OPPOSITION No B 2 617 879
General Electric Company, 1 River Road, Schenectady, New York 12345, United States of America (opponent), represented by Studio Professionale Associato a Baker & McKenzie, Piazza Filippo Meda, 3, 20121 Milano, Italy (professional representative)
a g a i n s t
Gruppo Energia S.r.l., Via Cavezzo 36, 25045 Castegnato – BS, Italy (applicant), represented by Andrea Maria Mazzaro, Via Sant’Andrea n. 7, 20121 Milano, Italy (professional representative).
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 617 879 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 430 409 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 430 409. The opposition is based on, inter alia, European Union trade mark registration No 5 920 781, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to other earlier rights, the opponent also invoked Article 8(2)(c) in conjunction with 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 5 920 781.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Fuel pumps for service stations for fueling airplane engines; fuel distribution equipment, namely, metered fuel pumps, electrical fuel level gauges, control valves for regulating the flow of gases and fuel lines; automated fuel station management systems comprising computer operating software, metered fuel pumps, rate control panels, fuel lines and dispensing nozzles for fueling land and marine vehicles and marine vehicles and aircraft; gas meters; on-board and wayside signaling and communication systems, train inspection systems, cross warning systems, swithmachines; GPS – based tracking and monitoring systems for the railroad and transit industries; electrical devices and electrical power distribution products, namely, capacitors, circuit breakers, circuit breaker load centers, circuit closers, circuit interrupters, commutators, contactors, current rectifiers, current limiters, electric contacts, electric collectors, electric conductors, electric connectors, electric controllers, electric inductors, electric power supplies, electricity distribution boards and boxes, electricity distribution consoles, electricity switchboards and switchboxes; computer software for persons who troubleshoot and maintain programmable controllers, computer software for analyzing blood vessels including cardiac vessels which also provides calculation functions with respect to blood vessels, computer software for use with medical patient monitoring equipment, computer software for receiving, processing, transmitting and displaying data, computer software for use in developing personalized asset allocation programs; computer software for use on-line which enables office equipment dealers to submit applications, manage portfolios and communicate with the company; computer software for use in accessing mortgage and insurance information, computer software for collecting data involving vital medical signs, computer software for use in electrical power systems analyses and instructional manual in electronic format sold as a unit therewith, computer software for use by employees for financial institutions for determining financial investments for clients and in processing the sale of the identified investments, computer software for obtaining information on the flood-hazard status of real property, computer software for the development of graphical user interfaces and data visualization, computer software for use in the calculation of mortgage payments, computer software for regulating and managing vehicle fleet maintenance services, computer software for use in connection with accessing and utilizing commercial computer services, computer software for use by customers to obtain lease portfolio information, computer software for a radiology information system for use by radiologists and radiology departments, computer software for use in the database management of employee and patient information for patient monitoring and archival purposes, computer software installed on and used in connection with PC’s and medical monitoring equipment for graphical user interface, computer software for use in sending encrypted and compressed data mover paging carrier systems, computer software for providing access to websites where buyers and sellers can conduct business electronically, and computer software for underground navigation namely for navigation of down hole probe assembly for oil drilling and drilling assemblies for routing underground utilities; electronic, nuclear, industrial and laboratory testing, measuring, computing and control instruments and apparatus, telephones; electrical goods, electrical power generation and distribution products and electrical voltage and overvoltage surge products, namely, arresters, busways; capacitors; lighting contactors; controllers and input/output devices; fuses; lighting controls; switch boxes, LEDs, namely, light emitting diodes, voltage regulators for electric power, voltage surge protectors, voltage surge suppressors, voltmeters, electrical circuit boards, relays and timers, solenoids and limit switches, full-voltage manual starters, reduced voltage starters, electrical switches and disconnects, circuit board terminal blocks and pumping panels, circuit breakers and disconnects, transformers, electrical lighting and power circuit boards, electrical wires, cables, cords, and conductors, electrical wiring and fixtures, lightning arrestors, electricity meters, power meters, grounding resistors, humidity and temperature sensors; building and wood sensors; industrial calibration sensors, push buttons, motor control centers, electrical resistance heating wires and electrical controllers therefore and voltage regulators in International; software and software programs for industrial, research, and medical use; apparatus for electrophoresis; chromatography columns and pumps; apparatus for microfabrication; apparatus for bioinformatics systems; apparatus for scintillation; imaging apparatus for radioactive and luminescent emissions; synthesis and purification integrated systems; apparatus manufacturing oligonucleotides; apparatus for microarrays; laser based optical systems for digital imaging; microarray slides; laboratory glassware; vials and microvials; microtitre plates; computer software for hospital operating room management; computer software for critical care information management; industrial process control software; computer software programs and program manuals sold as a unit for use in factory management; graphical user interface based computer programs for controlling machines in industrial automation applications; software for creating graphics displays and editing dynamic data interfaces for realtime graphics applications for industrial and business applications; communications software for connecting computer network users; software for plastic injection molding; software for control, monitoring, simulation, communications, data logging and collection, and factory automation; software to integrate manufacturing machine operations, control processes, provide data for visualization, track problems and generate production reports; packaged software for use in the operation and programming of grinding machines in the manufacturing industry; industrial process control hardware, namely, computer monitors; laptop computers, ethernet cards and cables; computer networking hardware, memory cards; microchips; microprocessors; computer network hubs, switches and routers, computer accessories, display devices and terminals; computer whiteboards; system boards and processors; call control, operator interface, gage interfaces and data collectors; control and manufacturing applications, namely, statistical process control, data collection, distributed numerical control; manufacturing execution systems and document management; digital signal processing products and systems, namely industrial automation controls and programmable logic controllers; machine tools, namely, an adaptive control product in the nature of an external controller to optimize machine tool cutting performance of rough and semi-rough cuts; distributed and remote input/output hardware devices, input/output modules, interface modules, power supplies and mounting hardware; intrusion and burglar alarm systems; security devices, namely, programming logic computers, control panels, electronic intrusion detectors, electronic glassbreak sensors, electronic vibration sensors, magnetic contacts for use in security systems, electronic switch plates, electronic motion sensors for alarm systems, electronic motion sensitive switches, hardwire sirens, audio speakers, electronic drivers, access control and alarm monitoring systems; fire, heat and smoke detecting and alarm units; computer card operated access control systems; card readers, card encoders, and encoded cards for use with card operated access control systems; video cameras; video object recognizers; video object trackers; video license plate readers; video alarm verifiers; video face recognizers; video vehicle recognizers; video traffic detectors; video access door controllers; video intrusion detectors; processing hardware and software that analyzes digital video images to automatically extract, record and report intelligence, and remote video monitoring systems for security and surveillance applications; central video monitors; video recorders; cameras; closed circuit video systems; closed circuit video system comprising one or more cameras, and a camera housing; short range, wireless, radio frequency transceivers; power line transceivers; communication control hardware for operating closed circuit camera; communication control hardware, namely keypad controllers, matrix switchers, multiplexers, digital video recorders, integrated pan-tilt-zoom domes, remote video controllers, receivers, electronic alarm, management controls and triggers, and video transmission devices sold separately or as part of a system for operating closed circuit cameras; personal digital assistant devices configured for use by real estate professionals; communications interface devices for use with personal digital assistant devices; fiber-optic transmission systems, namely, fiber optic transmitters, receivers and transceivers used in the transmission of video, audio, and data signals over optical fiber; electrical switches; electro mechanical locks; magnetic locks; electric keys; handheld electronic hardware for receiving, controlling, storing, manipulating, displaying and transmitting data and for operating electronic locks; electronic access cards and readers and encoders therefore; magnetic assess cards and readers and encoders therefore; smart access cards and readers and encoders therefore; proximity cards and readers and encoders therefore; key fobs and readers and encoders therefore; bar code access cards and readers, encoders, card lamination apparatus; access keypads; radio frequency tracking tags; tracking and control system comprising one or more radio frequency tags, transceivers, and sensors used to determine and monitor the location and movement of tangible assets, inventory and individuals; infrared sensors; computer hardware and software for facilities management and controlling facility access systems and components therefore, namely, control panels, access card readers, and equipment and systems for video imaging, video monitoring; digital hard drive recording, network transmission and remote access; networked digital video storage servers, access control and surveillance applications alarm monitoring and security; computer software and hardware for controlling and operating security and access system comprising locks, doors, access, and identification; devices and security enclosures in the nature of boxes for securing keys; surveillance equipment sold individually as components or together as a system comprising one or more surveillance cameras, covert cameras, close circuit television cameras, camera housings, camera mounts, camera lenses, video monitors, video recorders, digital recorders, video storage media, video switches, control panels, keypad controllers, joystick controllers, interface apparatus for alarms and access control equipment, transceivers, receivers, transmitters, signal processors, multiplexers, matrix switches, controllers, control panel housing, switch housing, transformers switches, splitters, coaxial cables, connectors, motion detectors, microphones and speakers; computer user interface software and control software for managing security, fire and access systems; electric locks; hand-held electronic computer and communication hardware for receiving, controlling, storing, manipulating, displaying and transmitting data for operating electronic locks; electronic key fobs, readers and encoders; magnetic data carriers; data processing software and computer hardware; power supplies, namely batteries, rectifiers/voltage/current regulators and transformers; control panels – namely, electronic apparatuses adapted to electrically monitor a pre-determined activity and activate a burglar alarm; siren speakers; and electronic siren drivers – namely, tone generators and amplifiers adapted to be used for sirens; computer software to control communication hardware for operating and controlling closed circuit cameras; switch units incorporating magnetically actuated reed switches for use in burglary and fire sensing alarm systems, in industrial position sensing apparatus, in revolution counters, in equipment cabinet safety interlock systems, in industrial position controlling apparatus, in electrical cables and in pump and valve controlling apparatus and home security alarm systems; electrical and electronic checking apparatus for screening individuals, baggage, and cargo for the presence of particular substances; electrical and electronic checking apparatus for screening individuals, baggage, and cargo for the presence of explosives and/or narcotics; apparatus for detecting presence of explosives and other contraband; time or condition sensing apparatus for initiating and controlling regeneration or backwash cycles for water treatment equipment; control valves for water conditioning and water filtration equipment; bioreactors for culturing cells; portable analytical instruments; namely, a probe with a microprocessor based data conversion logger for measurement of organic and inorganic chemicals in water; filters and filter housings for laboratory use; fluid separation apparatus for laboratory use; membrane filters for laboratory use; silt density measuring device; deionization units for laboratory use, filters and filter housings for laboratory use; fluid separation apparatus for laboratory use; membrane for laboratory use; fluid flow control devices, namely, pumps, valves, flow meters and regulators for laboratory use; ozone monitors; laboratory equipment, namely, porous microtiter plates for use in cell biology and other life science applications; electronic water and process treatment controls, namely, apparatus for use in the treatment of commercial and industrial water systems, boiler water systems, cooling water systems, and closed water systems, pulp and paper processing systems, fuel processing systems, and metal processing systems to analyze the chemistry of the system, determine the proper treatment program, apply the desired treatment and monitor the effectiveness of the treatment; computer software for data management in the water treatment and pulp and paper fields; electronic controllers used for processing information in the water treatment and pulp and paper fields; apparatus for use in industrial water systems to measure and control pH and conductivity; apparatus for feeding chemical to an industrial, commercial or municipal water system in measured amounts; electronic test apparatus for use in water treatment; laboratory testing equipment-namely, deposition and corrosion rate testers; mobile laboratory equipped with equipment and instrumentation to monitor and measure pH, conductivity, and chromate concentration of industrial and domestic waters, to conduct inorganic analysis of water and to conduct microbiological testing of water; electronic and electrochemical products, namely, fuel cells; apparatus for converting electronic radiation to electrical energy, namely photovoltaic solar modules, photovoltaic solar hybrid modules, electronical sensors for measuring solar radiation, solar cells; apparatus for converting electronic radiation to electrical energy, namely photovoltaic solar modules, systems, components, and all associated balance of system components.
Class 37: Construction, installation, repair, replacement, overhaul and maintenance of power plants, engines, turbines, wind turbines, motors and apparatus, equipment and instrument for the generation of power and electricity and their component parts, filings and accessories; installation, maintenance and repair services for compressors and pumps, namely machines, turbo expanders, fuel pumps and fuel distribution equipment, CNG refueling equipment, gas turbines, steam turbines, air cooled heat exchangers, steam condensers, heavy wall reactors and tubular reactors; oil and gas pipeline maintenance and repair services; drilling and pumping of oil and gas; drilling for crude oil; oil well casing, tubing and drill pipe installation; rental of oil and gas well drilling tools; remote monitoring and diagnostic repair and maintenance services rendered in the repair and maintenance of aircraft engines, turbines, electrical equipment, medical equipment, locomotives including accessories and component parts of all the foregoing; construction equipment leasing; chemical cleaning services for glass-lined reactor vessels used in the chemical and pharmaceutical processing industries; maintenance services for heat transfer systems and condensers; maintenance and repair services in the field of computerized cooling system equipment, services rendered in the repair and maintenance of machinery, instruments, electrical equipment and appliances; oil and gas maintenance and repair services; drilling and pumping of oil and gas; drilling for crude oil; oil well casing, tubing and drill pipe installation; rental of oil and gas well drilling tools.
Class 42: Services relating to wind and wind power, namely professional consulting services and engineering services; design for others in the field of wind power; industrial design services; design of power, wind power and electric power generating equipment and installations; engineering services, technical consultation and research services in the oil and gas industries; oil and gas exploration services; geophysical exploration for the oil and gas industries; analysis of oil and gas fields; oil and gas prospecting, namely, well logging and testing; oil and gas well testing; oil and gas pipeline inspection; remote monitoring and diagnostic services for compressors, pumps, turboexpanders, fuel pumps and fuel distribution equipment, CNG refueling equipment, gas turbines, steam turbines, air cooled heat exchangers, steam condensers, heavy wall reactors and tubular reactors; information technology solution services in the field of global railroad and transit industries; and computer equipment and medical system leasing; research, consultation, and advisory services relating to engineering, design and development problems encountered by utility, industrial, and commercial companies, governments, and individuals; computer programming services for others; computer software design and analysis services for others; computer consultation services; maintenance and updating of computer software and computer systems for others; installation of computer software; computer systems analysis and design services for others; consultancy services relating to chemical research; consultancy services relating to the discovery and evaluation of drugs and compounds having diagnostic properties; technical support services; consultancy services relating to methods for diagnosis using laser based optical systems; high through put screening assays for drug development services; customer synthesis, analytical and diagnostic services; biotechnological services; technical support services for factory automation software, namely, providing maintenance of computer software and providing periodic upgrades of software; custom design of security access systems; design and consulting services in connection with the configuration of systems used in applications supporting fiber optic technology; technical support services, namely troubleshooting of problems with computer hardware, video and electronic communication hardware, and software; technical consultation services for hardware and software used in connection with security and access systems; technical consultation services for surveillance cameras; custom design services for others in the fields of security systems, access systems, and tangible asset and inventory monitoring systems; laboratory and testing services for fluid separation and membrane testing; engineering and consulting services in the fields of water treatment, aqueous systems, cooling water systems, industrial boiler water systems, industrial water and process systems, industrial fuel processing system treatment, pulp and paper making system treatment, and metal and plastic processing system treatment; engineering services and technical support services related to the design and configuration of computer software and hardware systems to be used in the treatment of aqueous system and in the treatment of pulp and paper making systems, petroleum and petrochemical processing systems, and metal and plastic finishing operations; providing information to others, over a global computer network, relating to industrial water purification systems; advisory services related to all the aforesaid; chemical control system services relating to the feeding of treatment chemicals through industrial water systems.
The contested goods and services are the following:
Class 9: Capacitors; Electric capacitors [for telecommunication apparatus]; power conditioners; capacitors; high voltage capacitors; shunt capacitor condensers, being both single-phase and three-phase; capacitor units for standard automatic re-phasing; capacitor sets for automatic re-phasing with harmonic filters; harmonic filtering systems; reactors for harmonic blocking; power contactors; capacitors for high-voltage direct current; low-inductance capacitors; filter capacitors; snubber capacitors.
Class 37: Installation, repair and maintenance of condensing apparatus; installation, repair and maintenance of steam condensers.
Class 42: Engineering drawing; design planning; design of specialist machinery; designing of electrical systems; engineering services relating to the design of electronic systems.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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
As seen above, the term ‘namely’, used in the opponent’s list of goods and services, is exclusive and restricts the scope of protection only to the specifically listed goods and services. Consequently, the contested capacitors (mentioned twice in the list of contested goods) and the opponent’s electrical devices and electrical power distribution products, namely, capacitors are identical.
Likewise, the contested power contactors, albeit worded slightly differently, are identical to the opponent’s electrical devices and electrical power distribution products, namely, contactors.
The contested electric capacitors [for telecommunication apparatus]; high voltage capacitors; shunt capacitor condensers, being both single-phase and three-phase; capacitor units for standard automatic re-phasing; capacitor sets for automatic re-phasing with harmonic filters; capacitors for high-voltage direct current; low-inductance capacitors; filter capacitors; snubber capacitors are included in the broad category of, or overlap with, the opponent’s electrical devices and electrical power distribution products, namely, capacitors. Therefore, they are identical.
The contested power conditioners are devices intended to improve the quality of the power that is delivered to electrical load equipment. The contested harmonic filtering systems; reactors for harmonic blocking are devices used to minimise voltage and current harmonic distortion within an AC circuit. All of these contested goods are included in the broad category of the opponent’s power supplies, namely rectifiers/voltage/current regulators and transformers. Therefore, they are identical.
Contested services in Class 37
The contested installation, repair and maintenance of steam condensers, albeit worded slightly differently, are identical to the opponent’s installation, maintenance and repair services for compressors and pumps, namely steam condensers.
The contested installation, repair and maintenance of condensing apparatus include, as broader categories, the opponent’s installation, maintenance and repair services for compressors and pumps, namely steam condensers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
Contested services in Class 42
The contested design planning; design of specialist machinery; designing of electrical systems include, as broader categories, or overlap with, the opponent’s design of electric power generating equipment and installations. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested engineering drawing is a specific engineering service that covers a wide range of applications and industries. This service overlaps with the opponent’s engineering services in the oil and gas industries, as both may include engineering drawing in the oil and gas industries. Therefore, they are identical.
The contested engineering services relating to the design of electronic systems are engineering services for the design of systems consisting of a physical interconnection of components, or parts, that gathers various amounts of information together. These services overlap with the opponent’s custom design services for others in the fields of security systems, access systems, and tangible asset and inventory monitoring systems, which are services of designing various electronic systems with specific applications. Both sets of services include services of engineering electronic elements and systems as part of a design process. Therefore, they are identical.
In relation to the applicant’s arguments about the actual use in the market of the trade marks in conflict for different goods and services, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Moreover, it should be noted that, according to Article 42(2) EUTMR, actual use of the earlier mark must be shown — and only be shown — if the applicant requests proof of use. If the applicant does not request proof of use, the issue of genuine use will not be addressed by the Office ex officio. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant.
- 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 and services found to be identical are directed at a specialised public that has a particular interest in and knowledge of the fields of energy and power production. The relevant public’s degree of attention will vary from average to higher than average, depending on the exact nature of these goods and services, their price and their impact on the activities of the consumers in question.
- The signs
Earlier trade mark
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 earlier mark is the word mark ‘GE’.
The contested sign is a figurative mark, containing the words ‘GRUPPO ENERGIA’, written in bold upper case letters over two lines; the initial letters of these words, ‘G’ and ‘E’, are joined together and stand out visually as a separate element, since they are considerably larger than the other letters of the words ‘GRUPPO ENERGIA’. To the left of and below the words ‘GRUPPO ENERGIA’ are three black horizontal lines of different lengths, intersected by black and white lines. Below these elements the words ‘RELIABLE ENERGY’ are depicted in much smaller upper case letters, under which is a slightly curved black line.
The words ‘RELIABLE ENERGY’ in the contested sign are visually negligible, due to their size and position, and are overshadowed by the other elements of the mark.
The letters ‘GE’, constituting the earlier mark, will not be associated with any meaning by the relevant public. Therefore, this element has an average degree of distinctiveness.
The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
As regards the contested sign, the words ‘GRUPPO ENERGIA’ will be perceived by the majority of the relevant public as meaning ‘energy group’, because both words, ‘GRUPPO’ and ‘ENERGIA’, exist or have similar equivalents in the majority of the relevant languages (e.g. ‘gruppo’ and ‘energia’ in Italian, ‘grupo’ and ‘energía’ in Spanish, ‘group’ and ‘energy’ in English, ‘groupe’ and ‘énergie’ in French, ‘Gruppe’ and ‘Energie’ in German, ‘grupa’ and ‘energia’ in Polish, ‘grupė’ and ‘energija’ in Lithuanian’, ‘grupa’ and ‘enerģija’ in Latvian, ‘група’ (transliterated as ‘grupa’) and ‘енергия’ (transliterated as ‘energia’) in Bulgarian, etc.). Even though it cannot be completely ruled out that there may be consumers in the European Union who would not associate either or both of the elements ‘GRUPPO’ and ‘ENERGIA’ with a meaning, the majority of the relevant consumers will perceive the expression ‘GRUPPO ENERGIA’ as referring to ‘an association of companies under a single ownership and common control, consisting of a holding company, subsidiary companies, and sometimes associated companies, operating in the field of energy’.
Taking into account the fact that the relevant goods and services relate to the production of energy or energy sources, it is considered that the expression ‘GRUPPO ENERGIA’ is weak for the relevant goods and services, as it will be perceived as an indication of the undertaking providing the relevant goods and services in the field of energy. Consequently, the impact of this weak element is limited when assessing the similarity between the marks.
The words ‘RELIABLE ENERGY’ in the contested sign are English words, which will be perceived by the English-speaking part of the public with their natural meaning, namely ‘energy/a source of power that is predictable or dependable, that may be relied on’. The expression ‘RELIABLE ENERGY’ will be perceived by the part of the relevant public that understands it as alluding to the fact that the relevant goods and services are intended to provide a source of energy that is safe, reliable and dependable. Therefore, the English-speaking part of the public will perceive this expression as a promotional slogan providing complementary information; its distinctiveness is, to that extent, rather limited.
For the part of the public that is not familiar with the meaning of the English word ‘RELIABLE’, contained in the contested sign, this element will not be associated with any meaning and has an average degree of distinctiveness in relation to the relevant goods and services. This part of the public will perceive only the word ‘energy’ with a meaning, due to its proximity to the corresponding equivalents of that word in the relevant languages. Bearing in mind that the relevant goods and services relate to the production of energy or energy sources, this element is non-distinctive for all of the relevant goods and services. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.
Visually, the signs coincide in the letters ‘GE’, which constitute the entire earlier mark and stand out visually as a separate element in the contested sign due to their size and position. The signs differ in the additional components of the contested sign, such as the additional, smaller, letters ‘*ruppo’ and ‘*nergia’ of the words ‘GRUPPO’ and ‘ENERGIA’, in which the letters ‘G’ and ‘E’ are incorporated, as well as in the additional, visually negligible, words ‘RELIABLE ENERGY’ at the bottom of the mark.
They also differ in the figurative elements of the contested sign. However, although these elements are visually relevant and noticeable, it should be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Consequently, the marks are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘GE’ to the extent that these letters will be pronounced as an abbreviation, namely as [dʒi- iː], because they are the only element of the earlier mark and are depicted visually as an element distinct from the other letters of the words ‘GRUPPO ENERGIA’ in the contested sign. The pronunciation differs in the sound of the words ‘GRUPPO ENERGIA’ in the contested sign to the extent that the public will also pronounce the entire expression, as well as in the pronunciation of the smaller verbal element ‘RELIABLE ENERGY’ in the contested sign, if this element is pronounced. Therefore, considering all the relevant factors and the coincidence in the distinctive element ‘GE’, the signs are aurally similar to a low degree.
Conceptually, the public in the relevant territory will perceive the letters ‘GE’ in the earlier mark as an abbreviation with no specific concept, and the conspicuous letters ‘GE’ in the contested sign as an abbreviation of the words ‘GRUPPO ENERGIA’. These words will be perceived by the vast majority of the relevant public in the European Union as meaningful, as seen above. Furthermore, as discussed above, some parts of the public will understand the additional English words ‘RELIABLE ENERGY’ in the contested sign as a meaningful expression, and the remaining part of the public, which does not understand the word ‘RELIABLE’, will understand only the word ‘ENERGY’ in this expression, namely as ‘a source of power’.
Since one of the signs (i.e. the earlier mark) will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, 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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods and services under comparison are identical. The earlier mark enjoys an average degree of distinctive character, which affords it a normal scope of protection. The signs are visually similar to an average degree and aurally similar to a low degree on account of the letters that they have in common, ‘GE’, which constitute the earlier mark in its entirety and stand out visually as a separate element in the contested sign. The marks differ in the additional verbal and figurative elements of the contested sign. However, as seen above, the verbal elements of the contested sign are of limited distinctiveness and/or have a limited visual impact, and the figurative components of the contested sign have a weaker impact on the consumer than the verbal elements. Consequently, bearing in mind that the coinciding letters ‘GE’ are present as a visually relevant and independent element in the contested sign, consumers may be expected to focus their attention on them.
All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).
Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the differences between the marks are offset by the fact that the contested goods and services are identical to the goods and services covered by the earlier mark.
Considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark, ‘GE’. Therefore, even considering that the degree of attention with regard to the relevant goods and services may be higher than average, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to the identical goods and services.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 920 781. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR.
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
Pedro JURADO MONTEJANO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.