OPPOSITION No B 2 779 729

Zumbach Electronic AG, Hauptstr. 93, 2552 Orpund, Switzerland (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Widenmayerstraße 47, 80538 München, Germany (professional representative)

a g a i n s t

Sébastien Bonte, 149, rue nationale, 59254 Ghyvelde, France (applicant).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 779 729 is partially upheld, namely for the following contested goods:

Class 9:        Scientific research and laboratory apparatus, educational apparatus and simulators; measuring, detecting and monitoring instruments, indicators and controllers; devices for treatment using electricity.

2.        European Union trade mark application No 15 752 306 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 752 306 for the word mark ‘CAPPAC’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 12 482 519 for the word mark ‘CAPAC’. 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:        Capacity measuring and monitoring equipment and apparatus.

The contested goods are the following:

Class 9:        Scientific research and laboratory apparatus, educational apparatus and simulators; Recorded content; Measuring, detecting and monitoring instruments, indicators and controllers; Safety, security, protection and signalling devices; Devices for treatment using electricity.

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 goods in Class 9

The contested scientific research and laboratory apparatus, educational apparatus; measuring, detecting and monitoring instruments, indicators and controllers; devices for treatment using electricity overlap with the opponent’s capacity measuring and monitoring equipment and apparatus. Therefore, they are identical.

The contested safety, security, protection and signalling devices; recorded content are dissimilar to the opponent’s capacity measuring and monitoring equipment and apparatus, as they do not have the same nature, purpose, producer or relevant public. Furthermore, these goods are neither complementary nor in competition.

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 both the public at large and a professional public with specific professional knowledge or expertise.

The degree of attention is rather high because of the specific technical nature of the goods.

3. The signs

CAPAC	CAPPAC
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).

Both signs are word marks, each consisting of a single verbal element.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word ‘CAPAC’ in the earlier trade mark refers to ‘top, cover, lid’ in Romanian and Bulgarian. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that does not speak Bulgarian or Romanian, such as the English-speaking part of the public.

Since neither ‘CAPPAC’ nor ‘CAPAC’ has a meaning in the relevant territory, they are both of average distinctiveness.

Visually, the signs coincide in the letters ‘CAP-AC’. They differ in the additional letter ‘P’ in the contested sign.

Since there is only a one-letter difference between the signs, and this additional letter is the same as an adjacent letter in the middle of the word, the signs are visually highly similar.

Aurally, the signs are identical.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs are aurally identical and visually highly similar, and the conceptual aspect does not influence the assessment of the similarity of the signs. Since some of the goods are identical, it is highly conceivable that the relevant consumers (even highly attentive professionals) would perceive the contested sign as a variation of the earlier mark. Account is taken of the fact 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). 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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 482 519. 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 found to be identical 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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Milda CERNIAUSKAITE

Martin EBERL

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.