OPPOSITION DIVISION
OPPOSITION No B 2 691 429
Testo AG, Testo-Str. 1, 79853 Lenzkirch, Germany (opponent), represented by
Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098
Freiburg i. Br., Germany (professional representative)
a g a i n s t
Inpro, Research and Development, S.L., C/ Invierno 4-6, 28500 Arganda Del Rey,
Spain (applicant), represented by Marco & Asociados Patentes y Marcas, S.L., C/
Carpinteros, 6 Planta 2ª, Oficina 35 (Parque Empresarial Pinares Llanos), 28670
Villaviciosa de Odon (Madrid), Spain (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 691 429 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 776 074 for the figurative mark
, namely against all the goods in Class 9 and
some of the services in Class 35. The opposition is based on the following earlier
rights:
Decision on Opposition No B 2 691 429 page: 2 of 8
– International trade mark registration No 1 174 171 for the figurative mark
, designating Austria, Benelux, Bulgaria,
Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France,
Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Romania,
Slovakia, Slovenia, Spain, Sweden and United Kingdom, registered for goods
in Class 9.
– German trade mark registration No 302 013 019 830 for the figurative mark
and registered for goods in Class 9.
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.
a) The goods and services
The goods on which the opposition is based are the following:
International trade mark registration No 1 174 171 designating Austria, Benelux,
Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France,
Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Romania,
Slovakia, Slovenia, Spain, Sweden and United Kingdom
Decision on Opposition No B 2 691 429 page: 3 of 8
Class 9: Scientific, surveying, photographic, cinematographic, optical, weighing,
measuring, signaling, checking (supervision), life-saving and teaching apparatus and
instruments; electronic measuring apparatus and sensors, in particular measuring
apparatus and sensors for measuring and monitoring physical and chemical
variables, including speed of rotation, air speed, light intensity, noise, pressure,
temperature, and gas properties, including moisture, indoor air quality; imaging
measuring apparatus and sensors, thermal cameras; electronic measuring apparatus
and sensors for recording biological variables, in particular for biotechnological
metrology; accessories for electronic measuring apparatus, in particular testing,
measuring and monitoring devices for electronic measuring apparatus; electronic
controlling and regulating instruments; calibration devices for calibrating measuring
apparatus and sensors; computer software, in particular for calibration, adjustment,
validation and qualification of electronic measuring, controlling and regulating
apparatus and sensors.
German trade mark registration No 302 013 019 830
Class 9: Scientific, surveying, photographic, cinematographic, optical, weighing,
measuring, signaling, checking (supervision), life-saving and teaching apparatus and
instruments; electronic measuring apparatus and sensors, in particular measuring
apparatus and sensors for measuring and monitoring physical and chemical
variables, including speed of rotation, air speed, light intensity, noise, pressure,
temperature, and gas properties, including moisture, indoor air quality; imaging
measuring apparatus and sensors, thermal cameras; electronic measuring apparatus
and sensors for recording biological variables, in particular for biotechnological
metrology; accessories for electronic measuring apparatus, in particular testing,
measuring and monitoring devices for electronic measuring apparatus; electronic
controlling and regulating instruments; calibration devices for calibrating measuring
apparatus and sensors; computer software, in particular for calibration, adjustment,
validation and qualification of electronic measuring, controlling and regulating
apparatus and sensors.
The applicant’s list of goods and services was limited on 17/11/2016.
The contested goods and services are the following:
Class 9: Metering instruments; temperature controlling instruments (pyrostats); liquid
level regulators and switches; pressure switches (presostats); electrical and
electronic apparatus and instruments and devices (included in Class 9) for controlling
pressure, pressure measuring apparatus, floatation switches for electrically
disconnecting pumps, motors and engines; regulation and pressure devices.
Class 35: Export, import, retailing in shops, wholesaling and/or sale via global
computer networks of counters, temperature-controlling instruments (pyrostats) and
fluid-metering apparatus; export, import, retailing in shops, wholesaling and/or sale
via global computer networks of electrical and electronic apparatus and instruments
and devices for controlling pressure; export, import, retailing in shops, wholesaling
and/or sale via global computer networks of pressure measuring apparatus,
indicators for checking and regulating the level of water and fluids in general.
Some of the contested goods are identical to goods on which the opposition is
based. For reasons of procedural economy, the Opposition Division will not
undertake a full comparison of the goods and services listed above. The examination
of the opposition will proceed as if all the contested goods were identical and all the
contested services were similar to those of the earlier mark.
Decision on Opposition No B 2 691 429 page: 4 of 8
b) 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 assumed to be identical in Class 9 are
directed at the public at large and at business customers with specific knowledge or
expertise in the IT field. The degree of attention will be average.
In the present case, the services in Class 35 assumed to be similar are directed at
the public at large and at business customers. The degree of attention will be
average.
c) The signs
Earlier trade marks Contested sign
As the earlier marks are identical, they will be treated as one mark.
The relevant territories are Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech
Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland,
Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain,
Sweden and United Kingdom.
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 circle containing different shades of orange, depicted on a
barely noticeable grey background. As the Court made clear in its judgment of
24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, ‘earlier registered trade
marks are presumed to have at least a minimum degree of inherent distinctiveness’,
it has to be considered that despite its banal shape and colour, the earlier mark is not
non-distinctive but has a weak distinctive character.
The contested sign is a figurative mark containing verbal and figurative elements.
The verbal elements, displayed on the right, are the words ‘INPRO’ at the top and
Decision on Opposition No B 2 691 429 page: 5 of 8
‘research & development’ at the bottom. The figurative elements, depicted on the left,
consist of an orange circle surrounded by a greenish blue S-shaped pattern. These
figurative elements have no meaning in relation to the contested goods and services
and are distinctive to an average degree.
The word ‘INPRO’ has no meaning for the relevant public. Nevertheless, the words
‘IN’ and ‘PRO’ are meaningful for at least a part of the relevant public, at least
because they are basic English words. ‘IN’ is a preposition expressing the situation of
something that is or appears to be enclosed or surrounded by something else while
‘PRO’ refers either to a professional, or is an adverb meaning in favour of.
In the present case, it should be noted that the element ‘INPRO’ has an average
degree of distinctiveness in relation to the earlier goods, inasmuch as in the scenario
where the relevant public will break the word down, the signs have no meaning in
relation to the goods, whereas in the scenario where ‘INPRO’ is perceived as a
whole, this element will be considered fanciful.
The words, ‘research & development’ are English words that will be understood by a
vast majority of the relevant public. It is settled case-law that a very large proportion
of European consumers and professionals have an elementary knowledge of English
(26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 41). Moreover, IT professionals
and scientists are generally considered to be more familiar with the use of technical
and basic English vocabulary than the average consumer, irrespective of territory
(judgments of 27/11/2007, T-434/05, Activy Media Gateway, EU:T:2007:359, § 38, 48
for the IT field (C-57/08 P dismissed)).
The word ‘research’ will be understood as the work involving studying something and
trying to discover about it. On the other hand, the word ‘development’ will be
understood as referring to the growth of something such as a business or an industry.
Therefore, both words are rather weak or even non distinctive in relation to most of
the contested goods and services as they will be perceived as describing their
purposes.
Taken as a whole, ‘research & development’ will be perceived by, at least, the
French- (because it is highly equivalent to the French expression ‘recherche et
développement’) and the English-speaking parts of the public as describing the part
of a commercial company’s activity concerned with applying the results of scientific
research to develop new products and improve existing ones. To that extent, this
expression is non distinctive in relation to most of the goods and services at issue.
In addition, account should also be taken of the fact that a residual part of the public
will not understand these words. In this scenario, ‘research & development’ has an
average degree of distinctiveness.
The opponent pointed out that the relevant public will perceive the elements ‘INPRO,
RESEARCH & DEVELOPMENT’ as a company name, and that this supposed
company name will be disregarded. The Opposition Division disagrees and considers
that the word ‘INPRO’ will be perceived as a mark and not as a company name.
Because of its position and its size, the word ‘INPRO’ is displayed to catch the
consumer’s attention whereas in principle, the company name is secondary.
Given their size, the word ‘INPRO’ and the figurative element are the dominant
elements of the contested sign.
Visually, the signs coincide in the fact that they contain an orange circle.
Nevertheless, they differ in all the additional elements of the contested mark, namely
Decision on Opposition No B 2 691 429 page: 6 of 8
the S-shaped pattern and the verbal elements ‘INPRO’ and ‘RESEARCH &
DEVELOPMENT’.
The contested sign is composed of both verbal and figurative elements. In such
cases, 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).
The element ‘RESEARCH & DEVELOPMENT’ has a lower importance, because it is
both non distinctive (for at least a vast majority of the relevant public and for a vast
majority of the goods and services) and the less eye-catching element in the
contested mark. Furthermore, for the residual part of the relevant public, this element
is meaningless and has a normal level of distinctiveness, which increases the
differences between the signs.
For the reasons explained above, and given that the marks only coincide in an
element that is of less significance in the contested mark, the signs are visually
similar to a low degree.
Aurally, it has to be noted that purely figurative signs are not subject to a phonetic
assessment. As one of the signs is purely figurative, it is not possible to compare
them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The marks coincide in the concept of the orange
circle. This element has a fairly limited capacity to indicate the commercial origin of
the relevant goods and services. Therefore, the presence in both marks of this
element generates, at most, a low degree of conceptual similarity.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. Considering what has been stated above in section c) of this
decision, the distinctiveness of the earlier mark must be seen as low for all the goods
in question, namely all the goods in Class 9, given that the mark consists of a rather
banal orange circle and such shapes are commonly found in commerce (in
advertising, in decorative elements surrounding trade names and trade marks, etc.).
e) Global assessment, other arguments and conclusion
Decision on Opposition No B 2 691 429 page: 7 of 8
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).
In the present case, the signs have been found visually and conceptually similar to a
low degree (at most as regards the conceptual comparison), while it is not possible to
compare them aurally.
The Opposition Division has assumed that the contested goods are identical and the
contested services are similar to those of the earlier mark.
The determination of the capability of a trade mark to act as a business identifier in
trade is indispensable for the assessment of likelihood of confusion. In fact, the Court
of Justice has established that trade marks with a highly distinctive character, either
per se or because of the reputation they possess on the market, enjoy broader
protection than marks with a less distinctive character (04/02/2014, T-604/11 &
T-292/12, Magnext, EU:T:2014:56, §.34). It follows, ad argumentum e contrario, that
trade marks, or their elements, with low or no distinctive character have low or no
protection.
In the present case, the marks coincide in an element that will be not kept in mind in
the contested mark, namely the orange circle, given that the relevant public will
consider this element as being essentially ornamental and not as an indicator of
commercial origin. To that extent, the consumer’s attention will focus on other
elements of the sign, in particular on ‘INPRO’ while the orange circle will be lost in an
array of less significant elements. For these reasons, the reference to Thomson Life-
jurisprudence cannot apply, because despite the opponent’s assertions, the element
‘INPRO’ will not be considered as the name of the company, and because the similar
orange circle has a minor position in the contested mark
Considering all the above, even assuming that the goods and services are identical
or similar there is no likelihood of confusion on the part of the public. Therefore, the
opposition must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
Decision on Opposition No B 2 691 429 page: 8 of 8
The Opposition Division
Gueorgui IVANOV Patricia LOPEZ
FERNANDEZ DE
CORRES
Denitza STOYANOVA-
VALCHANOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.