OPPOSITION No B 2 762 840

Bosch Termotecnologia S.A., Avenida Infante D. Henrique, Lotes 2-E e 3-E, 1800-220 Lisboa, Portugal (opponent), represented by Furtado – Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)

a g a i n s t

DOM Sicherheitstechnik GmbH & Co. KG, Wesselinger Str. 10-16, 50321 Brühl, Germany (applicant), represented by Patentanwälte Krämer Meyer, Goethestr. 2, 61231 Bad Nauheim, Germany (professional representative).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 840 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 458 111 for the word mark ‘DOMConnect’. The opposition is based on Portuguese trade mark registrations No 546 499 for the figurative mark  and No 556 939 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR − PORTUGUESE TRADE MARK No 546 499

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 11:        Water heaters; gas and electric water heaters; boilers; solar thermal collectors; air conditioning apparatus (heat and air pumps); heat accumulators; steam accumulators; hot air ovens; heating boilers; feeding apparatus for heating boilers; heating apparatus for solid, liquid or gaseous fuels; hot air apparatus; air conditioning apparatus; cooling appliances and installations; refrigerating appliances and installations; drying apparatus and installations; heating apparatus, electric; water heaters; water heaters [apparatus]; air reheaters; gas boilers; steam boilers; domestic boilers; heating apparatus; flues for heating boilers; boilers for use in heating systems; accumulation boilers; furnace boilers; air cooling apparatus; heating elements; heating installations; hot water heating installations; air conditioning installations; water conduits installations; water distribution installations; radiators [heating]; central heating radiators; radiators, electric; boiler pipes [tubes] for heating installations; fans [airconditioning]; heat pumps.

After the applicant’s limitations dated 07/09/2016 and 04/11/2016, the contested goods are the following:

Class 9:        Recorded content; information technology and audiovisual equipment; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments and indicators; data processing equipment and computers; peripherals adapted for use with computers; display screens; recorded and downloadable computer programs; computer software applications, downloadable; electronic, electromechanical and electromotive locks and lock cylinders, and electronic, electromechanical and electromotive locking systems consisting thereof; encoded keys; electronic keys of metal and/or plastic with integrated transponders; transponders, including in the form of transponder cards; integrated circuit cards [smart cards]; encoded service cards and identity cards; encoded chip cards and magnetic cards; digital storage media and smartcards; USB flash drives; programmable radio identification devices (RFID); readers [data processing equipment]; readers for transponder cards, chip cards and encoded magnetic cards; optical readers (data processing equipment); access terminals (data processing equipment); data collection apparatus; transmitters of electronic signals; electronic components; electrotechnical and electronic apparatus for access organisation for securing rooms or buildings; access control devices; electrical access control apparatus and installations; electric and electronic security devices for doors, windows, keys, locks, door openers and door closers; door fittings having an electronic and/or electro-optical reader; chips for the electronic and electromagnetic locking and unlocking of locks; electronic apparatus for wired and wireless networks for securing rooms or buildings; electronic apparatus for wired and wireless networks for data transmission, in particular electronic interfaces for networks of data processing installations; interfaces for computers; computer network bridges; aerials, in particular RFID antennas; apparatus for programming transponder cards, chip cards and encoded magnetic cards; power suppliers and AC adapters; cables and cable conduits (electric); batteries, electric; accumulators (electric); electronic components for security and identification apparatus and installations; calculators; portable computers; pocket calculators; keypads; jigs [measuring instruments]; advertising signboards [luminous]; electronic publications, downloadable; software, in particular for access control and for managing and programming electronic keys and lock cylinders; parts, replacement parts and fittings for the aforesaid goods, included in this class.

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.

The contested goods in Class 9 are essentially databases, media content, communications equipment, data storage devices, display devices, computers, calculators, IT and audio-visual devices, recorded and downloadable content, computer software, access control devices, security devices, measuring instruments, electrical and electronic components, electric cables, peripherals adapted for use with computers as well as parts and fittings therefor. The opponent’s goods in Class 11 are boilers, heaters, sanitary installations, water supply and sanitation equipment, and heating, ventilating and air conditioning equipment. These goods have different natures, purposes and methods of use. They do not come from the same producers, they target different publics and are commercialised via different channels or outlets. Moreover, they are neither in competition with nor complementary to each other. Therefore, these goods are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as Portuguese trade mark registration No 546 499 is concerned.

The examination of opposition will continue in relation to Portuguese trade mark registration No 556 939.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR – PORTUGUESE TRADE MARK No 556 939

1. The goods

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

Class 9:        Programmable controllers; controllers (regulators); electrical controllers; power controllers; remote controls; electronical controllers; thermostat controllers; boiler control instruments.

The contested goods are the following:

Class 9:        Recorded content; information technology and audiovisual equipment; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments and indicators; data processing equipment and computers; peripherals adapted for use with computers; display screens; recorded and downloadable computer programs; computer software applications, downloadable; electronic, electromechanical and electromotive locks and lock cylinders, and electronic, electromechanical and electromotive locking systems consisting thereof; encoded keys; electronic keys of metal and/or plastic with integrated transponders; transponders, including in the form of transponder cards; integrated circuit cards [smart cards]; encoded service cards and identity cards; encoded chip cards and magnetic cards; digital storage media and smartcards; USB flash drives; programmable radio identification devices (RFID); readers [data processing equipment]; readers for transponder cards, chip cards and encoded magnetic cards; optical readers (data processing equipment); access terminals (data processing equipment); data collection apparatus; transmitters of electronic signals; electronic components; electrotechnical and electronic apparatus for access organisation for securing rooms or buildings; access control devices; electrical access control apparatus and installations; electric and electronic security devices for doors, windows, keys, locks, door openers and door closers; door fittings having an electronic and/or electro-optical reader; chips for the electronic and electromagnetic locking and unlocking of locks; electronic apparatus for wired and wireless networks for securing rooms or buildings; electronic apparatus for wired and wireless networks for data transmission, in particular electronic interfaces for networks of data processing installations; interfaces for computers; computer network bridges; aerials, in particular RFID antennas; apparatus for programming transponder cards, chip cards and encoded magnetic cards; power suppliers and AC adapters; cables and cable conduits (electric); batteries, electric; accumulators (electric); electronic components for security and identification apparatus and installations; calculators; portable computers; pocket calculators; keypads; jigs [measuring instruments]; advertising signboards [luminous]; electronic publications, downloadable; software, in particular for access control and for managing and programming electronic keys and lock cylinders; parts, replacement parts and fittings for the aforesaid goods, included in this class.

Some of the contested goods are identical to goods on which the opposition is based. For example, the opponent’s programmable controllers may refer to programmable logic controllers (PLCs), which are industrial digital computers that have been ruggedised and adapted for the control of manufacturing processes. Therefore, the contested data processing equipment and computers include, as a broader category, the opponent’s programmable controllers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical 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 are directed at the public at large and/or business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods.

3. The signs

	DOMConnect
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark is figurative but the typeface used is rather standard. The opponent’s goods are different types of controllers and control instruments. Therefore, the element ‘CONTROL’ has a low degree of distinctiveness for these goods. The element ‘CONNECT’ of the earlier mark, bearing in mind the relevant goods, will be associated with the Portuguese verb ‘conectar’ or with nouns such as ‘conexão’ or ‘conectividade’, meaning ‘to link to something or someone’, ‘connection’ or ‘connectivity’, respectively. This word also has a low degree of distinctiveness because it indicates that the goods have the capacity to link to something or someone else or to facilitate a connection or connectivity between systems, applications and/or devices.

The contested sign is a word mark, ‘DOMConnect’, which as a whole is a fanciful term with no meaning for the relevant public. However, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51), and it can reasonably be assumed that the relevant public will recognise the element ‘Connect’ in the mark with the abovementioned meanings and it will, therefore, have a low degree of distinctiveness, for the reasons indicated above, for all the contested goods.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements. It cannot be excluded that a part of the Portuguese public may also perceive in the element ‘DOM’ of the contested sign the concept of ‘domotics’ (‘domótica’ in Portuguese) or ‘home automation’, which involve the control and automation of lighting, heating (such as smart thermostats), ventilation, air conditioning (HVAC) and security, as well as home appliances.

Bearing in mind that the contested goods are communications equipment, access control and security devices, measuring instruments and other devices or components that can be used in the control and the automation of a home, this element is considered to have a low degree of distinctiveness. For another part of the relevant public, ‘DOM’ is meaningless and therefore distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which the differentiating element, ‘DOM’, of the contested sign has a meaning and has a low degree of distinctiveness.

The signs have no element that could be considered clearly more dominant than other elements.

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.

Visually and aurally, the marks coincide in the weak element ‘Connect’. However, they differ in their first elements, ‘Control’ in the earlier mark and ‘DOM’ in the contested sign, which are also weak elements but are those that first catch the attention of the consumers.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic contents conveyed by the marks. Taking into account the low degree of distinctiveness of the coinciding element, ‘Connect’, as well as the concepts conveyed by the additional and weak elements of the signs, the signs are conceptually similar to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous factors and, in particular, on the distinctiveness of the earlier mark, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In general, a finding that a trade mark has a low degree of distinctiveness is an argument against likelihood of confusion, although other factors, such as the degree of similarity of the signs and the goods or services, as well as the degree of attention and knowledge of the relevant public, must also be taken into account.

The goods assumed to be identical are directed at the public at large and/or business customers with specific professional knowledge or expertise. The degree of attentiveness may vary from average to high.

The signs are visually, aurally and conceptually similar to a low degree because they coincide in an element with a low degree of distinctiveness at the ends of the signs that will attract less the attention than the initial and differentiating parts of the signs. The additional elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘DOM’ is meaningless and distinctive to a normal degree. This is because, as a result of the distinctive character of that differentiating element, that part of the public will perceive the signs as being even less similar.

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

Sandra IBAÑEZ

Benoit VLEMINCQ

Frédérique SULPICE

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.