OPPOSITION No B 2 735 986

The Energy House Group S.L., Gran Via Carlos III, 98, Planta 3ª, 08028 Barcelona, Spain (opponent), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Greenfoot Holding BV, Amersfoortsestraatweg 33 B, 1401 CV, Bussum, The Netherlands (applicant).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 986 is partially upheld, namely for the following contested services:

Class 35: Business assistance, management and administrative services; commercial trading and consumer information services; business analysis, research and information services.

Class 39: Distribution by pipeline and cable.

Class 40: Energy production.

2.        European Union trade mark application No 15 326 168 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 326 168. The opposition is based on European Union trade mark registration No 14 336 416 and Spanish trade mark registration No 3 070 199. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 336 416.

1. The goods and services

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

Class 9: Readers (data processing equipment), tape recorders, peripherals adapted for use with computers, computers, printers for computers, computer memory cards, recorded computer programs, electronically downloadable computer software programs, processors, (central processing units); data processing equipment, computer programs, recorded operating system programs (for computers), scientific, nautical, surveying and photographic apparatus and instruments.

Class 35: Business management; business administration; office functions; business, business information; business consultancy, information and organisation services; franchising relating to business management assistance; retailing and sale via global computer networks of computer readers, magnetic tape recorders, computer peripherals, computers, computer printers, computer memory, recorded computer programs, computer programs (electronically downloadable software), processors, central processing units, data processing equipment, computer programs, recorded operating system programs (for computers), scientific, nautical, surveying and photographic apparatus and instruments.

Class 39: Transport, storage, packaging and distribution.

Class 40: Production of energy and leasing of energy generating equipment; generation of electric and hydroelectric power; power generation from renewable energy sources.

Class 42: Science and technology services, and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software; advice, consultancy and information in the field of energy-related matters; developing of integrated energy concepts; energy audits; consultancy in the field of energy-saving; advisory services relating to the use of energy; engineering in the field of the production of energy.

The contested services are the following:

Class 35: Business assistance, management and administrative services; commercial trading and consumer information services; business analysis, research and information services.

Class 36: Financial and monetary services, and banking; fundraising and sponsorship.

Class 39: Distribution by pipeline and cable.

Class 40: 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.

Contested services in Class 35

The contested business management and administrative services; business information services are identically protected by the opponent’s mark (including synonyms).

The contested business assistance services are included in the opponent’s business management. Therefore, they are identical.

The contested commercial trading services are included in the opponent’s business management. Therefore, these services are identical.

The contested consumer information services are included in, or overlap with the opponent’s business information. Therefore, they are identical.

Finally, the contested business analysis, research services are included in the opponent’s business management services and are, therefore, identical.

Contested services in Class 36

The contested financial and monetary services, and banking and investment services are all services related to the management of money and can be provided by a vast range of companies, such as banks, investment funds and credit card companies. The contested fundraising and sponsorship refer to services that aim to raise money for a particular cause or give money, products or services to support a person, an organisation or an activity.

These services have different natures, end users, distribution channels and purposes from the opponent’s goods in Class 9 and services in Classes 35, 39, 40 and 42. They are neither in competition with each other nor are complementary. Moreover, the usual commercial origins of these goods and services are different. Therefore, they are dissimilar.

Contested services in Class 39

The contested distribution by pipeline and cable is included in the broad category of the opponent’s distribution services. Therefore, these services are identical.

Contested services in Class 40

The energy production is identically contained in both lists of services (including synonyms).

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 services found to be identical are directed at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is high, as the relevant services are highly specialized and some of them may also have important financial consequences for their users.

3. The signs

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.

Since the signs are composed of English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both signs share the expression ‘ENERGYHOUSE’ which will be perceived by the English-speaking part of a public as referring to an institution where the energy (power) is produced.  Since the signs share the entire expression, whether or not one of their verbal elements is more distinctive than the other is not an issue in this case. What must be taken into account is that the expression as a whole is laudatory for the services at issue in relation with energy, namely those in Classes 39 and 40. The verbal expression ‘ENERGYHOUSE’ is of average distinctiveness in relation to the services in Class 35.

The earlier mark is a figurative mark consisting of the verbal element ‘energyhouse’ written in standard lower case letters. Although ‘energyhouse’ is depicted as one word, ‘energy’ is in blue whereas ‘house’ is in orange.

The contested sign is a figurative mark consisting of the word ‘ENERGYHOUSE’ written in standard bold upper case letters. The verbal element is preceded by an abstract figurative element resembling angled lines forming a shape of unfinished rectangle.

Since the verbal element and the figurative element are equally prominent and eye-catching, the contested sign has no elements that could be considered clearly more dominant than other elements.

However, 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, in the present case the verbal element has a stronger impact on the overall impression created by the contested sign and the figurative element will be perceived as essentially decorative.

Visually, the signs coincide in the verbal element ‘ENERGYHOUSE’ albeit depicted in different ways as outlined above. The signs differ in the typeface in each sign, the additional figurative element contained in contested sign and the colour combination used in the earlier mark. Nevertheless, the figurative element of the contested sign and the graphic representation of the signs will have less impact in the consumers’ perception, who will give more weight to the verbal elements of the marks.

In view of this and bearing in mind that both signs contain the same verbal element, they are considered visually similar to a high degree.

Aurally, both signs will be pronounced as ‘ENERGYHOUSE’. Therefore, they are aurally identical.

Conceptually, the signs both include the verbal element ‘ENERGYHOUSE’ which will evoke a concept of ‘an institution, where the energy (power) is produced’. The figurative element of the contested sign does not convey any particular meaning. Therefore, the signs are conceptually identical.

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 a part of the services in question, namely the relevant services in Classes 39 and 40. The mark has a normal degree of distinctiveness for the remaining services in Class 35 in relation to which the earlier mark has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

It is noted that the relevant public will still need to rely on its imperfect recollection, notwithstanding its higher than average degree of attention (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.

In the present case, the contested services are partly identical to the opponent’s services and partly dissimilar. The degree of attention of the relevant public is high.

Although the distinctive character of the earlier mark must be taken into account in the assessment of the likelihood of confusion, it is only one factor among others. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, §70).

In the present case, the signs in dispute have been found to be visually similar to high degree and phonetically and conceptually identical.

The differences between the signs are very limited as they are confined to a different stylisation of the verbal elements and the additional figurative element of the contested sign, which are secondary elements in the overall impression produced by the signs for the reasons outlined above.

Taking this into account, the relevant public is therefore likely to believe that the services intended to be provided under the contested sign originated from the same undertaking that provides the relevant services under the earlier mark, or from economically linked undertakings.

Given this, the Opposition Division considers that there is a likelihood of confusion on the part of the English-speaking part of the public, even for consumers with a high degree of attention.

Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 services found to be identical to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

Spanish trade mark registration No 3 070 199 for the figurative mark

 for the following goods and services:

Class 9: Readers (data processing equipment), tape recorders, peripherals adapted for use with computers, computers, printers for computers, computer memory cards, recorded computer programs, electronically downloadable computer software programs, processors, (central processing units); data processing equipment, computer programs, recorded operating system programs (for computers), scientific, nautical, surveying and photographic apparatus and instruments.

Class 35: Business management; business administration; office functions; business; business information; business consultancy, information and organisation services; retailing and sale via global computer networks; franchising relating to business management assistance.

The broader retailing and sale via global computer networks is not similar to the remaining contested services. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the contested services. Furthermore, these services are neither in competition nor necessarily complementary.

Therefore, the outcome of the opposition cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoît VLEMINCQ

Begoña URIARTE VALIENTE

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.