OPPOSITION No B 2 707 522
J.H. Fenner & Co. Limited, Hesslewood Country Office Park, Ferriby Road, Hessle, East Yorkshire, East Yorkshire HU13 0PW, United Kingdom (opponent), represented by WP Thompson, 8th Floor No. 1 Mann Island, Liverpool L3 1BP, United Kingdom (professional representative)
a g a i n s t
I-BELT S.r.l., Via Cacace 8, 30030 Maerne Di Martellago, Italy (applicant), represented by Stefano Pajola, Eureka IP Consulting, Via Monte Cengio 32, 36100 Vicenza, Italy (professional representative).
On 31/03/2017, the Opposition Division takes the following
1. Opposition No B 2 707 522 is upheld for all the contested goods.
2. European Union trade mark application No 15 054 299 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 054 299. The opposition is based on European Union trade mark registration No 12 681 854. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 7: Belts and belting; conveying apparatus and parts thereof.
Class 9: Computer software for use in the management and monitoring of conveyor belts and conveying systems; material downloaded electronically for use in the management and monitoring of conveyor belts and conveyor systems; devices for reading, recording, storing and transmitting electronically stored data; apparatus for use in computerised stock control; apparatus for use in electronic inventory keeping.
Class 35: Assisting business in the management and monitoring of conveyor belts and conveyor systems; electronic data storage services (not physical); stock control services relating to conveyor belts and conveying apparatus; maintaining inventory and stock control databases; computerised inventory control services; maintaining and administering a database for storing data on conveyor belts; maintaining a database for keeping an inventory of plant and machinery (including conveyor belts).
The contested goods are the following:
Class 7: Belt conveyors; Belts for machines; Drive belts for machines; Transmission belts for industrial applications; Belts for motors and engines; Belt pulleys being parts of machines.
Contested goods in Class 7
The contested Belt conveyors are included in the broad category of the opponent’s conveying apparatus. Therefore, they are identical.
The contested Belts for machines; Drive belts for machines; Transmission belts for industrial applications; Belts for motors and engines are included in the broad category of the opponent’s Belts and belting. Therefore, they are identical.
The contested Belt pulleys being parts of machines are overlapping with the opponent’s parts thereof (conveying apparatus). Therefore, they are identical.
- 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 are primarily directed at business customers with specific professional knowledge or expertise, even if the relevant goods can include goods that are even directed at the public at large, as for example the contested drive belts for machines include inter alia drive belts for washing and laundering machines. The degree of attention may vary from average to higher than average depending on the price and on the safety considerations relating to the goods.
- 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 a figurative mark consisting of the verbal element ‘iBelt’ in a black bold italic slightly fanciful font.
The contested mark is a figurative mark consisting of the verbal element ‘i-belt’. The letter ‘i’ is depicted in a green bold typeface, the rest of the element is depicted in a grey slightly fanciful font.
The prefix ‘i’ has come to be perceived as a reference to the ‘internet’, as an ever more popular means of (electronic) communication by the relevant part of the public. It has become so prevalent that it will be perceived as a reference to the internet even if the word following the ‘i’, has no meaning or, such as ‘belt’, is not normally used in this context and therefore must considered being weaker than average as the relevant goods can potentially be purchased over the internet.
The word ‘belt’ preceding the prefix ‘i’ will be perceived independently by the relevant part of the public.
As concerns the goods in question, it cannot be excluded that the identical ending of the marks ‘BELT’ will be understood by a part of the professional public. For those it is devoid of any distinctiveness because it merely designates the goods themselves (belts, conveyors).
However, the greater part of the relevant professional public will not have a sufficiently high level of English to understand the meaning of the word ‘BELT’. Therefore the word ’belt’ cannot be considered weak in relation to the relevant goods.
According to the case law, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, considering that the similarities between the signs will be higher to the extent that a significant part of the public does not perceive any meaning in the term ‘belt’ (and it is distinctive), for reasons of economy of proceedings the Opposition Division will focus its examination on this part of the public.
Considering all the above, the signs’ element ‘belt’ is more distinctive than the signs’ prefix ‘i’. The signs do not have an element that could be considered be more dominant (visually eye-catching) than others.
Visually, the signs coincide in the letters ‘i’ and the letters ‘BELT’. They differ in the hyphen of the verbal element ‘i-belt’ of the contested sign and the typefaces, which have no counterpart in the other sign.
Therefore, the signs are at least similar to an average degree..
Aurally, they are identical as the hyphen does not influence the pronunciation of the signs.
Conceptually, the signs are identical as they coincide the concept of the prefix ‘i’, as described above.
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.
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 a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested goods are identical to the opponent’s goods. The similarity between the signs results from the fact that they coincide in all letters.
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). 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).
Bearing in mind that the signs have been found to be visually similar at least to an average degree and that they are aurally identical and that the goods found to be identical, it is likely that the relevant public would perceive them as coming from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the relevant general public in relation to all the contested goods.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 681 854. 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 application must be rejected in its entirety.
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
André Gerd Günther BOSSE
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.