OPPOSITION No B 2 322 041

Enercon GmbH, Dreekamp 5, 26605 Aurich, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Anna-Louisa-Karsch-Str. 2, 10178 Berlin, Germany (professional representative)

a g a i n s t

Emerson Electric Co., 8000 West Florissant Ave., St. Louis, Missouri 63136, United States of America (applicant), represented by J A KEMP, 14 South Square Gray's Inn,

London WC1R 5JJ, United Kingdom (professional representative)

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 322 041 is upheld for all the contested goods, namely

Class 9: Electrical control devices for remote interrogation of wind power plants; electrical control devices for remote control of wind power plants; electrical control devices for remote monitoring of wind power plants; electrical control devices for remote access to wind power plants; electrical control devices for control of wind power plants; electrical controllers; electronic controllers.

2.        European Union trade mark application No 12 226 941 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 226 941, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 3 326 031. 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, inter alia, the following:

Class 9: Electrical connecting parts for electric conduits; aerials; electric transformers, electricity conduits, contacts, breakers, intensity meters, converters and reversing switches; control devices for wind power plants; central control stations for wind farms; electricity conduits; inverters; switch cabinets; switchgear, fire-extinguishing apparatus; components for power stations, hydroelectric power stations, wind power plants, biogas installations, included in class 9; electrolytic devices, in particular for generating hydrogen and oxygen.

The contested goods and services are the following:

Class 9: Electrical control devices for remote interrogation of wind power plants; electrical control devices for remote control of wind power plants; electrical control devices for remote monitoring of wind power plants; electrical control devices for remote access to wind power plants; electrical control devices for control of wind power plants; electrical controllers; electronic controllers.

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 opponent’s control devices for wind power plants include the contested electrical control devices for remote interrogation of wind power plants; electrical control devices for remote control of wind power plants; electrical control devices for remote monitoring of wind power plants; electrical control devices for remote access to wind power plants; electrical control devices for control of wind power plants. It follows that these goods are identical.

The contested electrical controllers; electronic controllers are devices that use electrical signals and digital algorithms to perform its receptive, comparative and corrective functions. They share the same purpose with the opponent’s central control stations for wind farms, where all these functions are centralized. These goods can be manufactured by the same specialized entities and follow the same distribution channels. Consequently, these goods are considered similar.

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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the electricity and energy field. The targeted consumers are, therefore, also e.g. engineers and electricians. It is deemed that the degree of attention paid by the relevant public in relation to the goods at issue may vary from average to high.

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3. The signs

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

Both marks are word marks.

The earlier mark is a word mark ‘ENERCON’ which has no meaning in relation to the relevant goods.  

The contested sign is composed of three words ‘EMERSON NETWORK POWER’. The English consumer may perceive the first element ‘EMERSON’ as a surname but even if that is the case the element has an average degree of distinctiveness in the context of the relevant goods.  The element ‘NETWORK’, however, is descriptive of goods such as ‘central control stations’, taking into account that in a network such control stations will be interconnected. The additional element ‘POWER’ is equally descriptive since it will merely be associated with the capacity or performance of the relevant goods. It is therefore considered that ‘EMERSON’ is the most distinctive element of the contested sign.

Visually, both the earlier mark and the first and most distinctive element of the contested sign consist of seven letters. They coincide in five letters out of those seven and to that extent the signs are similar. They differ in their second letters ‘M/N’ and fifth letters ‘C/S’. Further, they differ in the non-distinctive elements ‘NETWORK POWER’ at the end of the contested sign.

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.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the marks coincides in the letters ‘E*ER*ON’ present identically in both signs. The pronunciation differs in the sound of the letters ‘M/N’ and ‘C/S’. However, it should be mentioned that the consonants ‘M’ and ‘N’ are very close to each other phonetically. The contested sign’s most distinctive and first element ‘EMERSON’ that catches most attention, has the same number of syllables and the same structure as the earlier mark.. The pronunciation further differs in the non-distinctive elements ‘NETWORK POWER’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, according to the opponent the earlier mark will be perceived by the relevant public as ‘ENER’ which denotes ‘energy’ (with which perception the applicant agrees) on the one hand and ‘CON’ which will be understood as ‘connection’ on the other. Based on this assumption there would – according to the opponent – exist a conceptual high similarity between the earlier mark and the elements ‘NETWORK POWER’ of the contested sign.

The Opposition Division is not familiar with ‘ENER’ being a prefix denoting ‘energy’, nor that ‘CON’ would be short for ‘connection’ and there is no proof to support such an argument.

Although the elements ‘NETWORK POWER’ of the contested sign will evoke a concept, as specified above, it is not sufficient to establish a semantic content for the mark as a whole. This is because these elements are descriptive and cannot therefore indicate the commercial origin of the earlier mark and, as such, it cannot influence the outcome of the conceptual comparison in a pertinent manner. The attention of the relevant public will, moreover, be attracted to the first and distinctive element ‘EMERSON’ even if perceived as a surname.

Therefore, the signs are conceptually not similar.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should 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.

The goods covered by the trade marks in dispute have been found partly identical and partly similar.

The marks’ signs are visually and aurally similar to an average degree on account of the similarities existing between the earlier mark ‘ENERCON’ and the first element ‘EMERSON’ of the contested sign. Indeed, these elements, which coincide in five out of seven letters, form the entire earlier mark and the first word of the contested sign. Furthermore, the elements ‘NETWORK POWER’ of the contested sign, placed at the end, will not have as much impact on the relevant consumers as the first element that will be the one used to refer to the sign.

All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.

Considering all the above and also bearing in mind that the earlier mark has a normal degree of distinctiveness and that average consumers rarely have the chance to make a direct comparison between marks, but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public. This is equally true in relation to the goods for which a higher degree of attentiveness can be expected by the relevant consumers, as the similarities between the signs, nonetheless, prevail.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 326 031. It follows that the contested trade mark must be rejected for all the contested goods. As stated above in section b) 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.

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 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.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Plamen IVANOV

Cynthia DEN DEKKER

Ioana MOISESCU

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.