OPPOSITION No B 2 717 554

Ritter Energie- und Umwelttechnik GmbH & Co. KG, Kuchenäcker 2, 72135 Dettenhausen, Germany (opponent), represented by Menold Bezler Rechtsanwälte Partnerschaft MBB, Rheinstahlstr. 3, 70469 Stuttgart, Germany (professional representative)

a g a i n s t

Ekobenz Sp. z o. o., ul. Zimna 11, 20-204 Lublin, Poland (applicant), represented by Kancelaria Prawno-Patentowa Anna Bełz, ul. Północna 6/24, 20-064 Lublin, Poland (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 554 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 559 918, namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 12 668 513. 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 6: Metal building materials; containers of metal, in particular heat-insulated hot water containers, in particular double-wall containers with an evacuated space between the walls and containers for holding heat media; pipework of metal; valves of metal (other than parts of machine); fastening and installation materials of metal for the aforesaid goods and the following goods (including as kits); silos of metal, in particular for storing biomass, in particular wooden pellets.

Class 7:        Pumps for heating installations; motors and engines (except for land vehicles), in particular stirling engines; motor-driven tracking devices for solar energy generation installations, included in class 7.

Class 9:        Equipment for generating solar power, in particular solar cells and photovoltaic modules or installations consisting thereof, included in class 9; apparatus and installations for the conversion and storage of sunlight by means of physical, biological or chemical processes for the purpose of power generation, included in class 9; fuel cells.

Class 11:        Apparatus for heating, in particular such apparatus that utilises solar technology and/or heat pumps; solar energy collectors (heating, cooling, hot-water generation), in particular flat-construction collectors, evacuated-tube collectors, storage collectors, and installations made from the aforesaid goods – being also in the form of swimming pool absorbers and thermal syphon systems; apparatus for steam generating, cooking, drying and ventilating; apparatus and installations for the conversion and storage of sunlight by means of physical, biological or chemical processes for heating purposes and/or heating of water and parts therefor, included in class 11, in particular solar absorbers, heat exchangers, not parts of machines; cpc (compound parabolic concentrators) reflectors; air-conditioning and ventilation installations and apparatus; heat regenerators.

Class 19:        Building materials (non-metallic), in particular solar glass; silos, not of metal, in particular for storing biomass, in particular wood pellets; solar roofs, not of metal, for heat generation.

Class 20:        Containers, not of metal and not of masonry, in particular heat-insulated hot water tanks.

Class 42: Technical development and consultancy in the field of the aforesaid goods.

The contested goods are the following:

Class 11:        Fuel production reactors, chemical reaction reactors, apparatus for generating thermal energy.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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).

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.

Some of the contested goods in Class 11 are similar to goods on which the opposition is based (for instance the contested apparatus for generating thermal energy  can be considered similar to a high degree to the opponent’s heat regenerators in Class 11). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were similar to those of the earlier mark.

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 relevant goods in Class 11 assumed to be similar are mostly directed at the professional public. The goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise in the energy sector.

The degree of business consumer’s attention concerning goods in question (various types of reactors fuel/chemical/thermal, and solar energy apparatus and installations) will vary from an above average to high due to the sophistication, highly specialised nature of these goods, or terms and conditions of the purchased goods, as well as, their price.

It is also worth mentioning that the impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41).

3. The signs

ecoquenz	Ekobenz
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 conflicting signs have initial components ‘eco’/’eko’, which are pronounced almost in the same way in English, and therefore convey the same meaning when perceived aurally. As regards, some Slavic languages (eg. Polish, Czech) either in mother tongue (‘eko’), either in English (‘eco’), both would be associated with the same meaning. Therefore, consumers within the whole European Union would associate each element in the signs with a prefix- used nowadays on the market particularly often in all the sectors as referring to something ‘economical’ or ‘ecological’, or both. Taking into consideration generally their weak distinguishing power, and the nature of the relevant goods in Class 11 which are intended to be related to, or produce ‘eco-friendly’ and/or economical energy, both elements must be seen as weak elements for all these goods.

The second part of the earlier mark, as well as the contested sign (‘-quenz’ and ‘-benz’ respectively), in the perception of English-speaking public, could be considered clearly more distinctive than other ‘eco’/’eko’ elements as they are meaningless. Further, they are of normal distinctiveness in relation to the goods covered by the signs. The same remark is valid in relation to e.g. some consumers of Slavic origin languages. For this part of consumers these elements, insofar as the earlier mark is considered, are perceived in the same way as described above. As regards the contested sign, it has no elements that could be considered clearly more distinctive than other elements. This is because the ‘-benz’ element of the contested sign due to the association which can be made by some consumers of this part of the public in relation to petrol (e. g. in Polish it can be referred to ‘benzyna’, and in Czech to ‘benzin’ which means petrol). Due to the connotations, as mentioned above the element ‘- benz’ of the contested mark can be considered by some part of the consumers of Slavic origin languages as allusive or weak in relation to the contested goods (and non-distinctive in relation to some of the contested goods: ‘fuel production reactors’).

In principle 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. However, in the circumstances of the present case, a greater importance of the beginning of the sign can be balanced by the weak distinguishing power of the descriptive prefixes-, ‘eco’/’eko’ in each of the signs and therefore the consumers’ attention can be equally attracted by the second parts of the signs.  

Visually, the signs coincide in the letters ‘E(*)O- ‘in their initial parts, and ‘–ENZ’ in their final parts, however, they differ in their second letters ‘C’/’K’ and middle letters ‘-QU-’ and ‘-B-’.

Therefore, the signs are deemed to be visually similar to a low degree due to the different position of the coinciding letters caused by different lengths of the signs, and presence of additional differing letters.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs in English coincides in the sound of the letters  ‘ECO-’/’EKO-’ and in the sound of the final letters ‘–ENZ’. However they differ with the sound of the middle letters, ‘-QU-’ and ‘-B-’. As regards the pronunciation in some Slavic languages, e.g. Polish, they will coincide in the sound of the letters ‘E(*)O-‘ except for the differing sound of the letters ‘C’/’K’ and middle letters ‘-QU-’ and ‘-B-’, and their endings will be identically pronounced as ‘-ENZ’.

Therefore, the signs are overall considered to be aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to something ‘ecological’ and/or ‘economical’ in perception of the substantial part of the European Union, the signs are conceptually identical to this extent. However as regards some part of e.g. Polish or Czech publics, the contested sign can also be associated with a concept of fuel, which is considered to be weak/non-distinctive in relation to the goods. For this part of the public, due to meaningful content the contested sign, it would have a distinct meaning and the signs would be considered conceptually dissimilar.

Despite the coinciding word prefix (‘eco’/’eko’) evoking a concept as mentioned above, for the remaining part of the public that would not see this association, and the English-speaking consumers, neither of the signs has a meaning as a whole. It is therefore, not sufficient to establish any conceptual similarity as this element is weak and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements (‘-quenz’ and ‘-benz’), which have no meaning.

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 goods are assumed to be similar. The degree of attention of the relevant professional public is expected to be higher than average and may vary, and be relatively high as involves knowledge or expertise from the energy sector. The earlier mark has a normal level of distinctiveness.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

As explained in section c) of the present decision, although the signs coincide visually and aurally in the ending ‘-ENZ’, it should be emphasised that from an aural perspective, since the signs are pronounced as ‘ECO/QUENZ’ and ‘EKO/BENZ’ they are quite far from each other, even taking into account the coinciding letters ‘E(*)O’ in case of more similar English pronunciation. Therefore, the signs are found to be aurally similar to a low degree. Similarly, they are found visually similar to a low degree. They vary due to the different position of the letters caused by different (middle letters and) lengths of the signs

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). Therefore, the fact that the marks in question have almost the same number of letters, eight/seven letters, is not particularly significant in the circumstances of the present case.

The most commonalities in the signs pertain to their identical endings, ‘-ENZ’. However, it is concluded that this part will be seen in connection with the preceding different middle letters of the signs, that is as ‘-QUENZ’ /’-BENZ’ due to the way that both signs are pronounced.  As described in the section c) for a substantial part of the consumers (English- and non-English-speaking, including some Slavic languages) the coinciding element ‘ECO-’/’EKO-’ will be meaningful  and weak. Moreover, although both the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In principle, coincidence in a weak or non-distinctive element will usually not result in likelihood of confusion. The fact that the elements ‘ECO-‘/’EKO-’ in the signs, almost aurally coincide for the English speaking public does not lead to likelihood of confusion because of weak distinguishing power of this elements, which result in quite an important impact on the differing final parts of the signs, ‘-QUENZ’ /’-BENZ’. It is even truer, for the part of public of Slavic origin languages (e.g. Polish, Czech) as the signs can be further differentiated on a conceptual level as the contested sign refers to a concrete concept (fuel).

For all these reasons, and notwithstanding assumed similarity of the goods covered by the marks, a likelihood of confusion can be ruled out, and the opposition must be rejected as unfounded.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gregor SCHNEIDER

Birgit FILTENBORG

Andrea VALISA

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.