OPPOSITION No B 2 655 598

Tecnatom S.A., Avda. Montes de Oca, 1, 28700 San Sebastián de los Reyes (Madrid), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Pall Corporation, 25 Harbor Park Drive, Port Washington, New York 11050, United States of America (applicant), represented by Hoeger Stellrecht & Partner Patentanwälte mbB, Uhlandstr. 14c, 70182 Stuttgart, Germany (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 598 is partially upheld, namely for the following contested goods:

Class 9:

Filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for laboratory purposes, especially for the semiconductor, electronic and chemical industry.

2.        European Union trade mark application No 14 693 981 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 693 981, namely against all the goods in Classes 7, 9 and 11. The opposition is based on Spanish trade mark registration No 3 056 918. 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 and services

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

Class 9:

Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, electronic robot control apparatus, lasers for industrial use, reference gages, interface software, user’s graphic interface software, software for data processing for graphic representation, electronic visual representation units, communication interface units, control segment and system integration software, data processing equipment, computers and peripherals for computers.

Class 42:

Services rendered by engineers, architects, physicists, chemists, computer experts and draftsmen all of them related to inspections, testing, safety, availability, economic effectiveness and structural integrity of all types of aeronautic, electric and industrial installations, scientific and technological services, technical project study services, scientific and technological research services, analysis, industrial research and development of new products, quality control services and software production services and computer programming.

The contested goods are the following:

Class 7:	Filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for industrial purposes, especially for the semiconductor, electronic and chemical industry; filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for photoresist dispense systems.
Class 9:	Filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for laboratory purposes, especially for the semiconductor, electronic and chemical industry.
Class 11:	Filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for industrial use; filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for photoresist materials.

An interpretation of the wording of the list of goods is required to determine their scope of protection.

The terms ‘including’ and ‘especially’, used in the applicant’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Since the contested filters (including membrane filters), and filter apparatuses for laboratory purposes, especially for the semiconductor, electronic and chemical industry are classified in Class 9, they include filtering units for laboratory use or laboratory filters. As a result, they are encompassed in the broad category of, or overlap with, the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested filter elements and filter cartridges for laboratory purposes, especially for the semiconductor, electronic and chemical industry are parts and components for laboratory apparatus and instruments. These technical components are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts. Moreover, the target public may also expect such parts and fittings to be produced by, or under the control of, the ‘original’ manufacturer. Therefore, the contested filter elements and filter cartridges for laboratory purposes, especially for the semiconductor, electronic and chemical industry are similar to the opponent’s scientific apparatus and instruments.

The applicant claims that the earlier mark is used for completely different fields of goods and services, which have nothing to do with filters, filtration apparatus and filtration services. With regard to this argument, the Opposition Division takes into account the wording of the list of goods and services, from which it is not apparent that the parties operate in different fields as regards the goods in Class 9 that have been found to be identical or similar. In view of the above, this argument of the applicant must be set aside as groundless.

Contested goods in Classes 7 and 11

Class 7 of the Nice Classification encompasses primarily power-driven machines and machine tools, parts of those machines, motors and engines, and parts of motors and engines. Given this, the contested filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for industrial purposes, especially for the semiconductor, electronic and chemical industry; filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for photoresist dispense systems are to be understood as filters or filter components or parts for those machines, motors and engines.

Class 11 of the Nice Classification encompasses primarily apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Given this, the contested filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for industrial use; filters (including membrane filters), filter elements, filter cartridges and filter apparatuses for photoresist materials are to be understood as filters or filter components or parts for those apparatus for environmental control.

The opponent’s goods belong to Class 9 and include apparatus and instruments for scientific or research purposes, information technology and audiovisual equipment, computers and data processing equipment, and software.

Therefore, the contested goods in Classes 7 and 11 have a different nature, purpose and method of use from the opponent’s goods, are clearly not in competition or complementary, and do not come from the same producers. Moreover, they target different publics and are commercialised via different channels or outlets. Therefore, they are dissimilar to all the opponent’s goods.

The opponent’s services in Class 42 are mainly scientific and technological services and also include study, quality control, programming and software development services.

First, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case given that the opponent’s services do not actually concern filters for machines, engines or motors. The goods and services have different natures, purposes and methods of use. They are clearly not in competition or complementary, and do not come from the same producers or providers. They target very different publics and are offered or commercialised via different channels. Therefore, the contested goods in Classes 7 and 11 are dissimilar also to all the opponent’s services.

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 or similar are specialised goods directed at business customers with specific professional knowledge or expertise working in the field(s) of scientific or medical analysis and/or research, such as laboratory technicians or staff.

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

	FALCON
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 a figurative mark consisting of the verbal elements ‘FALCOM’ followed by a hyphen and ‘3D’, all in standard white upper case letters inside a purple rectangular background with rounded corners. Below it, the verbal element ‘Laser Teaching’ is depicted in standard purple title case italic letters.

The element ‘Laser’ of the earlier mark exists as such in Spanish and will be understood as an electronic device that, based on an induced emission, amplifies in an extraordinary way a coherent and monochromatic light beam, or as the beam of light emitted by a laser device (information extracted from RAE Dictionary on 05/05/2017 at http://dle.rae.es). Bearing in mind that the relevant goods are scientific apparatus and instruments, this element is weak for all the relevant goods, as it can be understood as referring to the underlying technology used by the goods for their inner working.

The element ‘3D’ will be understood as referring to a three-dimensional effect or three dimensions. Bearing in mind that the relevant goods are scientific apparatus and instruments, this element is also weak for all those goods, as it can be understood as relating to the purpose (e.g. to measure or display in three dimensions) or function/capabilities (e.g. that works in such a mode, considering three dimensions) of the goods.

The elements ‘Falcom’ and ‘Teaching’ of the earlier mark have no meaning for the relevant public and are, therefore, distinctive.

The applicant argues that the word ‘FALCON’ will be clearly understood as the name of a bird of prey even by the Spanish public. The Opposition Division, however, does not agree, as, although a variant of this this word, namely ‘FALCÓN’ (with an accent on the letter ‘O’), exists in Spanish to denote a specific kind of cannon of the ancient artillery (information extracted from RAE Dictionary on 05/05/2017 at http://dle.rae.es), in this same source it is also indicated that it was indeed used in the past to refer to the bird of prey known as ‘HALCÓN’ in modern Spanish, but that it has fallen into disuse. Moreover ‘FALCON’ is not a common English word. In the light of all this, this argument of the applicant must also be regarded as unfounded.

The contested word mark ‘FALCON’ has no meaning for the relevant public and is, therefore, distinctive.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, almost the entire contested sign coincides with the letters of the first element of the earlier mark; that is, they coincide in the letters ‘FALCO*’. They differ in their final letter, ‘M’ in the first element of the earlier mark and ‘N’ in the contested sign, but these differing letters are very similar visually. The signs also differ in the stylisation (background and colours) of the earlier mark, its additional weak verbal elements ‘3D’ and ‘Laser’ and its distinctive element ‘Teaching’.

It is important to consider the fact that the contested sign is almost fully included in the beginning of the earlier mark, where consumers generally tend to focus their attention 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 signs coincides in the sound of the letters /FALCO/, present identically in both signs. The pronunciation differs in the sound of the final letter /M/ in the first element of the earlier mark and /N/ in the contested sign; these differing letters are, however, also very similar phonetically. The signs also differ in the sound of the elements /3D/ (pronounced ‘tres-de’ in Spanish) and /Laser Teaching/ of the earlier mark, which have no counterparts in the contested sign.

Again, because almost the entire contested sign is included in the element at the beginning of the earlier mark, which is also distinctive, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘3D’ and ‘Laser’, included in the earlier mark, will be associated with the meanings explained above. The contested sign has no meaning in that territory and therefore, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the impact of the differing elements is reduced because of their weak distinctive character.

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, despite the presence of some elements with a lower than average degree of distinctiveness as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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).

Some of the goods in Class 9 are identical and the others are similar. The goods in Classes 7 and 11 are dissimilar. The degree of attention may vary from average to high.

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). Therefore, despite the obvious differences between the signs, a likelihood of confusion still exists, as the coinciding element makes up almost the entire contested sign, is included at the beginning of the earlier mark and plays an independent distinctive role in both signs, while the differences mainly result from weak elements. This renders the signs visually and aurally similar to an average degree. Conceptually, the signs are not similar and, furthermore, the impact of the differing elements will be reduced because the components with a meaning are also weak.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘FALCON’. In support of its argument the applicant refers to several trade mark registrations in Spain and 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 data concerning a register 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 ‘FALCON’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also claims that the contested mark enjoys seniorities dating back to 1995 and 1996 in numerous European countries and that it has been used on the EU market for a long time prior to the filing of the earlier mark used as the basis for the current opposition. However, it should be noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and that the EUTM has to be examined from that date onwards with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s application. Therefore, the applicant’s contentions in this regard are dismissed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.