OPPOSITION No B 2 767 419

Medcom Advance S.A., Viladecans Business Park-Edificio Brasil, C/ Catalunya, 83-85, 08840, Viladecans (Barcelona), Spain (opponent), represented by ABG Patentes, S.L., Avenida de Burgos, 16D, 4ª planta, Edificio Euromor, 28036, Madrid, Spain (professional representative)

a g a i n s t

British American Tobacco (Brands) Limited, Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom (applicant), represented by Batmark Limited, Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 419 is upheld for all the contested goods, namely:

Class 9:        Batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; chargers; USB chargers for electronic devices that are used for heating tobacco; car chargers for devices that are used for heating tobacco.

2.        European Union trade mark application No 14 818 389 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 818 389, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 13 152 641. 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 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

The contested goods are the following:

Class 9:        Batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; chargers; USB chargers for electronic devices that are used for heating tobacco; car chargers for devices that are used for heating tobacco.

The contested batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; chargers; USB chargers for electronic devices that are used for heating tobacco; car chargers for devices that are used for heating tobacco are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. 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 goods found to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

NANOMODS	NANOPODS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. 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 the French-, Italian-, Portuguese- and Spanish-speaking parts of the public.

Both signs are word marks. The earlier mark is composed of the word ‘NANOMODS’ and the contested sign is composed of the word ‘NANOPODS’.

The Court has held that, although average consumers normally perceive a mark as a whole and do 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 known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Given this, the prefix ‘NANO’ will be recognised in both signs because it is at the beginning of the signs and only this part of each word has a clear meaning. This prefix is widely used to form nouns and adjectives that refer to something that is very small.

A significant part of the relevant public will associate the word ‘nano’ with extreme smallness, usually in combined forms (e.g. nanotechnology, nanosecond, nanoparticles), or perceive it as referring to nanotechnology (10/02/2015, T-379/13, NANO, EU:T:2015:84). For the remaining part of the public, ‘nano’ has no meaning. Bearing in mind that the relevant goods in Class 9 are mainly batteries and chargers for electronic devices, the term ‘nano’ may be perceived as referring to the size of such products, which could be very small, or as referring to the characteristics of the technology used in these goods (i.e. nanotechnology). The part of the relevant public that understands the meaning of ‘NANO’ will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

Consequently, it is considered that the verbal element ‘nano’ has a weak distinctive character with respect to the contested goods for part of the public and is distinctive for the part of the public that perceives it as meaningless.

The elements ‘MODS’ and ‘PODS’, present in the earlier mark and contested sign, respectively, have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the letters ‘NANO*ODS’. However, they differ in their fifth letters (‘M’ versus ‘P’). The length, structure and number of syllables of the signs are the same and they coincide in seven out of eight letters, which appear in the same order.

Therefore, taking into consideration both scenarios explained above, the signs are visually and aurally similar to an average degree for the part of the public for which ‘nano’ is weak and its impact is limited, and visually and aurally highly similar for the part of the public for which this element is distinctive.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For part of the public, although the coinciding word ‘nano’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is weak and cannot indicate the commercial origin of the goods in question. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. However, for the part of the public for which ‘nano’ is meaningless, neither of the signs has a 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.

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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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:T:2008:454, § 22 et seq.).

The contested goods are identical to the opponent’s goods. They target the public at large and the degree of attention is average. The distinctiveness of the earlier mark is normal.

As stated above in section c) of this decision, account should be taken of the different scenarios that will result depending on the way in which the element ‘nano’ is perceived.

Firstly, for the part of the public for which ‘nano’ is meaningful and therefore weak in relation to the relevant goods, the signs are visually and aurally similar to an average degree. Although the coinciding element ‘nano’ has a limited impact on the comparison of the signs, the signs coincide in seven out of eight letters and have the same structure. The differing letters in the middle of the words, ‘NANO*ODS’, are also not sufficient to counteract the significant similarity between the signs. It should be borne in mind 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).

Secondly, for the part of the public for which ‘nano’ is not associated with any meaning and therefore distinctive, the signs are visually and aurally similar to a high degree. In this scenario, all the coinciding elements are distinctive and, a fortiori, the overall impressions created by the signs are almost identical, since they differ only in their fifth letters (‘M’ versus ‘P’).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 152 641. 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

Andrea VALISA

Birgit FILTENBORG

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.