OPPOSITION No B 2 760 075

Lapp Insulators GmbH, Bahnhofstr. 5, 95632 Wunsiedel, Germany (opponent), represented by FDST Patentanwälte Freier Dörr Stammler Tschirwitz Partnerschaft mbB, Nordostpark 16, 90411 Nürnberg, Germany (professional representative)

a g a i n s t

Jyväskylän Energia Oy, P.O. Box 4, 40101 Jyväskylä, Finland (applicant), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 075 is partially upheld, namely for the following contested goods and services:

Class 9:        Scientific, nautical, surveying, weighing, measuring, checking (supervision) and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Computer software; Apparatus and instruments for regulating or controlling heat energy and gas energy; Energy measuring apparatus; Remote gauges and meters; Remote control apparatus; Apparatus for measuring and supervision of energy, heat and consumption; Software for production and measuring of energy; Mobile applications; Downloadable electronic publications; Monitoring and controlling apparatus.

Class 37:        Construction; Power plant maintenance; Grid maintenance; Energy production maintenance; Maintenance, installation and repair of apparatus, instruments and machines used in producing, conducting, switching, transforming, reserving, regulating and controlling electricity, heat and other energy; Consultation and advice relating to aforementioned services.

Class 38:        Telecommunications; providing access to databases; providing access to global computer networks; providing access to databases used for monitoring distribution and delivery; Data transmission; Wireless digital messaging services; remote transmission of reading data from electrical meters and district heating gauges; smart grid services, namely interactive data transmission between electricity connections, electric grid, apparatus using electricity, mobile devices, power plants and electric distributors; Providing online forums; online portal for transmission of information relating to energy production, distribution and consumption; Consultation and advice relating to aforementioned services.

Class 42:        Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Research, design and development relating to energy distribution and production; Research, design and development relating to heat distribution and production; Technical testing and quality control services; Consultation relating to energy saving and energy efficiency; Computer programming for energy industry; Design and development of energy and heat distribution grids; Design and development of energy and heat management software; Engineering services in the field of energy and heat technology; Power station project engineering; consulting, design and system services relating to power station maintenance and operation; development of operational reliability, security and information management for industrial data systems relating to distribution and production of energy and heat; Storage of energy consumption data; Monitoring of computer systems by remote access; Reading of energy consumption data by remote access; Monitoring and controlling services of monitoring devices; Monitoring of water quality; Remote reading of energy consumption; inspection of reading from electricity meters, district heating gauges and from other gauges and meters; Services for measuring energy consumption; Certification services for the energy efficiency of buildings; Power plant monitoring services; Grid monitoring services; Energy production control and monitoring services; Monitoring and controlling of monitoring and controlling apparatus via a web site, for example through an application or network service; Consultation and advice relating to aforementioned services.

2.        European Union trade mark application No 15 139 314 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 139 314 ‘LIEKE’ (word mark). The opposition is based on international trade mark registration No 1 186 562 designating the European Union, and German trade mark registration No 302 013 021 212, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF EARLIER INTERNATIONAL TRADE MARK REGISTRATION No 1 186 562 DESIGNATING THE EUROPEAN UNION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards earlier international trade mark registration No 1 186 562 on which the opposition is, inter alia, based.

The earlier international registration invoked by the opponent designates the European Union. However, despite the fact that an international registration designating the European Union has the same effect as an EU trade mark registration within the meaning of Article 151(2) EUTMR, it is not an EU trade mark.

As pointed out above, Rule 19 EUTMIR provides that where an opposition is based on a right which is not an EU trade mark, the opponent must submit evidence originating from the administration by which the mark was registered. In the present case, the earlier right was registered with WIPO. The competent administration for such an international registration, even when it designates the European Union, is WIPO and not EUIPO.

Nothing in Rule 19 EUTMIR or in any Article of the EUTMR relieves international registrations designating the European Union from the obligation regarding the requirement to file evidence of the existence and validity of the earlier trade mark on which the opposition is based.

On 06/09/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/01/2017.

The opponent did not submit any evidence concerning the substantiation of earlier international trade mark registration No 1 186 562.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded, as far as it is based on this earlier mark.

The examination of the opposition will proceed in relation to the other earlier right invoked by the opponent, namely German trade mark registration No 302 013 021 212, which was duly substantiated by submitting a printout from the German trade mark database together with an appropriate translation into English.

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 and services

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

Class 37:        Installation, maintenance and repair of electrical insulators.

Class 40:        Contract manufacture of electrical insulators for others; customer-specific manufacture of electrical insulators.

Class 41:        Providing of training in the field of electrical engineering; arranging and conducting of seminars in the field of electrical engineering; demonstrations in the field of electro-technics for educational purposes.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; engineering; physics [research]; services of chemical and physical laboratories; services of a technical research and test laboratory; scientific examination services; technical testing services; physico-chemical analysis, in particular analysis of ceramic raw products and materials; surveying; scientific surveys; construction drafting; research and development of new products for others; development of insulation concepts; development of technical solutions for insulation tasks; technical consultancy; technical project studies; technical project management; quality control; quality test; inquiries, research in databases and internet for sciences and research.

The contested goods and services are the following:

Class 4:        Electrical energy; Gas energy; Thermal energy; Gas used as source of energy.

Class 7:        Refrigerant compressors for cooling installations; Refrigerant compressors for heating installations.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Computer software; Fire extinguishers; Apparatus and instruments for conducting, transforming, accumulating, regulating or controlling electrical energy, heat energy and gas energy; Energy measuring apparatus; Remote gauges and meters; Chargers; Batteries; Electric vehicle charging poles; Solar energy collectors [for generating energy]; Remote control apparatus; Apparatus for measuring and supervision of energy, heat and consumption; Software for production and measuring of energy; Mobile applications; Downloadable electronic publications; Monitoring and controlling apparatus.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Spare parts and accessories for heating, refrigerating and water supply apparatus; Heat regenerators; District heating and cooling apparatus; Solar thermal collectors [heating]; Drinking water supply installations; Water supply installations; Water purification, desalination and conditioning installations; Sewage purification apparatus; Waste water treatment tanks; Industrial waste water purification plants; Sewerage installations; Water filters.

Class 12:        Vehicles; Land, air and water vehicles, and parts and accessories therefor; Vehicles powered by electrical energy.

Class 35:        Advertising; Business management; Business administration; Office functions; Collection, compilation and systematization of information into computer databases; Compilation of statistics; Energy information processing and management, namely, collection, review and transmission of energy data, energy consumption and production predictions, energy audit services, energy purchase planning; The bringing together, for the benefit of others, of a selection of energy, electricity, heat, steam, natural gas, district heating, district cooling, and water generating and distribution services to enable consumers to compare and buy said services with ease; reporting and invoicing services for energy production, energy transport and energy consumption; energy import-export services; Price comparison services; Consultation and advice relating to aforementioned services.

Class 36:        Real estate affairs, repair costs evaluation, information and consultation relating to apartment house management and real estate management services; Financing of purchases; Financial loan services; Arranging the hire purchase of goods; Credit and financial loan services; Arranging finance for construction projects; Consultation and advice relating to aforementioned services.

Class 37:        Construction; Maintenance and repair of real estate; Power plant maintenance; Grid maintenance; Energy production maintenance; Maintenance, installation and repair of apparatus, instruments and machines used in producing, conducting, switching, transforming, reserving, regulating and controlling electricity, heat and other energy; Recharging services for electric apparatus for locomotion by land, air or water; Battery recharging services; Installation, maintenance and repair services for recharge apparatus; Maintenance, repair, installation, drilling and lining of pipes and pipelines; Land drainage; Construction of drainage systems; Installation of gas and water pipelines; Installation of rainwater drainage systems; Installation of rainwater collection systems; Maintenance of septic systems; Consultation and advice relating to aforementioned services.

Class 38:        Telecommunications; providing access to databases; providing access to global computer networks; providing access to databases used for monitoring distribution and delivery; Data transmission; Wireless digital messaging services; remote transmission of reading data from electrical meters and district heating gauges; smart grid services, namely interactive data transmission between electricity connections, electric grid, apparatus using electricity, mobile devices, power plants and electric distributors; Providing online forums; online portal for transmission of information relating to energy production, distribution and consumption; Consultation and advice relating to aforementioned services.

Class 39:        Transport; Packaging and storage of goods; Travel arrangement; Transport, delivery, distribution and storage of energy, heat, electricity and natural gas; Transport and storage of energy and fuel; Transportation of waste; Public services in the form of water distribution and water apparatus; Water distribution; Consultation and advice relating to aforementioned services.

Class 40:        Production and treatment of energy, electricity, heat, gas, district heating and district cooling; Rental of energy and heating systems; Production and treatment of fuels and other materials used as a source of energy; Air conditioning services; Treatment and recycling of waste; Water treating; Water purification; Rental or leasing of water treatment equipment; Water pollution control; Leasing services of charging appliances; Consultation and advice relating to aforementioned services.

Class 42:        Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Research, design and development relating to energy distribution and production; Research, design and development relating to heat distribution and production; Technical testing and quality control services; Consultation relating to energy saving and energy efficiency; Computer programming for energy industry; Design and development of energy and heat distribution grids; Design and development of energy and heat management software; Engineering services in the field of energy and heat technology; Power station project engineering; consulting, design and system services relating to power station maintenance and operation; development of operational reliability, security and information management for industrial data systems relating to distribution and production of energy and heat; Storage of energy consumption data; Monitoring of computer systems by remote access; Reading of energy consumption data by remote access; Monitoring and controlling services of monitoring devices; Monitoring of water quality; Remote reading of energy consumption; inspection of reading from electricity meters, district heating gauges and from other gauges and meters; Services for measuring energy consumption; Certification services for the energy efficiency of buildings; Power plant monitoring services; Grid monitoring services; Energy production control and monitoring services; Monitoring and controlling of monitoring and controlling apparatus via a web site, for example through an application or network service; Consultation and advice relating to aforementioned services.

Class 45:        Security consultation services relating to energy, heat and water production, consumption and distribution; Monitoring of security systems; Alarm monitoring services.

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 4

The contested electrical energy; gas energy; thermal energy; gas used as source of energy have no relevant commonalities with the opponent’s services. In principle, goods and services are different by nature since the former are tangible whereas the latter are intangible. Energy and its sources are provided by specialised undertakings which are not normally involved in the manufacture of industry-specific equipment, even though the latter is required for successful production, distribution or storage of energy.

On the other hand, the opponent’s installation, maintenance and repair services in Class 37, and contract manufacture services in Class 40 are provided particularly in connection with electrical insulators. It has to be borne in mind that these services are rendered for third parties, and they do not constitute pre-sales or after-sales customer support activities. Whilst energy is sold to end users, whether households or business customers, the relevant public for the opponent’s services in Classes 37 and 40 is exclusively composed of professionals in the energy-industry. That leads to the finding that the distribution channels and relevant public of the goods and services at issue are not the same. Nor are the usual origin of the goods and services. Furthermore, they are neither complementary nor in competition with each other.

As regards the opponent’s services in Class 41, they are of educational nature and purpose. Such services are provided by specialised educational establishments, often licensed, such as colleges, institutes, universities etc. The mere fact that the subject matter of the opponent’s educational services can coincide with the contested goods, being energy, is insufficient in itself for a finding of similarity, given the vast differences in the natures, purposes, usual origins and distribution channels of the goods and services at issue.

Turning to the opponent’s services in Class 42, they encompass a wide range of scientific and technological services rendered by science labs, research centres and suchlike for the development of new materials and products, institutes of applied sciences, engineers, quality testing laboratories etc. In addition, the earlier mark has protection for information technology (IT) services which are rendered by specialists in this field, such as program developers etc. None of them have any nexus with the contested goods in Class 4. Clearly different by natures and purposes, they do not originate from the same undertakings and do not move through the same distribution channels. There is no complementarity or interchangeability between them either.

Therefore, all of the contested goods in Class 4 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested goods in Class 7

The contested refrigerant compressors for cooling installations; refrigerant compressors for heating installations have no relevant commonalities with any of the opponent’s services. Refrigerant compressors, being machines, serve a specific purpose and are not even remotely similar to the goods that are the object of some of the opponent’s services, namely electric insulators. The contested goods are offered through channels dealing with household or industrial air conditioning installations and are mainly directed at a specialised public. The usual origin of the contested goods does not coincide with that of the opponent’s services. Furthermore, they are neither complementary nor in competition.

Therefore, all of the contested goods in Class 7 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested goods in Class 9

The contested scientific and teaching apparatus and instruments are complementary to the opponent’s scientific and technological services in Class 42, in the sense that use of laboratory equipment such as microscopes is indispensable for carrying out research, testing or other science and technology services. Moreover, it is not uncommon that providers of scientific and technological services create and supply laboratory equipment to others, thus the goods and services can share the same origin. Furthermore, they are directed at the same relevant public. Therefore, they are similar.

The contested nautical and surveying apparatus and instruments are complementary to the opponent’s scientific and technological services in Class 42, in the sense that use of navigational equipment is indispensable for carrying out technology services that encompass geolocation etc. Moreover, it is not uncommon that providers of technological services create and supply specialised equipment to others, thus the goods and services can share the same origin. Furthermore, they are directed at the same public. Therefore, they are similar.

The contested apparatus for recording, transmission or reproduction of sound or images are used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. Being a broad category, the contested goods encompass portable communications apparatus, such as mobile phones and smartphones. The opponent’s design and development of computer software in Class 42 refer to programing which enable a given device to perform a desired operation. For example, smartphones are loaded with software, ranging from operating system to ‘apps’ for entertainment etc. Therefore, design and development of computer software are closely linked to the contested goods. This is because users of mobile communications apparatus usually need software-related services (as a means of keeping the device updated or safe, for example). Although the nature of the goods and services is not the same, both the relevant public and the distribution channels of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested computer software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The contested mobile applications are a type of software, being computer programs designed to run on a mobile device such as a smartphone or tablet computer. The contested software for production and measuring of energy serves a specific purpose. In any event, there is a close connection between these contested goods and the opponent’s design and development of computer software in Class 42. This is because manufacturers of software will also commonly provide software-related services (maintenance, updating, etc.) Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested downloadable electronic publications are commonly used as teaching material. These goods are essential to educational services, such as the opponent’s providing of training in the field of electrical engineering in Class 41. Therefore, these goods and services are complementary. This is because in order to supply training services it is both helpful and usual to use educational texts, teaching manuals, etc. in the form of downloadable publications. Service providers offering a training course often give access to the participants for downloading the learning supports from the teaching establishment’s website. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

The contested weighing, measuring and checking (supervision) apparatus and instruments share the same distribution channels as the opponent’s scientific and technological services in Class 42. In addition, these goods and services coincide in their producers/providers and they are of interest to the same relevant public. Therefore, these goods and services are similar to a low degree.

Insofar as the contested apparatus and instruments for regulating or controlling heat energy and gas energy; energy measuring apparatus; remote gauges and meters; remote control apparatus; apparatus for measuring and supervision of energy, heat and consumption; monitoring and controlling apparatus cannot be filtered from the respective abovementioned broad categories, the same findings apply also in relation to these contested goods. They are similar to a low degree to the opponent’s scientific and technological services in Class 42.  

The remaining contested goods in this class have no relevant commonalities with any of the opponent’s services. The contested photographic, cinematographic, optical, signalling and life-saving apparatus and instruments; fire extinguishers serve very specific purposes which have nothing in common with any of the opponent’s services. As regards the contested magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media, they are blank data carriers, thus they do not share the same similarity factors as the contested electronic publications, as discussed above. The contested apparatus and instruments for conducting, transforming, accumulating, regulating or controlling electrical energy; chargers; batteries; electric vehicle charging poles; solar energy collectors [for generating energy] are intended for handling electricity, in one way or another. The contested apparatus and instruments for conducting, transforming and accumulating heat energy and gas energy are specialised equipment which is not commonly used in laboratory environment, unlike measuring apparatus and instruments discussed above. Cleary different by natures and purposes, these goods and services originate from different undertakings and move through different distribution channels. They are not directed at the same relevant public. Furthermore, they are neither complementary nor in competition.

Therefore, the contested photographic, cinematographic, optical, signalling and life-saving apparatus and instruments; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; fire extinguishers; apparatus and instruments for conducting, transforming, accumulating, regulating or controlling electrical energy; apparatus and instruments for conducting, transforming and accumulating heat energy and gas energy; chargers; batteries; electric vehicle charging poles; solar energy collectors [for generating energy] are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested goods in Classes 11 and 12

The contested goods in Classes 11 and 12 have no commonalities whatsoever with any of the opponent’s services. The contested goods in Classes 11 and 12 serve specific purposes (lighting, heating, ventilating etc.; means of transport etc.) and are not even remotely similar to the goods that are the object of some of the opponent’s services, namely electric insulators. The contested goods are offered in white-good stores, hardware stores and specialised outlets dealing with vehicles and spare parts thereof. The usual origins of the contested goods do not coincide with those of the opponent’s services. Furthermore, they are neither complementary nor in competition.

Therefore, all of the contested goods in Classes 11 and 12 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested services in Classes 35 and 36

The contested services in Classes 35 and 36 have no relevant commonalities with any of the opponent’s services. In Class 35, the contested services are business support activities, provided by specialised agencies (advertising agencies, business consultants, outsourcers of clerical functions, import-export agencies and suchlike) and are aimed at helping other businesses to run their daily operations, to broaden their market share, to create a promotional campaign, to facilitate business contacts for strategic business deals etc. The mere fact that some of the contested services deal with data that can stem from research projects that are protected by the earlier mark in Class 42 is insufficient in itself for a finding of similarity, since the gap between the purposes, usual providers and distribution channels of those services is vast. As regards the contested the bringing together, for the benefit of others, of a selection of energy, electricity, heat, steam, natural gas, district heating, district cooling, and water generating and distribution services to enable consumers to compare and buy said services with ease, it is noted that they provide commercial assistance to consumers which has nothing in common with any of the opponent’s services.

In Class 36, the contested services are essentially real estate management and financial services. There is a fundamental difference in the natures and purposes of these services in comparison to those of the opponent’s. Moreover, the contested services are provided by specialised real estate agencies, licenced financial institutions etc., which generally do not provide other services outside their usual scope.

As regards the contested services in both classes, they neither target the same public nor move through the same distribution channels. Furthermore, there is no complementarity or interchangeability either.

Therefore, all of the contested services in Classes 35 and 36 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested services in Class 37

The contested construction; consultation and advice relating to aforementioned services are similar to a low degree to the opponent’s engineering in Class 42, since the supervision by an engineer is indispensable in almost all construction works. In addition to being complementary, these services are commonly offered in the same outlets and are directed at the same public.

The contested power plant maintenance; grid maintenance; energy production maintenance; maintenance, installation and repair of apparatus, instruments and machines used in producing, conducting, switching, transforming, reserving, regulating and controlling electricity, heat and other energy; consultation and advice relating to aforementioned services are similar to the opponent’s installation, maintenance and repair of electrical insulators in Class 37, since these services share the same nature and are rendered for the same objects, or for objects with the same purpose (electric insulators being integral parts of apparatus, instruments and machines used in producing and conducting of electricity), or related equipment and facilities (power plants, electric grid etc.). They are directed at the same public and are offered through the same distribution channels by the same undertakings. Furthermore, they can share the same method of use.

The rest of the contested services in this class have no relevant connection with any of the opponent’s services. Even though some of the contested services have the same nature as the opponent’s services in Class 37, insofar as installation, maintenance and repair is covered by both specifications, the huge difference in the object of those services removes them far apart in terms of purpose, method of use, usual provider, relevant public and distribution channels. Furthermore, they are neither complementary nor in competition.

Therefore, the contested maintenance and repair of real estate; recharging services for electric apparatus for locomotion by land, air or water; battery recharging services; installation, maintenance and repair services for recharge apparatus; maintenance, repair, installation, drilling and lining of pipes and pipelines; land drainage; construction of drainage systems; installation of gas and water pipelines; installation of rainwater drainage systems; installation of rainwater collection systems; maintenance of septic systems; consultation and advice relating to aforementioned services are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

Contested services in Class 38

The contested services in this class are those that enable remote communication between people or machines. The operation of a data network, running of an online portal or chat room, or the supplying of almost any other telecommunication service, are strongly interrelated with the creation and maintenance of specific computer programs without which many telecommunications devices are useless. Given the complementarity and the fact that they serve the same purpose, there is a close connection between the contested telecommunications; providing access to databases; providing access to global computer networks; providing access to databases used for monitoring distribution and delivery; data transmission; wireless digital messaging services; remote transmission of reading data from electrical meters and district heating gauges; smart grid services, namely interactive data transmission between electricity connections, electric grid, apparatus using electricity, mobile devices, power plants and electric distributors; providing online forums; online portal for transmission of information relating to energy production, distribution and consumption; consultation and advice relating to aforementioned services and the opponent’s design and development of computer software in Class 42. These services are commonly offered by the same undertakings from the information technology and telecommunications field, and are available through the same outlets. Therefore, these services are similar.

Contested services in Class 39

The contested services in this class essentially are transportation of passengers or goods, including of various forms of energy, storage and packaging services, and certain public utility services, as well as related consulting services. They have nothing relevant in common with any of the opponent’s services. Clearly different by natures and purposes, these services do not coincide in their usual providers nor do they share the same distribution channels. Furthermore, they are neither complementary nor in competition.

Therefore, all of the contested services in Class 39 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 or 42.

Contested services in Class 40

Some of the contested services in this class may have some points in common with the opponent’s contract manufacture of electrical insulators for others; customer-specific manufacture of electrical insulators in Class 40. Admittedly, the opponent’s services share the same nature as for example the contested production of energy, electricity, heat, gas, district heating and district cooling. However, given the vast difference in the products, namely that the opponent’s services deal with electric insulators as opposed to the contested services that deal with various forms, or sources of, energy, this factor does not lead to a finding of similarity. These services are not provided by the same companies and they are not available on the same distribution channels. Moreover, the relevant public is not the same. There is no complementarity or interchangeability between these services either.

The rest of the contested services in this class, such as rental of energy and heating systems; air conditioning services; treatment and recycling of waste; leasing services of charging appliances; consultation and advice relating to aforementioned services have no relevant commonalities with any of the opponent’s services either. Given the huge difference in their natures and purposes, the relevant public will not expect that they originate from the same companies and will not look for them in the same distribution channels. Furthermore, they are neither complementary nor in competition.

Therefore, all of the contested services in Class 40 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 or 42.

Contested services in Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; quality control services are identically contained in both lists of services, despite minor differences in the wordings, where applicable.

Insofar as the abovementioned categories include the provision of information and consultation for third parties on a given topic, the contested consultation and advice relating to scientific and technological services and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software, quality control services are included in the broader categories of the opponent’s scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; quality control. Therefore, they are identical.

The contested research, design and development relating to energy distribution and production; research, design and development relating to heat distribution and production; consultation relating to energy saving and energy efficiency; design and development of energy and heat distribution grids; consulting, design and system services relating to power station maintenance and operation; consultation and advice relating to aforementioned services are included in, or overlap with, the opponent’s technological services and research and design relating thereto. Therefore, they are identical.

The contested technical testing services; certification services for the energy efficiency of buildings; consultation and advice relating to aforementioned services are included in, or overlap with, the opponent’s services of a technical research and test laboratory. Therefore, they are identical.

The contested computer programming for energy industry; design and development of energy and heat management software; development of operational reliability, security and information management for industrial data systems relating to distribution and production of energy and heat are included in, or overlap with, the opponent’s design and development of computer software. Therefore, they are identical.

As regards the contested consultation and advice relating to computer programming for energy industry, design and development of energy and heat management software, development of operational reliability, security and information management for industrial data systems relating to distribution and production of energy and heat, they are included in the opponent’s broad category of technical consultancy. Therefore, they are identical.  

The contested engineering services in the field of energy and heat technology; power station project engineering; consultation and advice relating to aforementioned services are included in the broader category of the opponent’s engineering. Therefore, they are identical.

The contested storage of energy consumption data; monitoring of computer systems by remote access; reading of energy consumption data by remote access; monitoring and controlling services of monitoring devices; monitoring of water quality; remote reading of energy consumption; inspection of reading from electricity meters, district heating gauges and from other gauges and meters; services for measuring energy consumption; power plant monitoring services; grid monitoring services; energy production control and monitoring services; monitoring and controlling of monitoring and controlling apparatus via a web site, for example through an application or network service; consultation and advice relating to aforementioned services are included in, or overlap with, the opponent’s technological services. Therefore, they are identical.

Contested services in Class 45

The contested services in this class are rendered for helping others to create and maintain a secure environment for persons and property. Such services are provided by specialised agencies which are often certified. They have nothing in common with any of the opponent’s services. Given the fundamental difference in terms of natures and purposes, these services are directed at different sections of the public who do not expect that they would be provided under the control of the same entity. There is no complementarity or interchangeability between them. They do not share the same distribution channels either.

Therefore, all of the contested services in Class 45 are dissimilar to all of the opponent’s services in Classes 37, 40, 41 and 42.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attention varies from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

	LIEKE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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’s figurative element evokes a string of disc-shaped insulators for electrical lines (a suspension insulator). Such perception is facilitated by the context of the services, some of which are expressly defined for use with electrical insulators, whilst the rest are technological services, all of which potentially can be used in relation to electrical insulators.

The Opposition Division considers that it is highly unlikely, contrary to what the applicant argues, that the relevant public will associate the earlier mark’s verbal element, ‘LIKE’, with the English meaning as seen on social media websites (‘like’ in the sense of finding something attractive, enjoyable, relatable etc.). Although it is accepted that the meaning of this English word is generally known to the German public, against the background of the relevant services which are sufficiently far removed from entertainment and social networks, it can be reasonably assumed that the relevant public will not attach any specific or evident meaning to this word which does not exist as such in German.

It follows that out of the two elements of the earlier mark, none of which can be clearly considered visually more dominant than the other, the verbal element, ‘LIKE’, is the one that is distinctive to an average degree, whilst the figurative element is weak for the services in question. Furthermore, it has to be borne in mind that 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).

As regards the contested sign, its sole element will be perceived as a meaningless, fanciful term which enjoys an average degree of distinctiveness for the goods and services at issue.

Visually, the signs coincide in the letters ‘LI-KE’, which are present in the most distinctive element of the earlier mark, and appearing as four out of the five letters of the contested sign’s word ‘LIEKE’. However, the signs differ in that ‘LIEKE’ contains the additional letter in the middle, ‘E’, whilst the word ‘LIKE’ is depicted in a stylised fashion in the earlier mark. Although the typeface is fairly standard, the letter ‘i’, which is the only lower case letter amidst the other upper case letters, is written above the baseline of the preceding letter ‘L’. In addition, the earlier mark differs in its figurative element, which however only has a limited impact on the public’s perception, for reasons given above.

Since the difference in the additional letter of the contested sign cannot outweigh the coincidence in the four-letter sequence, and as the stylisation of the earlier mark’s verbal element does not eclipse the word which is still readily legible, it is considered that the signs are similar to at least an average degree.

Aurally, according to German pronunciation rules, the third letter ‘e’ in the contested sign will be mute, because it follows an ‘i’. The phoneme corresponding to the letter cluster ‘ie’ in the contested sign will be a prolonged sound, and the second letter ‘i’ in the earlier mark will make a shorter sound. Although the difference between these sounds is audible, it is not a major one. The pronunciations of the remaining letters in each of the signs are identical.

All in all, it is considered that the signs are similar to a high degree.

Conceptually, although the relevant public will associate the earlier mark’s figurative element with a meaning, as explained above, the other sign has no meaning.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, it must be kept in mind that the conceptual difference between the signs results from an element which is weak.

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 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 services 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 figurative element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Some of the contested goods and services are identical or similar to varying degrees to the opponent’s services. The similarity between the signs varies from at least average on the visual level to high from the aural perspective. Although there is no conceptual similarity between the signs, the conceptually differentiating element of the earlier mark has a low impact in the overall impression of the sign.

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).

Considering all of the circumstances of the case, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that the differences established between the signs are insufficient to remove the overall impressions produced by them sufficiently far as to enable at least a substantial part of the relevant public, whether the general public or professionals, to safely distinguish between them, including where the public’s degree of attention is high. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 013 021 212.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

As regards the contested goods and services that have been found similar to a low degree, it has to be taken into account that 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, it is considered that the strong similarity between the signs, on visual and aural levels, is sufficient to counteract the low degree of similarity between some of the goods and services, and likelihood of confusion exists also in relation to them.

The rest of the contested goods and 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 goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.