OPPOSITION DIVISION

OPPOSITION No B 2 709 205

Kelvin, S.A., Miguel Yuste, 39, 28037 Madrid, Spain (opponent), represented by

Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036

Barcelona, Spain (professional representative)

a g a i n s t

Kelvin Energy (UK) Limited, 12 Barshaw Business Park, Leycroft Road, Leicester

LE4 1ET, United Kingdom (applicant), represented by Howes Percival LLP, 3 The

Class 9: Automatic time switches; electric capacitors; electric collectors,

electric terminals, electric cables; conduits and wires; battery boxes;

identification sheaths for electric wires and identification threads for electric

wires, conduits, inductors, magnetic media, semiconductors; electronic and

electric apparatus, equipment and instruments for the generation, distribution

and supplying of energy, in particular alternative energy; electrical connectors,

junction sleeves; electric transistors, thyristors, diodes; power semiconductor

components; electric relays; modems; electric conduits; voltage regulators;

sensors; fuses; switchboards; voltmeters; counters, circuit breakers;

highvoltage transmission lines; high-voltage direct current transmission

electricity; limiters, electricity; relays, electric; all of the aforementioned goods

to be used in relation to substations and power projects only.

Class 37: Maintenance, repair, upkeep and installation services, in particular

for industrial and electrical installations; installation, maintenance, repair and

shielding electric apparatus and installations; all of the aforementioned services

to be used in relation to substations and power projects only.

2. European Union trade mark application No 15 061 757 is rejected for all the

above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 061 757 for the figurative mark .

The opposition is based on European Union trade mark registration No 11 355 021

for the figurative mark . 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

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

Class 7: Electric gear motors, Engines and motors and electric reducers being an

integral part of other machines, none of the aforesaid goods being household and

commercial washing machines, Dish washers, Domestic food waste disposal units

and Trash compactors, Refrigeration compressors, Can openers, electric, Food

mixers, Food processors, Knives, electric, Meat slicers, Ice crushers, juice extractors,

pasta makers.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,

weighing, measuring, signalling, checking (supervision), life-saving and teaching

apparatus and instruments; Apparatus and instruments for conducting, switching,

magnetic media, semiconductors; electronic and electric apparatus, equipment and

instruments for the generation, distribution and supplying of energy, in particular

alternative energy; electrical connectors, junction sleeves; electric transistors,

thyristors, diodes; power semiconductor components; electric relays; modems;

electric conduits; voltage regulators; sensors; fuses; switchboards; voltmeters;

counters, circuit breakers; highvoltage transmission lines; high-voltage direct current

transmission installations; power cables; distribution transformers; power distribution

products, in particular mediumvoltage switch gear and equipment and integrated

hardware systems; circuit breakers; sockets; solar cells; anticathodes; batteries,

electric; battery chargers; cathodes; commutators; conductors, electric; control

panels, electricity; converters, electric; electromagnetic coils; grids for batteries;

inverters, electricity; junction boxes, electricity; limiters, electricity; relays, electric; all

of the aforementioned goods to be used in relation to substations and power projects

projects; construction consultation; all of the aforementioned services to be used in

relation to substations and power projects only.

Class 42: Design management; engineering management; energy studies;

environmental assessments; advanced engineering services; architectural design

services; civil engineering design services; hydrotechnical engineering design

services; water resources engineering design services; fire engineering design

services; structural design services; mechanical system design; electrical systems

design; value engineering thermal engineering; geotechnical engineering; instrument

control engineering; energy optimisation services; environmental permit assistance;

energy audits; plant audits and surveys; piping systems design and layout; heating

The term ‘in particular’, used in the applicant’s list of goods and services, indicates

that the specific goods and services are only examples of items included in the

category and that protection is not restricted to them. In other words, it introduces 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 33(7) EUTMR,

goods or services are not regarded as being similar to or dissimilar from each other

on the ground that they appear in the same or different classes under the Nice

Classification.

Contested goods in Class 9

The contested automatic time switches; electric capacitors; electric collectors,

electric terminals, electric cables; conduits and wires; battery boxes; identification

sheaths for electric wires and identification threads for electric wires, conduits,

inductors, semiconductors; electronic and electric apparatus, equipment and

instruments for the generation, distribution and supplying of energy, in particular

alternative energy; electrical connectors, junction sleeves; electric transistors,

thyristors, diodes; power semiconductor components; electric relays; electric

conduits; voltage regulators; fuses; switchboards; highvoltage transmission lines;

high-voltage direct current transmission installations; power cables; distribution

transformers; power distribution products, in particular mediumvoltage switch gear

and equipment and integrated hardware systems; circuit breakers; sockets; solar

conductors, electric; control panels, electricity; converters, electric; electromagnetic

identical.

detecting and monitoring controllers. As such, they are included in the broad category

of the opponent’s measuring, signalling and checking (supervision) apparatus and

instruments. Therefore, these goods are identical.

The contested identification threads for magnetic media are not identical to the

opponent’s magnetic data carriers. Although the applicant claims that these goods do

not coincide in any of the relevant factors for comparing goods and services, the

Opposition Division does not agree with this view. Magnetic media and magnetic

apparatus, are similar to the opponent’s apparatus and instruments for accumulating

electricity. For example, some modems use batteries, which are instruments for

accumulating electricity. Accordingly, these goods may have the same distribution

channels and relevant public. In addition, there is a complementary relationship

Contested services in Class 37

The contested maintenance, repair, upkeep and installation services, in particular for

knowledge is used. This premise fully applies to the electrical apparatus and

installations industry. Accordingly, these goods and services may have the same

manufacturers, distribution channels and relevant public. They are also in a

complementary relationship.

The contested repair services, in particular for industrial installations; repair

machines; all of the aforementioned services to be used in relation to substations

same purpose in the broadest sense of the word, that is, in that they are intended to

mend something broken, and therefore these services are considered similar to a low

degree; however, in the absence of an express limitation by the opponent clarifying

the vague term repair, it cannot be assumed that they are provided by the same

companies, that they have the same method of use or distribution channels, or that

upkeep services, in particular for industrial installations; maintenance machines;

The above reasoning in relation to the comparison of repair and services for the

repair of specific goods fully applies when comparing the contested installation

aforementioned services to be used in relation to substations and power projects with

the opponent’s installation, since their nature is the same, as is their purpose, in the

sense that they are intended to set up something to work or function. No coincidence

in other relevant criteria can be identified. Therefore, they are similar to a low degree.

The remaining contested services, namely construction; shielding machines; pipeline

construction; underwater construction; construction management; technical

constructability reviews; technical commissioning reviews on construction projects;

provided by the same companies, that they have the same method of use or

distribution channels, or that they are in competition or complementary, no

coincidence in any of the relevant criteria can be identified.

services. The goods in Class 7 include engines and various electrical appliances,

which have different natures, purposes, manufacturers and methods of use from the

contested services. The opponent’s goods and the contested services do not have

the same relevant public or sales outlets and there is no complementary or

construction; underwater construction; construction management; technical

constructability reviews; technical commissioning reviews on construction projects;

construction consultation; all of the aforementioned services to be used in relation to

substations and power projects only are dissimilar to the opponent’s goods and

services.

Contested services in Class 42

The contested design management; engineering management; energy studies;

environmental assessments; advanced engineering services; architectural design

services; civil engineering design services; hydrotechnical engineering design

services; water resources engineering design services; fire engineering design

services; structural design services; mechanical system design; electrical systems

control engineering; energy optimisation services; environmental permit assistance;

(engines, motors, compressors, washing machines, machines for treatment of

materials), Class 9 (specific types of apparatus and instruments, recorded media,

opponent’s goods and services have different natures, purposes and methods of use.

They are not complementary or in competition with each other. Furthermore, they are

provided by different undertakings through different channels and target different

relevant publics.

b) Relevant public — degree of attention

the relevant public for the assessment of the likelihood of confusion is composed of

those likely to use both the goods and services covered by the earlier mark and the

goods and services covered by the mark applied for that were found to be identical or

similar to varying degrees, the relevant public for assessing likelihood of confusion

§ 81).

The public’s degree of attention will be rather high, as the goods and services have a

specialised nature and might have a high price or an important impact on the

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).

Both marks are figurative marks. When signs consist of both verbal and figurative

‘KELVIN’ is an English male given name and ‘K’ is a letter of the Latin alphabet.

However, since the relevant public is composed of professionals in the field of

electricity, it is more likely that ‘KELVIN’ will be associated with the meaning ‘a degree

of the Kelvin scale (in size equal to the degree Celsius)’, where the Kelvin scale is ‘an

absolute scale of temperature (defined thermodynamically in terms of the operation

of an ideal heat engine) in which the zero is identified with absolute zero and values

are assigned to one or more fixed points so as to make the degrees correspond in

size to those of the Celsius (centigrade) scale’ (Oxford English Dictionary). The

symbol used for a degree Kelvin is ‘K’ and it is therefore likely that the letter ‘K’ in the

signs will be associated with this meaning. The Kelvin scale is named after William

The fact that the word ‘power’ may have other meanings, as argued by the applicant,

is irrelevant; the fact that it is non-distinctive in one of its meanings is sufficient to

consider that the word is non-distinctive. The element ‘power’ is also less dominant,

as it is overshadowed by the co-dominant figurative element ‘K’ and the element

‘KELVIN’. Therefore, contrary to the applicant’s arguments, the element ‘power’ will

have a limited impact on the assessment of the similarity between the signs; it will not

attract the primary attention of the relevant public and it will not be easily recalled as

an element contributing to the identification of the origin of the goods and services.

The earlier mark has no elements that are considered more dominant (visually eye-

catching) than other elements.

Visually, the signs coincide in the letter ‘K’ and in the verbal element ‘KELVIN’, which

dominant/distinctive verbal elements of the contested sign. However, they differ in the

Aurally, irrespective of the different pronunciation rules in different parts of the

and the word ‘KELVIN’, present identically in both signs. The pronunciation differs in

the sound of the non-distinctive word ‛power’ of the contested sign, which has a

limited impact on the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As the signs will be associated with the same

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

e) 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence

and between the goods or services. Accordingly, a greater degree of similarity

The contested goods and services are partly identical, partly similar to varying

degrees and partly dissimilar to the opponent’s goods and services.

The earlier mark has a slightly lower than average degree of distinctiveness for part

of the relevant public. The relevant public is a professional public and the degree of

attention is rather high.

The signs are visually similar to an average degree, aurally similar to a high degree

and conceptually similar to at least an average degree.

Account is taken of the fact that average consumers rarely have the chance to make

additional, non-distinctive and less dominant, element ‘power’ in the contested sign

and in their graphical depictions, it is considered that there is a likelihood of

confusion. This conclusion remains unchanged by the fact that the distinctiveness of

the coinciding element and of the earlier mark as a whole is reduced, at least for part

degree of distinctiveness. The public’s degree of attention is higher than average;

however, all the relevant factors need to be assessed together and, given the

established high degree of aural similarity, average degree of visual similarity and at

least average degree of conceptual similarity, because the verbal elements of the