OPPOSITION No B 2 732 397

A.T.S. Electro-Lube International Inc., 7388 Wilson Avenue, Delta, British Columbia V4G 1H3, Canada (opponent), represented by LDS Łazewski Depo & Partners, ul. Okopowa 58/72, 01-042 Warsaw, Poland (professional representative)

a g a i n s t

Irena Wszelaczyńska and Grzegorz Wszelaczyński, Emilii Plater 25/27, 59220 Legnica, Poland (applicants), represented by Biuro Usług Patentowych Regina Kozłowska, Ul. Pomorska 4/16, 51-218 Wrocław, Poland (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 397 is partially upheld, namely for the following contested goods and services:

Class 9: Automatic installations for controlling lubrication; Electric apparatus for controlling lubrication; Electronic controllers for lubrication installations; Apparatus for controlling hydraulic installations.

Class 42: Design and technical consultancy relating to application of lubricating agents, selection of lubricating apparatus and lubrication methods; Technical expertise relating to lubrication technology.

2.        European Union trade mark application No 15 097 975 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 097 975 for the word mark ‘elektroluber’.

The opposition is based on, inter alia, European Union trade mark registration No 10 201 771 for the word mark ‘A.T.S. ELECTRO-LUBE’. The opponent invoked Article 8(1)(b) EUTMR regarding this earlier right.

The opposition is also based on the company name and trade name ‘A.T.S. Electro-Lube International Inc.’. The opponent invoked Article 8(4) EUTMR regarding these earlier rights.

PRELIMINARY REMARK

Earlier European Union trade mark is registered in the name of Stephania Holdings Inc. whereas the opposition was filed in the name of A.T.S. Electro-Lube International Inc.

The opponent claims and files evidence of the license agreement between both companies dated 04/05/2016 (filed as Exhibit X of Enclosure no. 1), in which the owner of the earlier European Union trade mark registration, i.e. Stephania Holdings Inc., authorises the licensee, that is, A.T.S. Electro-Lube International Inc, to file opposition for the enforcement of the licensed trade mark. Therefore, the opponent has duly proved its entitlement to file the opposition as an authorized licensee.

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 10 201 771.

1. The goods and services

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

Class 7: Lubricant dispenser for machinery.

After a limitation requested by the applicants on 29/09/2016, the contested goods and services are the following:

Class 9: Automatic installations for controlling lubrication; Electric apparatus for controlling lubrication; Electronic controllers for lubrication installations; Apparatus for controlling hydraulic installations.

Class 42: Technical project studies; Design and technical consultancy relating to application of lubricating agents, selection of lubricating apparatus and lubrication methods; Technical expertise relating to lubrication technology.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

Lubrication is the process or technique employed to reduce friction between, and wear of one or both, surfaces in proximity and moving relative to each other, by interposing a substance called a lubricant in between them. The contested automatic installations for controlling lubrication; electric apparatus for controlling lubrication; electronic controllers for lubrication installations; apparatus for controlling hydraulic installations are all controlling apparatus and installations which are complementary to the opponent’s lubricant dispenser for machinery in Class 7. These goods also have the same intended purpose, and may coincide in producers, distribution channels and relevant public. The goods are, therefore, similar.

Contested services in Class 42

The contested design and technical consultancy relating to application of lubricating agents, selection of lubricating apparatus and lubrication methods; technical expertise relating to lubrication technology are services rendered in the field of lubrication apparatus and are closely linked to the opponent’s lubricant dispenser for machinery in Class 7. This is because manufacturers of lubricant dispenser for machinery will also commonly provide related services in the same field such as those of the applicants. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services may coincide. Furthermore, these goods and services are complementary and may be offered via the same distribution channels. Therefore, they are considered similar.

The remaining contested services, that is, technical project studies, aim to study projects of a technical nature to objectively ensure their smooth and correct implementation and/or to identify and resolve problems as soon as possible. They are usually part of and precede the implementation of a technical project. These services are dissimilar to the opponent’s goods in Class 7 because the contested services are of a specialised nature and are concerned with research, and the dissemination and application of scientific and technical knowledge. They are likely to be provided by professionals individually or collectively, namely members of professions such as chemists, physicists or engineers, in relation to the theoretical and practical aspects of complex fields of activities. These services typically involve evaluations, estimates, research and reports in scientific and technological fields. Therefore, the services under comparison and the opponent’s goods have different natures, purposes and methods of use and they are not in competition. Even if the opponent’s goods in Class 7 could be the subject of the contested services, the link is too remote to give rise to similarity as this fact does not render them complementary. The goods and services would not be provided by the same producer/provider through the same distribution channels and would not be directed to the same end user. The opponent claims that these services may be conducted by the research and development divisions of the entities which also offer lubrication systems. However, the Opposition Division considers that this is not the case as usually the company who manufactures the opponent’s goods is the end consumer of the contested services. In other words, it is unlikely that an undertaking involved in the manufacturing of lubrication apparatus would provide technical project studies to third parties under the same trade mark. Under these circumstances, the opponent’s argument must be set aside.

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 and services found to be similar are specialised goods and services directed at business customers with specific professional knowledge or expertise in the field of industry and/or machinery.

The degree of attention will be higher than average because of the specialised nature of the goods and services and their importance in the correct functioning of installations and machinery.

3. The signs

A.T.S. ELECTRO-LUBE	elektroluber
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 elements ‘LUBE/luber’ are not meaningful in certain territories, for example, in those countries where English is not understood, at least for part of the relevant professional public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as German- and French-speaking parts of the public.

The element ‘A.T.S.’ of the earlier mark has no meaning for the relevant public and even though the English word ‘LUBE’ is an informal form for ‘lubricant’, for at least a part of the relevant professional public with no or limited command of English this element is meaningless. Therefore, these elements are distinctive for the relevant goods and this part of the public.

The element ‘ELECTRO’ of the earlier mark will be perceived as a short form of ‘electronic’ or ‘electric’ by the relevant public due to the close similarity to the corresponding German (‘Elektronisch’ and ‘Elektro-‘) and French (‘électronique’ and ‘électrique’) words. Bearing in mind that the relevant goods are dispensers which may be powered by electricity and/or use electric current in their operation, this element is weak for these goods.

The word ‘elektroluber’ of the contested sign, when taken as a whole, is meaningless for the public in the relevant territory and, is, therefore, distinctive in relation to the relevant goods and services.

However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In this regard, the element ‘elektro’ of the contested sign will be associated with the above-mentioned meaning of ‘electronic’ or ‘electric’. Bearing in mind that the relevant goods in Class 9 are apparatus and machines that may be powered by the electricity and/or use electric current in their operation, this element is weak for all these goods. The element has a normal distinctiveness in relation to the relevant services in Class 42.

The element ‘luber’ of the contested sign has no meaning for the relevant public, as stated above, and is, therefore, distinctive for the relevant goods and services.

Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

Contrary to the opponent’s opinion, being composed of verbal elements only, neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘ele*tro’ of the elements ‘electro’ and ‘elektro’ of both signs, which are weak for all the relevant goods, and also in the letters ‘lube*’, which form an independent distinctive element in the earlier mark and the majority of the distinctive element ‘luber’ of the contested sign for at least part of the public. However, they differ in the distinctive acronym ‘A.T.S.’ of the earlier mark, as well as in the letters ‘c’ and ‘k’ present in the middle of the words ‘electro’ and ‘elektro’, the hyphen of the earlier mark and the last letter ‘r’ of the contested sign.

Therefore, given that the contested sign is included in the earlier mark almost in its entirety and also considering the distinctiveness of the elements of the signs as explained above, the signs are visually similar at least to an average degree.

Aurally, taking into account the identical pronunciation of the letters ‘c’ in the earlier mark and ‘k’ in the contested sign (present in the words ‘electro’ and ‘elektro’), the pronunciation of the signs coincides in the syllables ‘/e-lek-tro/’ of the respective weak elements and in the sound of the letters ‛/l-u-b-e-*/’, present identically in both signs. The hyphen present in the earlier mark will not create any difference in the pronunciation between the signs. The pronunciation differs in the sound of the additional final letter ‘r’ of the contested sign and in the sound of the letters ‘A.T.S.’ of the earlier sign.

Therefore, given that the contested sign is included in the earlier mark almost in its entirety and also considering the distinctiveness of the elements of the signs as explained above, the signs are aurally similar at least to an average degree.

Conceptually, although the contested sign as a whole does not have any meaning for the public in the relevant territory, the element ‘elektro’, included in it, will be associated with the meaning explained above, a concept that is also present in the earlier mark. As these elements are weak for all the relevant goods this overlap has a low impact. To that extent, the signs are conceptually similar at least to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods and services are partly similar and partly dissimilar to the goods on which the opposition is based. Those found to be similar target business customers with a higher than average degree of attention.

It has also been concluded that the signs are visually and aurally similar at least to an average degree, and conceptually similar to a low degree, as explained in detail above. The earlier mark as a whole has an average degree of distinctiveness despite the fact it contains a weak element in relation to the relevant goods.

In this regard, even though one of the coinciding elements may be perceived as weak (‘electro’ and ‘elektro’) in relation to all the goods in question, it must be borne in mind that the fact that a coinciding element has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the earlier mark or of the elements of which it is composed must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or an element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In addition, account should be 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). Even consumers with 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).

Furthermore, it should also be borne in mind 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 and 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 goods and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards similar goods and services. Therefore, on account of the principle of imperfect recollection, the relevant public, despite paying a higher than average degree of attention, may believe that the goods and services come from the same undertaking or, at least, economically-linked undertakings.

In their observations, the applicants argue that they own two Polish trade mark registrations with the words ‘ELECTRO-LUBE’ which have been used for many years and predate the opponent’s trade marks on which the opposition is based. In support of this argument, the applicant submitted trade mark extracts for these trade mark registrations. As regards this argument, the Opposition Division notes that the deliberations on likelihood of confusion are restricted to the comparison of the conflicting signs and the goods/services as registered and applied for. Brand portfolios or specific marketing strategies of the parties are immaterial for the examination of likelihood of confusion. Therefore, the applicants’ argument must be set aside.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicants must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German and French-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 201 771. 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 and services found to be similar to the goods of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

The opponent has also based its opposition on the European Union trade mark application No 14 481 402 for the word mark ‘ELECTRO-LUBER’. Since this mark covers a similar scope of goods in Class 7, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

In the notice of opposition, within the opposition period, the opponent claims to be the owner of a company name and a trade name for the sign ‘A.T.S. Electro-Lube International Inc.’ in Belgium, the Netherlands, Germany, Czech Republic, Portugal, United Kingdom, Finland, Italy, Greece, Bulgaria, Sweden, Spain, France, Ireland and Slovakia, and the first one also in the European Union as a whole, in connection with lubricant dispenser for machinery, lubricant solutions, lubricant systems.

As regards the company name in the European Union, the Opposition Division notes that the company names are not protected under EU legislation but only under national legislation of the Member States. Hence, it follows that a European Union company name cannot be invoked as a basis for an opposition under Article 8(4) EUTMR. It follows from the above that the opposition should be considered as not well founded under Article 8(4) EUTMR as far as it is based on this earlier right.

The opponent also claims to be the owner of a company name and a trade name in a number of the Member States of the European Union, namely in Belgium, the Netherlands, Germany, Czech Republic, Portugal, United Kingdom, Finland, Italy, Greece, Bulgaria, Sweden, Spain, France, Ireland and Slovakia but the opposition must still fail under Article 8(4) EUTMR as further explained below.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the second requirement.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade signs invoked by the opponent, namely a company name and trade name in Belgium, the Netherlands, Germany, Czech Republic, Portugal, United Kingdom, Finland, Italy, Greece, Bulgaria, Sweden, Spain, France, Ireland and Slovakia. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

On the contrary, during the substantiation period the opponent referred to a company name and a trade name in Poland and submitted some evidence in this regard. However, this right was only claimed on 21/12/2016, that is after the opposition period had expired (12/07/2016) and, therefore, this right must be considered inadmissible for the purpose of the opposition under Article 8(4) EUTMR.

On the other hand, the opposition based on the company name and the trade name in Belgium, the Netherlands, Germany, Czech Republic, Portugal, United Kingdom, Finland, Italy, Greece, Bulgaria, Sweden, Spain, France, Ireland and Slovakia are not well founded under Article 8(4) EUTMR for the reasons stated above.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

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.