OPPOSITION No B 2 589 078
Teka Industrial, S.A., Cajo, 17, 39011 Santander (Cantabria), Spain (opponent), represented by Díaz Ungría, S.L., Avda. Concha Espina nº 8, 6º D, 28036 Madrid, Spain (professional representative)
a g a i n s t
M. Kelliher 1998 Limited, Ballymullen, Tralee Kerry, Ireland (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).
On 17/03/2016, the Opposition Division takes the following
1. Opposition No B 2 589 078 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 925 557, in Classes 11, 37 and 42. The opposition is based on Spanish trade mark registrations No 872 147 for goods in Class 11, No 1 770 459 for goods in Class 11, No 2 985 697 for goods in Class 11, No 2 003 888 for services in Class 37, No 1 926 046 for services in Class 42 and on European Union trade mark registration No 1 207 703 for goods and services in Classes 7, 11 and 37. The opponent invoked Article 8(1)(b) and 8(5) 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.
- The signs
Earlier trade marks
The relevant territory is Spain and, for EUTM No 1 207 703, 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).
Earlier mark No 1 is the word mark ‘TEKA’. Earlier mark No 2 is a figurative mark consisting in the word ‘TEKA’ in stylised, bold, italic title case letters, with the horizontal stroke of the letter ‘T’ extending all the way along the upper part of the word and a large dot above the letter ‘T’. Earlier mark No 3 is identical to earlier mark No 2 but in red.
The element ‘TEKA’ of the earlier marks has no meaning for the relevant public and is, therefore, distinctive. However, it may be that, for part of the Spanish public, this word evokes the Spanish word ‘TECA’ which designates a South East Asian leafy tree used for timber in shipbuilding and for making furniture. In any case, in relation to the relevant goods and services, as it is not descriptive, allusive or otherwise weak, it is distinctive to an average degree.
The figurative contested sign contains the following elements: The word ‘ASTROTEK’ written in a rather standard typeface with a combination of lower and upper case letters (the letters ‘ASTRO’ are in grey and the letters ‘TEK’ in orange), a grey circular figurative element depicted above the element ‘TEK’ and containing a white circle and an orange spot in its centre and the expression ‘TECHNICAL LIGHTING’ depicted in very small letters below the element ‘ASTRO’.
The word element ‘ASTROTEK’ and the figurative element are the co-dominant elements of the contested sign by virtue of their position and size compared to the expression ‘TECHNICAL LIGHTING’ written in very small characters at the bottom of the sign, in light grey letters. Due to its very small size, secondary position and colour, it is not noticeable at first sight and as such not likely to be taken into account by the public. Therefore, it will not be taken into account for the purposes of comparison (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 42). In any case, whether or not these words are perceived, pronounced and understood, and whether or not they are distinctive would not change the outcome of the decision since they would add even more to the differences between the signs.
Regarding the expression ‘ASTROTEK’ of the contested sign, 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, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). The compound expression ‘ASTROTEK’, as a whole, has no meaning. Therefore, it is reasonable to assume that the relevant consumers will perceive the expression as the mere sum of its parts, thus splitting it into the meaningful elements ‘ASTRO’ and ‘TEK’. Furthermore, the use of different colours creates a visual separation between these two elements. The element ‘ASTRO’ will be perceived in Spain and throughout the relevant European Union as a prefix used to form words which refer to things relating to stars, celestial objects or outer space (e.g. astronomy, astrology). In relation to the goods and services, it is distinctive. The element ‘TEK’, particularly in relation to the relevant goods and services, may be perceived by part of the relevant consumers, as referring to the word ‘tech’ in the meaning of ‘technology’ or ‘technological’ and therefore, for those consumers, it is weak since it refers to the nature of the goods and services. For the consumers who perceive it as an arbitrary element, it is distinctive.
The figurative element of the contested sign does not convey any particular concept and will be perceived as a decorative element.
Visually, regarding the earlier word mark ‘TEKA’ and the contested sign, the signs coincide in the letters ‘T-E-K’, placed in different positions in the signs. In the earlier mark these are the first three letters, while in the contested sign these are the last three letters, depicted in orange. The signs differ in the final letter ‘A’ of the earlier mark, in the grey letters ‘A-S-T-R-O’ of the contested sign and in its figurative element, as described above. The first parts of the conflicting marks do not coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. The earlier mark starts with the letters ‘T-E-K’, while the contested sign begins with the letters ‘A-S-T-R-O’. The signs also differ in their length (four letters versus eight letters). Regarding the earlier figurative marks, the signs further differ in their stylisation, as described above, including the red colour for earlier mark No 3. Therefore, although the signs share the string of letters ‘TEK’, these letters are placed in different positions and this commonality does not render the signs visually similar. 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 (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, taken as a whole, it is concluded that the signs are not visually similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs are pronounced as /te-ka/ and /as-tro-tek/ since the figurative element of the contested sign is not subject to a phonetic assessment. The pronunciation of the signs coincides in the sounds of the letters ‘T-E-K’. However, these letters are placed in different positions in the marks; in the earlier marks they are at the beginning whereas in the contested sign they are placed at the end. Furthermore, the signs differ in their intonation and rhythm (two syllables versus three). As the signs only coincide in irrelevant aspects, since the coinciding letters are aurally not perceptible as separate elements, but hidden in the signs, it is concluded that the signs are not aurally similar.
Conceptually, the earlier signs have no meaning, except for part of the Spanish consumers who may associate the earlier marks ‘TEKA’ with the word ‘TECA’ referring to South East Asian leafy tree used for timber in shipbuilding and for making furniture. The element ‘ASTRO’ of the contested sign will be perceived as a commonly used prefix which relates to stars, celestial objects or outer space while the element ‘TEK’ may be associated, by part of the public, to ‘technology’ or ‘technological’. The figurative element of the contested sign does not convey any particular concept. Therefore, the signs are not conceptually similar.
As the signs merely coincide in irrelevant aspects, namely three letters placed in different positions in the signs, they are overall dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.
Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.
It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘TEKA’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.
In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.
In the present case, the opponent’s argument has to be dismissed since the contested sign has been found dissimilar to the earlier marks and in any case it does not contain the element ‘TEKA’ common to the earlier series of marks.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- The signs
The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
As explained above, since the signs only coincide in irrelevant aspects, namely three letters placed in different positions in the sign, they are considered overall as dissimilar.
As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).
In any case, the Opposition Division also notes that during the time limit set by the Opposition Division to file further facts, evidence and arguments (expiring on 14/02/2016), the opponent did not provide any arguments which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.
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
Begoña URIARTE VALIENTE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.