CALON energy passionate about power | Decision 2605494

OPPOSITION No B 2 605 494

Compagnie des Gaz de Petrole Primagaz, Tour Opus 12, 77 Esplanade du Général de Gaulle, 92081 Paris La Défense Cedex, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Calon Energy Limited, Severn Power Station, West Nash Road, Nash, Newport, Gwent Newport [Casnewydd GB-CNW], NP18 2BZ, United Kingdom (applicant), represented by Virtual Law, 2nd Floor 9 Savoy Street, London, WC2E 7EG, United Kingdom (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 494 is partially upheld, namely for the following contested goods and services:

Class 7: Electricity generators; electrical and electronic apparatus and instruments for use in or in relation to the generation of power, gas or electricity.

Class 9: Apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical and electronic apparatus and instruments for use in or in relation to the distribution of power, gas or electricity; power generation monitoring apparatus.

Class 11: Gas and electric apparatus and instruments for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; electrical and electronic apparatus and instruments for use in or in relation to the generation of water; electrical and electronic apparatus and instruments for use in or in relation to the distribution of water.

Class 35: Advertising, marketing and business enquiry services relating to electrical and gas equipment and apparatus and to energy services and the generation and distribution of power, new energies, preservation of natural wealth and sustainable development; business consulting in the field of environmental protection; market research and studies in the field of environmental protection, new energies, preservation of natural wealth and sustainable developments; consulting and information on the cost of electrical, gas, telecommunications and energy apparatus and their operation; business management consultancy services relating to energy production.

Class 37: Repair services in the electric, gas, water, and power fields; gas pipe line construction, maintenance and repairs; construction and building construction supervision of power generating appliances; mining, oil and gas extraction.

Class 39: Electricity distribution, transportation and supply; storage of electricity.

Class 40: Generation of electricity; energy production.

2. European Union trade mark application No 14 305 916 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 14 305 916. The opposition is based on European Union trade mark registration No 11 469 921. 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.

The goods and services

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

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding products; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting; Firewood; Gas for lighting.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Air conditioning apparatus and installations; Freezers; Pocket searchlights; Coffee machines, electric; Cookers; Lighting apparatus for vehicles; Heating or air conditioning installations for vehicles; Air and water purifying apparatus and machines; Sterilizers.

Class 35: Providing of information, promotion of installations for the distribution of energy of all kinds; Promotion of goods, for others, powered by energy of all kinds; Business advice for others with a view to improving and controlling energy consumption; Business consultancy and information on the consumption of energy; Tariff simulation and consumption forecasting; Cost price analysis for installations operating by means of all kinds of energy for improving and controlling energy consumption; Demonstration of goods for improving and controlling energy consumption; Business management assistance and consultancy in business management and organisation, in the field of environmental protection and new energies; Efficiency experts in the field of environmental protection, new energies and sustainable development; Market studies and research in the field of environmental protection, new energies and sustainable development; Reading and recording of data relating to energy meters; Automatic invoicing of energy consumption.

Class 37: Providing of information and consultancy relating to construction and supervision of construction works and renovation of homes, in particular with a view to improving and controlling energy consumption or protecting the environment; Inspection of construction projects, installation, maintenance, repair and putting into operation of apparatus and installations for energy production and distribution.

Class 39: Energy supply services, for others; Technical consultancy relating to energy distribution.

Class 40: Energy generation.

Class 42: Studies and technical consultancy on the distribution of energy consumption; Technical assessment and appraisal on energy consumption; Remote meter reading of energy consumption; Technical studies and analysis, diagnostics (carried out by engineers) for the implementation and installation of apparatus and installations for providing and/or generating and/or distributing energy; Studies, research and surveying in the fields of energy, the environment and sustainable development; Technical consultancy and information relating to energy and the control thereof; Creation (design, development), updating and adaptation of computer software for improving energy consumption and sustainable development; Technical information and consultancy relating to installations operating with the aid of energy of all kinds, and the safety thereof; Services of technical experts relating to the production of electrical, wind, solar, hydraulic, geothermal, thermal, climatic and renewable energy, providing of consultancy relating to construction and renovation, construction drafting (engineering), technical consultancy provided by engineers for improving energy efficiency and insulation of buildings.

The contested goods and services are the following:

Class 7: Electricity generators; electrical and electronic apparatus and instruments for use in or in relation to the generation of power, gas or electricity or telecommunications.

Class 37: Repair services in the electric, gas, water, power and telecommunications fields; gas pipe line construction, maintenance and repairs; construction and building construction supervision of power generating appliances; mining, oil and gas extraction.

Class 39: Electricity distribution, transportation and supply; storage of electricity.

Class 40: Generation of electricity; energy production.

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.

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

The term ‘in particular’, used in the opponent’s list of Class 37 services, indicates that the specific 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).

Contested goods in Class 7

The contested Electricity generators; electrical and electronic apparatus and instruments for use in or in relation to the generation of power, gas or electricity are considered similar to the opponent’s services in Class 40 (energy generation), as they can coincide in producers/providers, end users and distribution channels.

The contested electrical and electronic apparatus and instruments for use in or in relation to telecommunications are considered dissimilar to the opponent’s goods and services. As these contested goods and the opponent’s goods and services belong to totally different market segments, their channels of distribution are different and their producers/providers are also different. These goods and services at issue are also not complementary as one is not essential, neither important for the use of the other, and they are not interchangeable, and thus, in competition with each other.

Contested goods in Class 9

The contested Apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical and electronic apparatus and instruments for use in or in relation to the distribution of power, gas or electricity; power generation monitoring apparatus are considered similar to the opponent’s Energy supply services, for others in Classes 39 and Energy generation of Class 40. The contested goods may have the same essential purpose as the opponent’s services, namely production and generation of energy. The contested goods and the opponent’s services can be aimed at the same public. Furthermore, they can be complementary in the sense that one is essential or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods and provision of those services lies with the same undertaking. In consequence, despite different nature of goods and services, the Opposition Division considers them similar.

Contested goods in Class 11

The contested Gas and electric apparatus and instruments for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes are included in the broad category of the opponent’s Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes (the opponent’s apparatus cover a group or combination of instruments). Therefore, the goods at issue are identical.

The contested electrical and electronic apparatus and instruments for use in or in relation to the generation of water; electrical and electronic apparatus and instruments for use in or in relation to the distribution of water are similar to the opponent’s Apparatus for water supply and sanitary purposes. All the conflicting goods are parts of water supply systems. They are distributed through the same channels, are addressed at the same consumers and can be manufactured by the same undertakings.

Contested services in Class 35

The contested Advertising, marketing relating to electrical and gas equipment and apparatus and to energy services and the generation and distribution of power, new energies, preservation of natural wealth and sustainable development include, as broader categories the opponent’s Promotion of goods, for others, powered by energy of all kinds. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested business management consultancy services relating to energy production are included in the broad category of, or overlap with, the opponent’s Business management consultancy in business management and organisation, in the field of environmental protection and new energies. Therefore, the services at issue are identical.

The contested business enquiry services relating to electrical and gas equipment and apparatus and to energy services and the generation and distribution of power, new energies, preservation of natural wealth and sustainable development; business consulting in the field of environmental protection; consulting and information on the cost of electrical, gas, telecommunications and energy apparatus and their operation overlap with the opponent’s Providing of information for the distribution of energy of all kinds; Business advice for others with a view to improving and controlling energy consumption; Business consultancy and information on the consumption of energy. Therefore, they are identical.

The contested market research and studies in the field of environmental protection, new energies, and sustainable developments are identically contained in both lists of services.

The contested market research and studies in the field of preservation of natural wealth are included in the broad category of the opponent’s Market studies and research in the field of environmental protection. Therefore, they are identical.

Contested services in Class 37

The contested Repair services in the electric, gas, water, and power fields; gas pipe line repairs overlap with the opponent’s repair of apparatus and installations for energy production and distribution. Therefore, they are identical.

The contested Repair services in the telecommunications field are dissimilar to the opponent’s goods and services as they belong to totally different market segments. These contested services are provided by different undertakings through dissimilar distribution channels.

The contested construction and building construction supervision of power generating appliances are similar to the opponent’s Providing of information and consultancy relating to construction and supervision of construction works and renovation of homes, in particular with a view to improving and controlling energy consumption or protecting the environment. The services at issue can be provided by the same undertakings and target the same consumers. Also, they can coincide in the distribution channels.

The contested gas pipe line maintenance is included in the broad category of the opponent’s maintenance of apparatus and installations for energy production and distribution. Therefore, they are identical.

The contested gas pipe line construction overlaps with the opponent’s installation, maintenance, repair and putting into operation of apparatus and installations for energy production and distribution. Therefore, they are identical.

The contested mining, oil and gas extraction are considered similar to a low degree to the opponent’s installation, maintenance, repair and putting into operation of apparatus and installations for energy production and distribution. The services at issue can be linked as they can be provided by the same companies, through the same distribution channels to the same consumers.

Contested services in Class 39

The contested Electricity supply is included in the broad category of the opponent’s Energy supply services, for others. Therefore, they are identical.

The contested Electricity distribution, which may refer to the process of supplying goods, is included in the broad category of the opponent’s Energy supply services, for others (meaning the act or process of providing something that is needed; to provide someone or something with something). Therefore, they are identical.

The contested Electricity transportation overlaps with the opponent’s Energy supply services, for others as the opponent’s services refer to the act or process of providing something that is needed. Therefore, they are identical.

The contested Storage of electricity is similar to the opponent’s Energy supply services, for others meaning the act or process of providing something that is needed; to furnish or equip as it is common for companies which provide goods, to also offer storage services of these goods. Therefore, these services can coincide in distribution channels and be directed to the same end users.

Contested services in Class 40

The contested energy production is identical to Energy generation included in the opponent’s Class 40 (being a synonym).

The contested Generation of electricity is included in the broad category of the opponent’s Energy generation. Therefore, they are identical.

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 identical and similar to various degrees are directed at the public at large, for example the Class 11 goods, and at business customers with specific professional knowledge or expertise as regards some specialised goods and services. The public’s degree of attentiveness may vary from average to high, depending on the specialised nature, or terms and conditions of the purchased goods and services.

The signs

CALOON

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. The verbal elements, ‘ENERGY PASSIONATE ABOUT POWER’ are meaningful in certain territories, in particular in those countries where English-language is understood. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark consisting of ‘CALOON’.

The contested sign is a figurative mark consisting of ‘CALON’ written in bold standard upper case characters, underneath of which there is the word ‘energy’ written in smaller lower case script in bold. Lower down there is the slogan ‘passionate about power’ in slightly smaller lower case letters. On the right of the verbal elements, there is a figurative stylised element depicted in black with a geometric shape pattern. The figurative device is likely to be perceived as a stylised letter ‘C’ by the public, as a reference to the initial letter of the term ‘CALON’, portrayed next to it.

The verbal element ‘CALON’ and the figurative device in the contested sign, by virtue of their large size, are the dominant elements as they are the most eye-catching within the sign.

The elements ‘CALOON’ of the earlier mark and ‘CALON’ of the contested sign have no meanings for the relevant public and are, therefore, distinctive.

The element ‘ENERGY’ of the contested sign will be understood as, inter alia, ‘a form of power such as electricity, heat, or light that is used for making things work’ by the relevant public. Bearing in mind that the contested goods and services can be powered by energy and the energy can be the subject of the contested services, this verbal element is not capable of indicating the commercial origin and is, therefore, non-distinctive for the contested goods and services.

The expression ‘passionate about power’ will be perceived as a promotional laudatory message ‘manifesting or showing strong interest or enthusiasm about energy obtained from oil, coal, the sun, etc., used for operating equipment and machines’. The relevant public will not perceive in that statement any indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services concerned. It is, therefore, non-distinctive for the contested goods and services.

Visually, the marks are similar to the extent that they coincide in the letter sequence ‘CALO*N’. They differ in the additional vowel ‘O’ in the earlier sign, the non-distinctive word ‘ENERGY’ and the slogan of the contested sign. The signs differ also in the figurative device of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛C-A-L-*-N’, present identically in both signs. The pronunciation differs in the sound of the letters ‛O-O’ of the earlier sign and ‘O’ of the contested mark, in the sound of the letters ‘E-N-E-R-G-Y’ and in the slogan of the contested sign; the additional words of the contested sign will have a very reduced impact on the public’s attention, due to their limited distinctiveness, as explained above. The relevant public will pronounce the double ‘O’ of the earlier mark as the letter ‘U’.

Therefore, the signs are similar to an average degree.

Conceptually, the public will perceive the meaning of the word ‘ENERGY’ and of the slogan of the contested sign, as explained above. The signs differ also in the figurative device that can be perceived as a stylised letter ‘C’ by part of the public. The earlier mark lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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.

Global assessment, other arguments and conclusion

The goods and services are partially identical, partially similar, partially similar to a low degree and partially dissimilar.

The signs at issue are similar as they coincide almost completely in the dominant verbal element of the contested sign. The dominant word element of the contested sign is fully included in the earlier mark. The only difference between these elements lies in one additional middle letter, ‘O’, in the earlier mark. The double ‘O’ of the earlier mark and the single ‘O’ of the contested sign will be pronounced in a similar manner. Also, visually this additional middle vowel of the earlier mark does not have a particularly strong impact. Overall, this difference between the signs is not sufficient to counteract the similarities arising from the remaining identical letter sequence of the verbal elements ‘CALOON’ and ‘CALON'. Furthermore, the elements ‘CALOON’ of the earlier mark and ‘CALON’ of the contested sign do not have any meanings which could assist the consumer in distinguishing them better. The word, ‘ENERGY’ as well as the promotional statement of the contested sign are considered non-distinctive and, therefore, are not capable of indicating the commercial origin of the goods and services at issue. The attention of the relevant public will be attracted by the fanciful dominant element ‘CALON’.

In consequence, in the present case, the word elements ‘CALOON’/’CALON’ will be the parts of the signs by which the consumer will primarily identify the goods and services covered by the marks, respectively. The dominant word element of the contested sign will have a stronger impact on the consumer than the figurative component of the sign. This is because the consumer will most readily refer to a sign by its verbal components rather than the figurative elements. The Opposition Division finds that the dominant figurative device in the contested sign cannot neutralize the meaningless and thus fanciful word ‘CALON’ in the overall impression of the contested mark.

Furthermore, account must be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Bearing in mind the above, the Opposition Division is of the opinion that the relevant public could believe that the identical and similar, including similar to a low degree, goods and services come from the same undertaking or from economically-linked undertakings.

The applicant argues that the opponent operates on the different market than the applicant. It states that the opponent’s customers are every day consumers, property managers and developers, while the applicant’s goods and services are not aimed at average consumers. They are directed almost entirely to the company responsible for operating the UK’s electricity transmission system, the National Grid. In consequence, the applicant claims that the goods and services at issue are different and, as such, there is no likelihood of confusion. Further, the applicant alleges that the signs at issue are used on their websites in different colours, which makes the difference between them more evident. In this regards the Operation Department points out that the marks must be compared as they are registered and applied for, and no account can be taken of how they are used or intended to be used.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 469 921. 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 identical and similar, including similar to a low degree, to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

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 shall 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

Gueorgui IVANOV

Marzena MACIAK

Ewelina SLIWINSKA

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.

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