OPPOSITION No B 2 764 176

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V., Hansastr. 27c, 80686 München, Germany (opponent), represented by Pfenning, Meinig & Partner MbB, Joachimsthaler Str. 10 – 12, 10719 Berlin, Germany (professional representative)

a g a i n s t

Locati Impianti, via Vittorio Veneto 37, 24040 Verdellino, Italy (applicant), represented by Tullio Blanchinetto Lodetti, Via Cavour 9, 24049 Verdello, Italy (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 176 is upheld for all the contested services.

2.        European Union trade mark application No 15 473 184 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 473 184. The opposition is based on German trade mark registration No 302 013 017 118. 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 and services

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

Class 7:        Machines for transporting goods; belts for conveyors; mechanical conveyors; machines for vehicle construction; transportation machines for the storage of goods and the consignment and installations for the consignment, the sorting, the storing and the conveying of goods; robots; control devices for machines; machine parts.

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images, electrical and electronic equipment, electronic notice boards, data processing equipment and computers; peripherals adapted for use with computers; programs for computers; electronic publications (downloadable); microprocessors; parts for all the aforesaid goods.

Class 12:        Vehicles and apparatus for locomotion by land, air or water; driverless cars [autonomous cars]; motors for land vehicles; parts of vehicles and engines; transmissions for land vehicles.

Class 39:         Transport; packaging and storage of goods; logistical services.

Class 42:        Scientific and technological services and research and design related thereto; scientific and industrial research, scientific testing services; scientific and technical consultancy; engineering and providing of scientific expertise; technical and scientific project planning; technical measuring; development of measuring and testing methods; construction drafting; research in the field of technology; research in the field of machine engineering; Engineering services, computer programming services, design and development of computer hardware and software; maintenance and installation of software; design of home pages and web pages; research in databases and on the Internet, for scientific and research purposes.

The contested services are the following:

Class 40:        Custom assembling of materials for others; assembly of products for others; custom construction of machines.

Class 42:        Testing of machinery; design of specialist machinery; design of industrial machinery.

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.

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 services in Class 40

The contested custom assembling of materials for others; assembly of products for others; custom construction of machines and the opponent’s
technological, design and engineering services in Class 42 are complementary and can have a common purpose: these services
can all contribute to the conception of a product or machine and are part of the industrial process. They can be provided by the same undertaking and they may target the same purchasing public. Thus, they are considered to be similar.

Contested services in Class 42

The contested testing of machinery in Class 42 are included in, or overlap with, the opponent’s broader categories of scientific testing services; development of measuring and testing methods in Class 42. Therefore, they are identical.

The contested design of specialist machinery; design of industrial machinery in Class 42 are included in the opponent’s broader category of and research and design related to scientific and technological services in Class 42. Therefore, they are identical.

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 services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the services, the frequency of purchase and their price, the sophistication, or terms and conditions of the purchased services.

3. The signs

Locative
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a word mark, consisting of the string of letters ‘Locative’, which is meaningless for the relevant public. Consequently, it is distinctive. It must be noted that it is irrelevant that a word mark is depicted using a mixture of lower and upper case letters. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Consequently, the protection offered by the registration of a word mark applies to the word(s) stated in the application for registration, i.e. in the present case ‘LOCATIVE’, not to the individual graphic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

The contested sign is a figurative mark consisting of the string of letters ‘LOCATI’ in azure blue colour, above the string of letters ‘IMPIANTI’ (depicted in a minor size, in very light blue colour), which are both meaningless for the relevant public, and thus normally distinctive.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, as regards the first verbal element, its initial letter ‘L’ is of a bigger size and stylised (being partially curled in the end, as shown above),  forming a line under the subsequent string of letters ‘OCATI’. The element ‘LOCATI’ is clearly more dominant (visually eye-catching) than the other elements in the contested sign, due to the smaller size and lighter colour of the second verbal element, while the figurative element will be perceived as being of a purely decorative nature.

Visually, the signs coincide in the distinctive string of letters ‘LOCATI’, which also form the beginning of the earlier mark and the first verbal element of the contested sign; in addition, it is the element of the contested sign that visually will have the most impact on the relevant consumers. The signs differ in the last two letters of the earlier mark (‘-VE’) and the second verbal element as well as the figurative aspects of the contested sign.

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

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first six letters ‘LOCATI, present  in both signs. The pronunciation differs in the sound of the letters ‛VE’ of the earlier mark and in the pronunciation, of the second verbal element ‘IMPIANTI’ in the contested sign, if pronounced at all (being – as detailed above – less visually eye-catching).

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

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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 (eighth recital of the CTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested services were found identical and similar to those of the earlier mark. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks are visually and phonetically similar, without this impression being altered by any clear conceptual difference.

Bearing in mind all these interrelated factors, it must be concluded that the difference resulting from the additional elements, is not sufficient to counteract the similarity deriving from the common string of letters ‘LOCATI’, which is distinctive and forms the beginning of both signs, also bearing in mind and the fact that the relevant consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them he/she has kept in mind. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 013 017 118. It follows that the contested trade mark must be rejected for all the contested services.

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

María Clara IBÁNEZ FIORILLO

Edith Elisabeth VAN DEN EEDE

Francesca CANGERI SERRANO

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.