OPPOSITION No B 2 447 335

A & T Europe S.p.A., Via Solferino, 27, 46043 Castiglione D/S (MN), Italy (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milan, Italy (professional representative)

a g a i n s t

iBlue AG, Baarerstraße 20, 6300 Zug, Switzerland (applicant), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 447 335 is upheld for all the contested goods, namely 

Class 6:         Transportable buildings of metal.

Class 9:         Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Class 11: Apparatus for lighting, heating, water supply and sanitary purposes, in particular light-emitting diodes (LED) lighting apparatus.

2.        European Union trade mark application No 12 962 577 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 962 577 for the figurative mark, namely against all the goods in Classes 6, 9 and 11. The opposition is based on European Union trade mark registration No 9 161 531,. 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.

1. The goods

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

Class 6:         Swimming pools of metal, transportable swimming pools of metal, parts and fittings therefor.

Class 9:         Electric and electronic apparatus for managing and controlling swimming pools.

Class 11:         Filters and purifiers for swimming pools, lighting systems for swimming pools, heating devices for swimming pools, chlorination devices for swimming pools.

The contested goods are the following:

Class 6:         Transportable buildings of metal.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Class 11:         Apparatus for lighting, heating, water supply and sanitary purposes, in particular light-emitting diodes (LED) lighting apparatus.

As a preliminary remark, the Opposition Division notes that the wording of the contested goods in Class 11 includes also ‘in particular light-emitting diodes (LED) lighting apparatus’ which have not been indicated by the opponent in its notice of opposition. To this extent, it should be highlighted that the term ‘in particular’, used in the applicant list of goods in this Class, 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). Thus, it is reasonable to assume that the opposition at hand is directed against all the goods indicated in Class 11 as the (in particular) light-emitting diodes (LED) constitute simply an example of the applicant’s apparatus for lighting and as such do not affect the scope of the applicant’s protection in this Class.

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 goods in Class 6

The contested transportable buildings of metal include, as a broader category the opponent’s swimming pools of metal in Class 6. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 9

The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity include as a broader category the opponent’s electric apparatus for managing and controlling swimming pools. The latter goods are electric devices used for controlling swimming pools, inter alia, from a distance using, among others, electric devices. These electric apparatus cover apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity which form the contested goods (see judgment of 01/02/2012, T-353/09, ‘mtronix’, EU:T:2012:40, § 33). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 11

The contested apparatus for lighting, in particular light-emitting diodes (LED) lighting apparatus include as a broader category the opponent’s lighting systems for swimming pools in Class 11. 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 apparatus for heating purposes include as a broader category the opponent’s heating devices for swimming pools in Class 11. 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 apparatus for water supply and sanitary purposes include, as a broader category the opponent’s filters and purifiers for swimming pools, chlorination devices for swimming pools in Class 11. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be rather high due to relatively high price and specialised nature of the goods at stake.

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 Court has held 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 they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Even though, the marks as a whole have no meaning, the Opposition Division considers it reasonable to assume that a significant part of the relevant public will dissect the letter ‘i’ and the term ‘Blue’ in both marks, not only due to their respective meaning, as referred to below, but also because of the upper case letter that is following the first common letter ‘i’ and the dot which stands between the common elements insofar as the earlier mark is concerned. Having said that, it should be pointed out that most likely this part of the relevant public will perceive the first letter ‘i’ as a very commonly used one in the electronic or the internet context as being an abbreviation for intelligent, internet or interactive (see, among others, decisions of 28/05/2014, R 84/2014-1, iRobot (fig), § 31, of 19/09/2013, R 2303/2012-1, IHAUS, § 23, of 18/07/2003, R 682/2002-2, ‘I-CARD’, § 16, of 22/10/2008, R 902/2008-2, ‘ITEST’, §18 and 19, of 14/02/2008, R 660/2007-1, ‘Iplayer’, § 14, of 19/04/2004, R 758/2002-2, ‘ITUNES’, § 11, of 09/07/2003, R 438/2002-4 ‘IPUBLISH’, § 12). As mentioned, the letter ‘i’ corresponds, inter alia, to an abbreviation for the word ‘intelligent’ or ‘interactive’, and such meanings should be taken into account insofar they might be related to some of the goods at stake, namely those in Classes 9 and 11. The word ‘intelligent’ according to the Oxford English Dictionary Online means ‘(of a device) able to vary its state or action in response to varying situations and past experience’, whereas the word ‘interactive’ means ‘pertaining to or being a computer or other electronic device that allows a two-way flow of information between it and a user, responding immediately to the latter's input’. Thus, the addition of the letter ‘i’ in front of the element ‘Blue’ describes a characteristic of the goods to some consumers of any type of any apparatus involving electricity. Therefore, the letter ‘i’ is a rather weak element for the relevant goods in Classes 9 and 11, as it might refer to the nature of those goods. Consequently, for this part of the relevant public the most distinctive part of the marks is the term ‘Blue’. For the rest of the relevant public who will not associate the letter ‘i’ with any concept, the marks have no elements which could be perceived as more distinctive. The same holds true insofar as the goods in Class 6 are concerned. The distinctiveness of this common element in relation to the latter goods should be seen as normal.

Regarding the common element ‘Blue’, the Opposition Division points out that it is the English term for the colour blue and is part of the basic English vocabulary (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30). Thus, the Opposition Division notes that even though a part of the public may somehow associate colour blue with colour of the water, this association is not that straightforward, therefore its distinctiveness is normal in relation to the goods at stake.

The sequence of words ‘Intelligent pool’ of the earlier mark will be understood by the English-speaking part of the relevant public as a reference to a pool which is able to modify action in the light of ongoing events, most likely thanks to its additional devices (e.g. those listed in Classes 9 and 11). Thus, for this part of the public, this sequence most likely will be considered descriptive at least in relation to part of the goods at stake. Another part of the public might only perceive the word ‘intelligent’ as such due to existence of same word in similar spelling in some languages (e.g. inteligente in Spanish) resulting in a possible degree of allusiveness and lesser distinctiveness at least for some goods concerned. For the remaining part of the public, these words will have no meaning and are, therefore, distinctive to an average degree. Notwithstanding the foregoing, the sequence of words ‘Intelligent pool’ is secondary due to its much smaller size and the lower position in the earlier mark. Thus, insofar as the earlier mark is concerned, the element ‘i.Blue’ is the dominant element as it is the most eye-catching.

Regarding the figurative element of the contested sign, it should be pointed out that in principle, figurative elements of signs have a lesser impact in their overall impressions than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components. Nevertheless, in the present case, the figurative element occupies roughly half of the contested mark’s space and has a conspicuous position in the sign. Moreover, this figurative element is fanciful. In that regard, it is recalled that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). The Opposition Division finds that the figurative element made up of two blue oval elements placed in the upper and bottom part of the contested sign, albeit lacking any clear meaning, for the reasoning set forth above, has the same weight as that of the sign’s verbal elements. Thus, it is considered that the contested sign does not have any elements that could be clearly considered more visually eye-catching than others.

Visually, the signs coincide in the common letter ‘i’ and word ‘Blue’ which constitute both the dominant, and for part of the public also the only distinctive, element of the earlier mark, and both are the only verbal and co-dominant elements of the contested sign. The marks differ in the additional dot placed between the letter ‘i’ and the word ‘Blue’ in the earlier mark, and in the figurative elements of the marks, namely some black irregular small dots above the common first letter ‘i’ in the earlier mark vs two blue oval figurative elements of the contested sign. Moreover, the marks differ in the additional sequence of words ‘Intelligent pool’ of the earlier mark, nonetheless, for the reasons set forth above, its impact in the comparison is limited due to its secondary position and less distinctive character (for at least a part of the public) in the earlier mark.

Regarding the typeface in which the verbal elements of the marks under comparison are written, their stylisation is fairly standard and will not lead the consumer’s attention away from the elements it seems to embellish, even though, both the first letter ‘i’ and the last letter ‘e’ of the earlier mark are more fanciful, they can still be seen immediately as being the corresponding letters.

Therefore, the signs are visually similar to an 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 ‛i-B-l-u-e’, present identically in both signs. The dot between the letter ‘i’ and the word ‘Blue’ in the earlier mark will not be pronounced and its presence (in earlier mark) or lack of it (in contested sign) makes no aural impact. The pronunciation differs in the sound of the additional sequence of words ‘Intelligent pool’, only if the latter is pronounced (which is quite unlikely for the reasons set forth above).

Therefore, the signs are highly similar or even identical, if the latter verbal elements of the earlier mark are not pronounced.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a combination of the letter ‘i’ and the word ‘Blue’ with the corresponding concepts, the signs are conceptually at least highly similar. This finding is not altered by the fact that in relation to some of the goods in Classes 9 and 11, the letter ‘i’ might be perceived as rather weak.

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 in relation to some of the goods as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As it has been concluded, the goods at stake are identical and the level of attention is rather high. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to an average degree, aurally similar to a high degree or identical, whereas conceptually the signs are at least highly similar.

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). Having said that, it is stressed that 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).

To sum up, and taking into account the normal degree of distinctiveness of the earlier mark, the differences between the signs are not that striking and are not capable of counteracting the strong similarities between them arising from the common elements ‘i’ and ‘Blue’, with the result that the relevant public may believe that the identical goods come from the same undertaking or economically-linked undertakings.

In addition, it should be stressed that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs at stake distinguish different lines of goods provided by the same undertaking or from connected entities.

In light of the foregoing, the Opposition Division finds that there is a likelihood of confusion on the part of the public, this even taking into account the higher degree of attention. Therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 9 161 531. It follows that the contested trade mark must be rejected for all the contested 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.

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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Chantal VAN RIEL

Klaudia MISZTAL

Vita VORONECKAITE

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.