OPPOSITION DIVISION
OPPOSITION No B 2 709 221
Kelvin, S.A., Miguel Yuste, 39, 28037 Madrid (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
Osiers Business Centre, Leicester, Leicestershire LE19 1DX, United Kingdom
(professional representative).
On 16/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 709 221 is partially upheld, namely for the following
contested goods and services:
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 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 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; installation,
maintenance, repair machines; pipeline maintenance; all of the
aforementioned services to be used in relation to substations and
power projects only.
2. European Union trade mark application No 15 061 765 is rejected for all the
above goods and services. It may proceed for the remaining services.
Decision on Opposition No B 2 709 221 page: 2 of 12
3. Each party bears its own costs.
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 all the goods and services of European
Union trade mark application No 15 061 765 (figurative). The
opposition is based on European Union trade mark registration No 11 355 021
(figurative).
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 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
Decision on Opposition No B 2 709 221 page: 3 of 12
apparatus and instruments; Apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity; Magnetic data
carriers, recording discs; Compact discs, DVDs and other digital recording media;
Mechanisms for coin-operated apparatus; cash registers, calculating machines; Fire-
extinguishing apparatus.
Class 37: Installation, repair and assembly.
Following a limitation of the list of goods and services by the applicant, the contested
goods and services are the following:
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 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
only.
Class 37: Construction; maintenance, repair, upkeep and installation services, in
particular for industrial and electrical installations; installation, maintenance, repair
and shielding machines and electric apparatus and installations; pipeline
construction and maintenance; 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.
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
ventilation and air conditioning systems design; construction drafting; construction
environmental monitoring and management; project planning relating to construction;
all of the aforementioned services to be used in relation to substations and power
projects only.
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 ‘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
Decision on Opposition No B 2 709 221 page: 4 of 12
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).
It is also 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.
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
The contested goods 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
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 only represent different apparatus and instruments
for electricity. As such, they fall under the broad category of the opponent’s
apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or controlling electricity. The applicant argues that in view of the limitation,
namely the restriction of the goods to be used in relation to substations and power
projects only, this clearly distinguishes its goods from those of the opponent.
However, the fact that the applicant’s goods are designated for use in a specific
industry only or that they are specific items, does not make them distinct from the
broad category of the opponent’s goods, which given their wording, include among
others the goods designated for the industry to which the opponent has limited the
use of its goods. Further, the Opposition Division does not concur with the position of
the applicant that goods such as automatic time switches, battery boxes, solar cells
do not represent apparatus or instruments for electricity. On the contrary, these all
are or could be used among others in relation to electricity. In particular, automatic
time switches are timers that operate an electric switch controlled by the timing
mechanism. Battery boxes are used to keep safe or isolate batteries, the latter being
devices for energy accumulation and hence, they are an article used in relation to
energy generation. Solar cells serve to accumulate energy, i.e. they are clearly
apparatus for energy accumulation.
In view of the foregoing, the above listed contested goods are identical to apparatus
and instruments for conducting, switching, transforming, accumulating, regulating or
controlling electricity of the opponent.
Sensors; voltmeters; counters, circuit breakers of the applicant are measuring,
detecting and monitoring controllers. As such, they are included in the broad category
Decision on Opposition No B 2 709 221 page: 5 of 12
of measuring, signalling and checking (supervision) apparatus and instruments of the
opponent. Hence, these goods are identical.
As for identification threads for magnetic media of the applicant’s list, indeed these
goods are not identical to magnetic data carriers. However, the applicant blankly
states that these goods do not coincide in any of the factors, relevant when
comparing goods and services. The Opposition Division does not support such
position. On one hand, magnetic media and magnetic data carriers are synonyms,
designating magnetic devices for storing of contents. On the other hand, the
applicant’s goods are identification threads for magnetic media, i.e. articles
specifically designated for use in relation to magnetic media. Accordingly, the relevant
public and sales outlets of magnetic data carriers and identification threads for
magnetic media may coincide. They also have a complementary relationship.
Therefore, these goods are considered similar.
Finally, the contested modems, falling under the broader category of data processing
apparatus, are similar to the opponent’s apparatus and instruments for accumulating
electricity. For example, part of the modems use batteries, the latter being
instruments for accumulating electricity. Accordingly, they may share the same
distribution channels and relevant public. Additionally, a complementary relationship
exists between them.
Contested services in Class 37
The contested maintenance, repair, upkeep and installation services, in particular for
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 are similar to the opponent’s apparatus and
instruments for conducting, switching, transforming, accumulating, regulating or
controlling electricity in Class 9. As a rule, the manufacturers of specific apparatus
and instruments often provide maintenance, repair and installation services in
relation to such apparatus and instruments, since the same know-how and technical
knowledge is used. This premise fully applies regarding the electrical apparatus and
installations industry. Accordingly, the enumerated services and goods may coincide
in manufacturer, distribution channels and relevant public. They are also in a
complementary relationship.
When comparing the contested repair services, in particular for industrial
installations; repair machines; all of the aforementioned services to be used in
relation to substations and power projects only to the opponent’s services repair, the
nature can be considered the same, the purpose is also the same in the broadest
sense of the word, i.e. that they “mend something broken” and to that extent these
services are considered similar to a low degree, but in the absence of an express
limitation by the opponent clarifying the vague term, it cannot be assumed that they
are provided by the same companies, that their methods of use coincide, that they
share the same distribution channels or that they are in competition or
complementary. For the same reasons, maintenance, upkeep services, in particular
for industrial installations; maintenance machine; pipeline maintenance; all of the
aforementioned services to be used in relation to substations and power projects
only are also considered similar to a low degree to the opponent’s repair services,
since maintenance and upkeep services include inter alia repair services, and
therefore these services overlap.
The above reasoning on the comparison of repair and repair of specific goods fully
applies when comparing the contested installation services, in particular for industrial
Decision on Opposition No B 2 709 221 page: 6 of 12
installations; installation machines; all of the aforementioned services to be used in
relation to substations and power projects, since their nature is the same and their
purpose, in the sense that they are intended to set up something to work, function,
coincides as well. No coincidence in other relevant criteria can be identified. Hence,
these services 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;
construction consultation; all of the aforementioned services to be used in relation to
substations and power projects only are distinct from the services of the opponent in
Class 37 installation, repair and assembly. As correctly noted by the applicant, these
services are vaguely worded and therefore there is lack of clarity and precision to
specify the scope of protection that they give, because they do not specify what is to
be repaired, installed or assembled. Upon taking into account their literal meaning,
no coincidence can be identified in the relevant criteria. In particular, since these are
services that are different in nature and purpose, and it cannot be assumed that they
are provided by the same companies, that their methods of use coincide, that they
share the same distribution channels or that they are in competition or
complementary, a coincidence in none of the relevant criteria can be identified.
The goods of the opponent in Class 7 and those in Class 9 are distinct, as well. The
goods in Class 7 include engines and different electric appliances, which have
different purpose, nature, manufacturer and method of use. There is no coincidence
in the relevant public or the sales outlets and a complementary or competition
relationship does not exist, either. The goods in Class 9 generally include different
apparatus and instruments for electricity, scientific, nautical, surveying, photographic,
cinematographic, optical, weighing, measuring, signalling, checking life-saving and
teaching apparatus and instruments and different data carriers. A coincidence in any
of the relevant criteria cannot be found, either.
In view of the foregoing, construction; shielding machines; pipeline 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 of the contested sign are dissimilar to the goods and
services of the opponent.
Contested services in Class 42
None of the contested services in Class 42 reveals any similarity to the goods and
services of the opponent. These are specific design, engineering, monitoring and
management services, which have completely different nature, purpose and method
if use to those related to the opponents goods and services. The distribution
channels and the relevant public are completely different, as well as the
producers/service providers. A complementary or competition relationship does not
exist, either.
Accordingly, all services in Class 42 of the contested sign are dissimilar to the goods
and services of the opponent in Classes 7, 9 and 37.
b) Relevant public — degree of attention
Decision on Opposition No B 2 709 221 page: 7 of 12
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 relevant goods and services of the earlier mark target at the
public at large and at professional public, while the goods and services of the
contested sign found similar (to varying degrees) or identical to those of the earlier
mark, target a professional public only, since they are designated for use in relation
to substations and power projects only. Since 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 products covered by the mark applied
for that were found to be identical or similar (01/07/2008, T-328/05, Quartz,
EU:T:2008:238, § 23; appeal dismissed 10/07/2009, C-416/08 P, Quartz,
EU:C:2009:450), it is the professional public that will be taken into account in the
present case.
The level of attention of the relevant public is higher than average, since these are
specialised goods and services, which should meet specific technical requirements.
c) The signs
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
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).
The above premise fully applies in the case at hand, since none of the figurative
elements of the signs is capable of attracting the attention of the consumers.
Both marks contain stylised verbal elements ‘K KELVIN’, as the level of stylisation of
the font does not prevent consumers from immediately grasping the word elements.
The word ‘KELVIN’ is an English given male name and ‘K’ is a letter in the Latin
alphabet. However, since the relevant public is composed of professionals in the field
of electricity, it is more likely that ‘KELVIN’ is associated with its meaning of ‘a degree
Decision on Opposition No B 2 709 221 page: 8 of 12
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 Kelvin degree is ‘K’ and hence, it is likely that ‘K’ is associated with
this meaning. Kelvin scale is named after William Thomson, 1st Baron Kelvin, who
was among others a prominent scientist in the field of electricity, and even certain
instruments used in the field of electricity are named after him (e.g. Kelvin balance,
Kelvin double bridge). Accordingly, it is likely that the elements ‘K KELVIN’ are
associated by a significant part of the relevant public with the meaning of a
measuring temperature unit or even with the name of Baron Kelvin, given his
contributions to the science of electricity. In the light of the goods and services in
question and the electricity-related associations that the expression could evoke at
least for a part of the public, its distinctiveness will be reduced for the respective part
of the public.
In addition to the verbal elements ‘K KELVIN’, the contested sign contains the English
language words ‘power’ and ‘structures’. The former means among others ‘a supply
of energy, esp. a public supply of electricity (often viewed as a commodity); (also)
electricity as used for purposes other than lighting; heat, motion, etc., obtained using
an electricity supply (Oxford English Dictionary). ‘Structures’ is the plural of ‘a
structure’, which means ‘any framework or fabric of assembled material parts; a
(typically large) man-made construction’. (Oxford English Dictionary). In the light of
the goods and services at issue, which are exclusively for use in relation to
substations and power projects only, ‘power structures’ will be understood by the
English-speaking part of the public as meaning ‘electricity-related constructions,
materials or services related to such constructions’. In this context, it is considered
descriptive of characteristics of the relevant goods and services for the English-
speaking part of the public.
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on
the English-speaking part of the public, since the non-coinciding verbal elements in
the contested sign ‘power structures’ have a clear meaning for the English-speaking
public.
As for whether the signs contain any element that is clearly more eye-catching than
the others, the applicant contends that this is the element ‘K’. The Opposition Division
does not agree with this position. While it is acknowledged that the size of the letter
‘K’ is bigger than the one of the remaining elements, it is not sufficiently big to fully
overshadow the element ‘KELVIN’. In particular, in both signs the letters of this
element are about twice as small as the letter ‘K’, but they remain clearly noticeable.
With respect to the contested sign, upon taking into account its overall composition
and the proportions of its separate elements, it is ‘K KELVIN’ that are considered to
be the visually outstanding elements. This is additionally strengthened by the fact that
Decision on Opposition No B 2 709 221 page: 9 of 12
‘power structures’ positioned in two lines below ‘KELVIN’ is represented in
significantly smaller letters, which has the effect that ‘KELVIN’ stands out even more.
As for the earlier mark, the fact that the letter ‘K’ is twice as big as ‘KELVIN’ is not
sufficient that it is considered as the dominant element in the sign. In particular, both
elements are positioned in the same line, the letters of ‘KELVIN’ are sufficiently big to
be clearly noticed and the colour combinations used to represent the two elements
also contribute to the immediate visual perception of both elements together, without
particularly focusing the attention on any of its elements.
Visually, the signs coincide in the verbal elements ‘K KELVIN’, which represent all
verbal elements in the earlier sign. The signs differ in the stylisation of the font, the
colours used in the earlier mark (red, blue and white), the additional verbal elements
‘power structures’ in the contested sign and their overall composition. These
differences are not sufficient to outweigh the existing coincidences. In particular, as
noted above, it is the verbal elements in them that have major impact in their
perception, since their figurative components do not feature anything that could
specifically catch the attention. Moreover, the coinciding elements are their dominant
and more distinctive elements (on account of the descriptiveness of the different
verbal elements in the contested sign).
Accordingly, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘K
KELVIN’. The signs differ in ‘power structures’ in the contested mark, which has no
counterpart in the earlier mark. This difference is not of a nature to overshadow the
coincidences, because these additional elements are descriptive and as such – of
lesser impact in the perception of the signs.
In the light of the foregoing, the signs are considered aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. On account of the identical associations that the
common elements ‘K KELVIN’ triggers, despite the additional weak concept that
‘power structures’ will add to the contested sign, the marks are considered
conceptually similar at least to an average degree.
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. In the present case, the earlier trade mark as a whole is not
directly descriptive of characteristics of the goods and services in question from the
perspective of the public in the relevant territory. However, as explained above, in
view of the possible electricity-related associations it may evoke at least for a part of
Decision on Opposition No B 2 709 221 page: 10 of 12
the public, the distinctiveness of the earlier mark must be seen as less than normal at
least for part of the public.
e) Global assessment, other arguments and conclusion
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).
The applicant argues that it has been using its mark since November 2015. If with
this it is intended to claim that its mark is already known, it is to be noted that the
right to an European Union trade mark begins on the date when the EUTM is filed
and not before, and from that date on the EUTM has to be examined with regard to
opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative
grounds for refusal, events or facts that happened before the filing date of the EUTM
are irrelevant because the rights of the opponent, insofar as they predate the EUTM,
are earlier than the applicant’s EUTM.
Additionally, the applicant argues that is has been using marks incorporating the word
‘KELVIN’ for at least 24 years and that this has never lead to a likelihood of confusion
between the opponent’s marks and the applicant’s mark.
According to case-law, the possibility cannot be ruled out that the coexistence of two
marks on a particular market might, together with other elements, contribute to
diminishing the likelihood of confusion between those marks on the part of the
relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §
82). In certain cases, the coexistence of earlier marks in the market could reduce the
likelihood of confusion that the Office finds between two conflicting marks (judgment
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the applicant for the
European Union trade mark duly demonstrated that such coexistence was based
upon the absence of any likelihood of confusion on the part of the relevant public
between the earlier marks upon which it relies and the intervener’s earlier mark on
which the opposition is based, and provided that the earlier marks concerned and the
marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169,
§ 86).
In this regard it should be noted that formal coexistence in national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) at
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
Decision on Opposition No B 2 709 221 page: 11 of 12
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this
argument of the applicant must be rejected as unfounded.
The above analysis has established that the goods and services of the compared
signs are identical, similar to varying degrees or dissimilar. The relevant public is the
professional public only with a higher degree of attention. The distinctiveness of the
earlier mark is lesser than normal at least for a part of the public. The signs are
visually similar to an average degree, conceptually similar at least to an average
degree and aurally similar to a high degree.
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).
Upon taking into account that all verbal elements of the earlier mark, which are also
the most distinctive elements in it, are contained in the contested sign and that the
additional verbal elements in the contested mark are of very weak distinctiveness in
relation to the goods and services in question, it is considered that there is a
likelihood of confusion regarding the goods and services found identical or similar to
varying degrees. 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 a part of the public, since as said above, the differing elements
are not of higher distinctiveness. It is also true that the degree of attention of the
public is higher than average, but all relevant factors need to be assessed together
and given the established high degree of aural similarity, at least average degree of
conceptual similarity and average degree of visual similarity, it is considered that the
higher attention of the public may not exclude the likelihood of confusion even for the
services found to be similar to a low degree.
The finding of likelihood of confusion will not change even if it is accepted that the
coinciding element ‘K KELVIN’ has a normal degree of distinctiveness for a part of
the public and hence, the distinctiveness of the earlier mark is normal. In view of the
weaker distinctiveness of the remaining word elements of the contested mark, i.e.
their reduced ability to serve as origin identifier, the coincidence in such elements
would actually strengthen even further the finding of a likelihood of confusion.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public and therefore, the opposition is partially well
founded on the basis of the opponent’s European Union trade mark registration
No 11 355 021. 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 must be rejected for the
contested goods and services found to be identical or similar to varying degrees to
those of the earlier trade mark.
Decision on Opposition No B 2 709 221 page: 12 of 12
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this Article and directed at these services cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
According to Article 109(3) EUTMR, where each party succeeds on some heads and
fails on others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Saida CRABBE Teodora Valentinova
TSENOVA-PETROVA
Vanessa PAGE
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.