OPPOSITION DIVISION
OPPOSITION No B 2 821 794
Elecon Conductores Eléctricos, S.A., Calle Industria 2, Pol. Ind. Latorre, 08760
Martorell, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent,
415, 5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
TE Connectivity Corporation, 1050 Westlakes Drive, Berwyn Pennsylvania 19312,
United States of America (applicant), represented by Elzaburu, S.L.P., Miguel Ángel
21, 28010 Madrid, Spain (professional representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 821 794 is upheld for all the contested goods.
2. European Union trade mark application No 15 827 926 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 827 926 for the word mark ‘ELCON’. The opposition is based on
European Union trade mark registration No 12 771 085 for the figurative mark
. 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
Decision on Opposition No B 2 821 794 page: 2 of 7
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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Electrical cables; electrical cables; adapter cables (electric -); insulated
electrical cables; enamelled electric wires; metallic cables [electric];
electrical cables; metallic cables [electric]; interface cables [electric];
electric assembly cables, electric cables and conductors; electric cables
for mineral insulation, heat-resistant electric cables; electricity mains
(materials for -) [wires, cables]; apparatus, instruments and cables for
electricity.
The contested goods are the following:
Class 9: Electric and electrical connectors.
The contested electric and electrical connectors are devices that join two pieces of
equipment, wire, or piping together. They are included in the broad category of the
opponent’s apparatus for electricity. Therefore, they are identical.
b) 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 the public at large
and professionals. The degree of attention is average.
c) The signs
ELCON
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
Decision on Opposition No B 2 821 794 page: 3 of 7
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The elements ‘CONDUCTORES ELÉCTRICOS’ and ‘S.A.’ of the earlier mark are
meaningful in certain territories, for example in those countries where Spanish is
understood. Consequently, the Opposition Division finds it appropriate to focus the
comparison of the signs on the Spanish-speaking part of the public.
The earlier mark is a figurative mark that includes the word ‘ELECON’, which is
depicted in blue bold title case letters and is meaningless, therefore distinctive, for
the relevant public. Due to its dimensions and position, ‘ELECON’ is the co-dominant
element of the earlier mark, together with the figurative element on its left side.
Therefore, it has a prominent significance when compared to the other elements of
the mark.
In its observations of 25/05/2017, the applicant claimed that dominant elements exist
only when the other components of the mark are negligible and that, consequently,
the earlier mark does not contain any dominant element. In support of this argument,
the applicant mentioned judgement of the General Court of 01/03/2016 T – 61/15,
1&1 Internet AG v. OHIM, ECLI:EU:T:2016:115, § 54. Nonetheless, in said decision,
the Court mentioned the presence of negligible elements together with a non-
negligible element in the same mark as an example of a sign including a dominant
element, rather than imposing a condition in this sense. A dominant element is the
portion of the mark that is visually outstanding because of its position, size,
dimensions and/or use of colours and that affects the visual impact of the sign. This
does not require that the other elements of the mark are negligible in the sense of
elements that, due to their size and/or position, are not noticeable at first sight or are
part of a complex sign with numerous other elements and, therefore, very likely to be
disregarded by the relevant public. The earlier mark is a complex mark where all the
elements are noticeable and easily distinguishable and where its figurative element
and the element ‘ELECON’, given their dimension and position, are visually
outstanding and affect the visual impact given by the sign.
The mark also includes the wording ‘CONDUCTORES ELÉCTRICOS’, a comma and
the acronym ‘S.A.’. The first element will be seen by the Spanish-speaking part of the
public as a description of the goods covered by the opponent’s mark, namely
‘electrical conductors, cables’. The comma is a simple punctuation mark that serves
to separate the elements ‘CONDUCTORES ELÉCTRICOS’ and ‘S.A.’. The latter will
be perceived as the acronym that stands for ‘Sociedad Anónima’, the Spanish
definition for a type of company. Therefore, this element is descriptive of the nature of
the opponent company and, therefore, non-distinctive. Consequently, the mentioned
elements have a limited significance in the present assessment, rather than creating
a connection with the opponent’s name in consumers’ minds able to distinguish the
marks, as argued by the applicant.
Finally, the mark contains a figurative element consisting of a blue circle interrupted
on its right side by a horizontal line, depicted on a white circular background
Decision on Opposition No B 2 821 794 page: 4 of 7
surrounded by a blue outline. Contrary to what stated by the applicant, according to
whom the element shall be seen as a letter ‘C’, the graphic component of the mark
will most likely be perceived as blue power button turned on its right, depicted on a
white background that has a blue outline. The element is allusive of the nature of the
relevant goods, which are electrical products. Consequently, it has a weak distinctive
character and secondary importance in the present comparison.
Moreover, when signs consist of both verbal and figurative components, in principle,
the verbal component of the sign usually has a stronger impact on the consumer than
the figurative component. This is because the public does not tend to analyse signs
and will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37). Therefore, the stylisation of the earlier mark and the figurative
element (which is also weak and despite its co-dominant role) have limited impact in
the present comparison.
The contested sign is the word mark ‘ELCON’, which is meaningless and therefore
distinctive for the relevant public. Given its verbal nature, the sign has no elements
that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘EL*CON’, which constitute the entirety of
the contested sign and five out of six letters of the verbal co-dominant element of the
earlier mark. The marks differ in the additional letter ‘E’ of said element, which is,
however, placed in the middle of the word and is surrounded by letters that are
identical to those forming the contested sign. The remaining differences lie in
elements of limited relevance, namely the weak figurative element and stylisation of
the earlier mark, as well as its non-distinctive elements ‘CONDUCTORES
ELÉCTRICOS, S.A.’. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‘EL*CON’, which constitute the entirety of the contested sign and five out of six letters
of the verbal co-dominant element of the earlier mark. The marks differ in the third
letter ‘E’ of the earlier mark, which is, however, surrounded by letters that are
identical to those forming the contested sign. In view of the above and given that the
non-distinctive elements of the earlier mark will most probably not be pronounced by
the relevant public, the signs are aurally highly similar.
Conceptually, although the differing elements ‘CONDUCTORES ELÉCTRICOS,
S.A.’ of the earlier mark will evoke a concept, they are not sufficient to validly
establish any conceptual dissimilarity, as these elements are non-distinctive and
cannot indicate the commercial origin of the relevant goods. The attention of the
relevant public will be attracted by the additional verbal element of the mark,
‘ELECON’, which has no meaning. The contested sign, as observed above, is also
meaningless. Admittedly, the marks are not similar because of the meaning conveyed
by the figurative element of the earlier mark that represents a power button.
However, this difference must be seen in the context of the weak distinctive character
of said component to the mark.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 821 794 page: 5 of 7
d) 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 some non-distinctive and weak elements in the
mark, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The contested goods are identical to the opponent’s goods. They target the general
public and professionals, whose degree of attention is average. The earlier trade
mark enjoys a normal degree of distinctiveness.
The signs in dispute are visually similar to an average degree and aurally highly
similar due to the coincidence in the letters ‘EL*CON’, present identically and in the
same order in both signs. The signs differ in the additional letter ‘E’ of the earlier
mark. However, as this letter is in the middle of the word, where consumers do not
tend to focus their attention, and considering that the differing letter is surrounded by
letters identical to those contained in the contested sign, this differing element may
be overlooked by the relevant public.
The other differences between the marks lie in elements and aspects of secondary
relevance, namely the stylisation, the weak figurative element representing a power
button and the non-distinctive words ‘CONDUCTORES ELÉCTRICOS, S.A.’ of the
earlier mark. Also the fact that the marks are not conceptually similar must be put in
the context of the earlier mark containing a weak element, namely its figurative
element, which, as observed above, has a lesser impact in the present comparison.
In addition, account must be 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).
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings. Indeed, it is highly conceivable that the relevant
consumer will perceive the contested mark as a sub-brand, a variation of the earlier
mark, configured in a different way according to the type of goods or services that it
designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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
Decision on Opposition No B 2 821 794 page: 6 of 7
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). In the present case, the
identity between the relevant goods is able to outweigh the differences between the
marks.
In its observations of 25/05/2017, the applicant claimed the word ‘ELECON’ of the
earlier mark has no distinctive character, since it describes the nature of the goods,
namely electric cables, given that it is a word play consisting of the letters ‘ELEC’ that
stands for ‘electric’ and ‘CON’ that stands for ‘conductors’, a type of cables.
Dissecting a mark in more elements is not appropriate unless the relevant public will
clearly perceive the components in question as separate elements. This may happen,
for instance, when a word element can be identified as such in an isolated manner
because of its clear meaning. Indeed, a consumer perceiving a complex verbal sign
will break it down into elements which, suggest a concrete meaning or which
resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, §
51, and 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). This is not the case for
the earlier mark, where the meaning of the word ‘ELECON’ is not immediate but only
vaguely suggestive of the concepts mentioned by the applicant. Indeed, it cannot be
excluded that a part of the public would perceive the allusion to the nature of the
opponent’s goods. Nonetheless, terms that are only suggestive or allusive as regards
to certain characteristics of the goods and/or services are not considered descriptive
and do not lack of distinctive character (31/01/2001, T-135/99, Cine Action,
EU:T:2001:30, § 29). Moreover, the applicant itself describes the term as a word play,
which means that it does have at least a minimum degree of distinctive character,
since it does not consist of the mere juxtaposition of two descriptive terms.
In support of its argument on the lack of distinctiveness of the word ‘ELECON’, the
applicant also refers to three trade mark registrations in the European Union. The
Opposition Division notes that the existence of several trade mark registrations is not
per se particularly conclusive, as it does not necessarily reflect the situation in the
market. In other words, on the basis of register data only, it cannot be assumed that
all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include ‘ELECON’.
Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the
Spanish-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 771 085. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
Decision on Opposition No B 2 821 794 page: 7 of 7
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Andrea VALISA Orsola LAMBERTI María Clara
IBÁÑEZ FIORILLO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.