OPPOSITION No B 2 771 882

Hitachi Automotive Systems Espelkamp GmbH, Eugen-Gerstenmaier-Str. 8, 32339 Espelkamp, Germany (opponent), represented by Busse & Busse Patent- Und Rechtsanwälte Partnerschaft mbB, Grosshandelsring 6, 49084 Osnabrück, Germany (professional representative)

a g a i n s t

Hank Electronics Co., Ltd., Floor 2nd-7th A8 Hongye Industry city, Lezhujiao, Zhoushi Road, Baoan District, Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 882 is upheld for all the contested goods.

2.        European Union trade mark application No 15 516 701 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 516 701. The opposition is based on European Union trade mark registration No 7 100 886. The opponent invoked Article 8(1)(a) and (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:        Weighing, measuring, signalling, checking apparatus and instruments; apparatus and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity; electric conveyor pumps for liquids, in particular petrol pumps and in-tank pumps, except vacuum pumps; electric ignition modules and pulse generators for internal combustion engines; electronic and electric switching, control and regulating apparatus and parts thereof, in particular relays, controls for electricity generators and for smaller electric motors, fuses and fuse holders, protectors against overcurrent and overvoltage; apparatus and parts thereof for power supply, power conversion and distribution, in particular parts of current generators, carbon brush holders and slip rings for generators, current and voltage converters, current rectifiers, diodes, electric cables and wires, including ignition cables; electric starters for vehicles, electrical connectors; sensors for measuring, controlling and regulating; electrical and electronic controllers and parts for exhaust gas recycle systems; electrical and electronic tyre pressure checking systems; dynamos for producing direct current and generators for producing alternating current, and parts thereof; electronic engine management systems, including ignition modules and ignition coils; electrical and electronic relays, including all-or-nothing relays, timing devices and clock generators, and components and parts for all the aforesaid goods.

The contested goods are the following:

Class 9:         Computer peripheral devices; pedometers; electro-dynamic apparatus for the remote control of signals; headphones; electric cables and wires; burglar alarms; batteries; camcorders; electric door bells; global positioning system [GPS] apparatus; monitors; plugs, sockets and other contacts [electric connections].

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

The terms ‘in particular’ and ‘including’, used in the opponent’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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 contested pedometers are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested electro-dynamic apparatus for the remote control of signals; burglar alarms; electric door bells; global positioning system [GPS] apparatus are included in the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested electric cables and wires are included in the broad category of the opponent’s apparatus and parts thereof for power supply, power conversion and distribution, in particular […] electric cables and wires, including ignition cables. Therefore, they are identical.

The contested batteries; plugs, sockets and other contacts [electric connections] are included in the broad category of the opponent’s apparatus and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity. Therefore, they are identical.

Computer peripheral devices are ancillary devices used to input and retrieve information from computers, such as monitors, headphones, etc. Camcorders are a type of apparatus for the recording, transmission or reproduction of sounds and images. The opponent’s signalling apparatus and instruments and components and parts for all the aforesaid goods include a wide range of goods and their components and parts. There is a clear connection between such components and parts and the contested computer peripheral devices, headphones, camcorders and monitors. For example, in aircraft marshalling (signalling between ground personnel at the airport and the pilots), the marshal signals the pilot to keep turning, slow down, shut down the engine, etc., and a helmet with acoustic earmuffs is part of a marshal’s signalling equipment. At some airports, instead of marshals, a visual docking guidance system is used which gives information to a pilot attempting to park an aircraft at an airport stand. These systems are monitored by a central computer, which processes the individual docking position and communicates to other airport systems. Some of the systems use video technology, as video cameras provide situational awareness capability and allow recording, archiving and playback of docking sequences. In rail transport systems, signalling control of train movements to ensure that trains operate safely uses modern signal boxes that contain video display units and monitors. Therefore, the contested computer peripheral devices; headphones; camcorders; monitors coincide with the opponent’s components and parts for signalling apparatus and instruments in their natures and methods of use, and in the fact that they may be produced by the same manufacturers. Therefore, they are 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the frequency of purchase and the price.

3. The signs

HÜCO
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 earlier mark is a word mark, ‘HÜCO’.

The contested sign is a figurative mark consisting of the verbal element ‘HUCO’ depicted in a fairly standard typeface.

The aforementioned verbal elements of both signs have no meaning for the relevant public and are distinctive in relation to the goods at issue.

Taking into account the foregoing, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in three out of four letters, namely in the first letters, ‘H’, and the last two letters, ‘CO’. The second and the only letter in which the signs differ is the letter ‘U’, which includes an umlaut in the earlier sign. Consequently, the only difference between the signs is the umlaut on top of the letter ‘U’ in the earlier mark.

Therefore, the signs are visually highly similar.

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 letter ‘H’ (if it is pronounced) and in the sound of the last two letters, ‘-CO’, present identically in both signs. Part of the relevant public, such as the Spanish-speaking part of the relevant public, will not pronounce the letter ‘H’ at the beginning of both signs.

The part of the relevant public that does not use the umlaut, such as the Spanish-, Polish- or Lithuanian-speaking part of the relevant public, is likely to ignore the umlaut and pronounce the letter ‘U’ identically in both signs. Therefore, for this part of the relevant public the signs are aurally identical.

Another part of the relevant public, such as the German-, Hungarian- or Estonian-speaking part of the relevant public, will recognise the umlaut and will not pronounce the letters ‘Ü’ and ‘U’ identically. However, the sounds of the remaining three letters will be identical and the difference in the pronunciation of the letters ‘U’ and ‘Ü’ is not striking. Therefore, for this part of the relevant public the signs are aurally highly 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The goods are identical or similar to an average degree. They target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high. The distinctiveness of the earlier trade mark is normal.

The signs are visually highly similar. Aurally, they are identical for one part of the relevant public and highly similar for another part of the relevant public.

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.

As stated in the section c) of this decision, the contested sign is depicted in a fairly standard typeface, the signs coincide in three out of four letters and the only difference between the signs lies in the second letter, which will be perceived by the relevant public as either a different letter or the same letter, ‘U’, with or without an umlaut. In any case, this is the only difference between the signs so overall the signs are so highly similar that even business customers with specific professional knowledge or expertise and a high degree of attention could confuse them.

Considering all the above and due to the high degree of visual similarity and the aural identity or high degree of aural similarity between the signs and the identity or similarity between the goods, a likelihood of confusion exists.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 100 886. It follows that the contested trade mark must be rejected for all the contested goods.

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 ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Michaela SIMANDLOVA

Biruté SATAITE-GONZALEZ

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.

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.