines; milk-cooling
equipment; refrigerating cabinets; refrigerating chambers; refrigerating display
cabinets [display cases]; refrigerating containers; refrigerating apparatus and
installations; refrigerators; bread toasters; air deodorizing apparatus; air filtering
installations; air-purifying apparatus and machines; air sterilizers; deodorizing
apparatus not for personal use; germicidal lamps for purifying air; humidifiers for
central heating radiators; ionization apparatus for the treatment of air or water;
ventilation hoods not for use in connection with vehicles or energy storage systems.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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.
Decision on Opposition No B 2 745 670 page: 9 of 13
The contested electric fans for personal use; cooling installations and machines;
cooling apparatus and installations; freezers; refrigerating cabinets; refrigerating
chambers; refrigerating display cabinets [display cases]; refrigerating containers;
refrigerating apparatus and installations; refrigerators are considered similar to the
opponent’s apparatus for heating as they can coincide in producer, distribution
channels and relevant public. The goods belonging to the categories under
comparison can coincide in their working method – by mechanically moving heated
or cooled air.
The contested humidifiers for central heating radiators are devices that increase or
decrease humidity (moisture) in the environment and, according to the specification,
are meant to be applied or work together with a central heating radiator. The
contested goods in question are considered similar to the opponent’s apparatus for
heating as they can coincide in producer, distribution channels and relevant public.
Moreover, they are complementary to the opponent’s goods.
The contested desiccating apparatus; driers [apparatus]; drying apparatus and
installations; electric laundry driers refers to appliances and apparatuses used, for
instance, to dry clothing, towels or hands by blowing hot air. These goods have some
point of contact with the opponent’s apparatus for heating insofar as they target the
same customers, are sold in the same shops and can be manufactured by the same
undertakings. Moreover, to a certain extent, they may be in competition. Therefore,
they are considered highly similar.
The contested air deodorizing apparatus; air filtering installations; air-purifying
apparatus and machines; air sterilizers; deodorizing apparatus not for personal use;
ionization apparatus for the treatment of air have some connections with the
opponent’s apparatus for heating. All these electric apparatuses may be for
household purposes. Furthermore, the market reality shows that they are often
manufactured by the same undertakings, target the same consumers and have the
same distribution channels. Therefore, they are considered similar at least to a low
degree.
The remaining contested goods, namely lamp reflectors; lamps for lighting; electric
lamps; electric light bulbs not for use in connection with vehicles; light bulbs; light-
emitting diode [LED] lighting apparatus not for use in connection with vehicles;
lighters; lighting apparatus and installations not for use in connection with vehicles;
electric lights for Christmas trees; flashlights; safety lamps; street lamps; flashlights
for lighting; luminous tubes for lighting; electric pressure cookers; bakers’ ovens;
barbecues; beverage-cooling apparatus; bread baking machines; bread-making
machines; coffee roasters; electric coffee percolators; electric coffee machines;
cookers (cooking stoves); cooking rings; electric cooking utensils; cooking apparatus
and installations; electric deep friers; extractor hoods for kitchens; fruit roasters;
heating showcases; electric heaters for feeding bottles; heating plates; hot plates;
electric kettles; kitchen ranges [ovens]; malt roasters; microwave cooking apparatus;
microwave ovens for industrial use; oven fittings made of fire clay; pasteurizers; plate
warmers; electric pressure cooking saucepans; roasters; grills [cooking appliances];
roasting jacks; roasting spits; rotisseries; electric waffle apparatus; water softening
apparatus and installations; electric appliances for making yogurt; filters for drinking
water; hair driers; hand-drying apparatus for washrooms; hot water bottles; air driers;
cooling installations for liquids; cooling installations for tobacco; ice machines and
apparatus; ice cube machines; milk-cooling equipment; bread toasters; germicidal
lamps for purifying air; ionization apparatus for the treatment of water; ventilation
hoods not for use in connection with vehicles or energy storage systems are devices
used to illuminate, that is to provide light, or to cleanse the air, domestic appliances
Decision on Opposition No B 2 745 670 page: 10 of 13
for cooking and other kitchen appliances and personal appliances for hair drying (hair
driers). The opponent’s goods are apparatus for heating. These goods differ in
nature, purpose or methods of use and they are not complementary nor are they in
competition. Therefore, they are dissimilar.
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.
In the present case, the goods found to be similar to various degrees are directed at
the public at large.
The degree of attention may vary from average to high on account of the specialised
nature of the goods, the frequency of purchase and their price.
c) The signs
TESSLA
Earlier trade mark Contested sign
The relevant territory is Spain.
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 word mark consists of the single verbal element ‘TESSLA’.
The contested mark is figurative and consists of a string of highly stylised graphemes
that will be interpreted and read as the word ‘TESLA’, due to the high resemblance of
each grapheme with the letters TESLA.
The verbal element ‘TESLA’ in the contested mark is a very specialised term that
means ‘unit of magnetic flux density, equal to one weber per square metre’
(information extracted on 22/11/2017, from Real Academia Espanola online
dictionary, https://goo.gl/rVbSSH). Furthermore, this term may be perceived at least
by part of the public as referring to Nikola Tesla, and American (Croatian-born)
electrical engineer and inventor. Although the vast majority of the relevant public is
not expected to perceive the meaning of this word, the possibility cannot be ruled out
that a minor part of the public will understand such term. In any event, even when
understood, this word is distinctive for the goods in question.
Decision on Opposition No B 2 745 670 page: 11 of 13
The earlier mark ‘TESSLA’ may be associated to the meaning of the word ‘TESLA’
given the high resemblance of these two words and the fact that the double
consonant is not pronounced in Spanish. The same considerations as to the
perception of the meaning made above apply, mutatis mutandi, to the word
‘TESSLA’, which is considered distinctive for the relevant goods.
Visually, the signs coincide in the overall structure, given that both consist of one
single element composed of almost the same number of graphemes, six in the earlier
mark and five in the contested mark. Furthermore, notwithstanding the high
stylisation of the letters in the contested mark, they will be recognised as ‘TESLA’,
due to the high proximity between them /TESLA. It follows that, the
signs are visually similar to an average degree.
Aurally, since in Spanish the double consonant in the earlier mark is pronounced as
a single letter ‘S’, the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For the small part of the relevant public who will
recognise the technical meaning of the term ‘TESLA’ used in physics, the signs will
be associated with the same meaning and will be, therefore, conceptually identical.
However, as explained above, the vast majority of the public is not expected to
associate the signs with any specific meaning. Since a conceptual comparison is not
possible, the conceptual aspect does not influence the assessment of the similarity of
the signs.
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.
e) Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
Decision on Opposition No B 2 745 670 page: 12 of 13
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the marks have been found visually similar to an average degree
and aurally and conceptually (where pertinent) identical. The conflicting goods are
partially similar to various degrees and partially dissimilar and are intended for the
general public who will use an average to high degree of attention at the moment of
purchase.
Despite the specific and highly stylised typeface of the contested mark, the word
‘TESLA’ will be recognised by consumers. Therefore, the differences between the
marks are limited to said high stylisation of the typeface in the contested mark and in
the fact that the earlier mark include an additional letter ‘S’.
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).
Moreover, 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 light of all considerations made above, it is concluded that the differences
found between the signs are not enough to counteract the similarities between them,
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the relevant Spanish public and therefore the opposition is
partly well founded on the basis of the opponent’s Spanish trade mark registration.
In its observations, the holder argues that the earlier trade mark has a low distinctive
character given that many trade marks include the element ‘TESLA’. In support of its
argument the holder refers to several trade mark registrations contained in the
EUIPO and WIPO databases as well as various national trademarks.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include the element ‘TESLA’. Under
these circumstances, the holder’s claims must be set aside.
It follows from the above that the contested trade mark must be rejected for the
goods found to be similar (to various degrees) 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.
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
Decision on Opposition No B 2 745 670 page: 13 of 13
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
Plamen IVANOV Claudia ATTINA Keeva DOHERTY
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.