OPPOSITION No B 2 769 340

Otto GmbH & Co KG, Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (opponent), represented by White & Case LLP, Valentinskamp 70 / Emporio, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Clearpath Robotics, Inc., 1425 Strasburg Road, Suite 2A, Kitchener Ontario,  N2R1H2, Canada, (applicant), represented by ABG Patentes, S.L., Avenida de Burgos, 16D, 4ª planta, Edificio Euromor, 28036 Madrid, Spain (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 769 340 is partially upheld, namely for the following contested goods: 

Class 7:        Machine tools.

Class 12:        Vehicles; apparatus for locomotion by land, air or water; unmanned vehicles used for land, air and water in the academic, military, mining, agricultural, manufacturing, retail, residential and first responder fields.  

2.        European Union trade mark application No 15 209 695 is rejected for the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 209 695 ‘OTTO’, namely against all the goods in Classes 7 and 12. The opposition is based on, inter alia, European Union trade mark registration No 10 619 393 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 619 393.

1. The goods and services

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

Class 35: Wholesale and retail services in relation to machines and machine tools, motors and engines (except for land and vehicles), apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 7: Machine tools; robots; autonomous mobile robots and fleets thereof, namely used for land, air and water in the academic, military, mining, agricultural, retail, residential, first responder, warehousing, logistics and manufacturing fields. 

Class 12: Vehicles; apparatus for locomotion by land, air or water; unmanned vehicles used for land, air and water in the academic, military, mining, agricultural, manufacturing, retail, residential and first responder fields. 

It is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

As a preliminary note, the Opposition Division points out that, according to established case law, retail or wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods (05/05/2015, T-715/13, Castello, EU:T: 2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. For this purpose, the goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Contested goods in Class 7

The contested machine tools are goods that are identically specified as the subject of the opponent’s retail and wholesale services in Class 35. Therefore, these goods and the opponent’s services are similar to a low degree.

With regard to the remaining contested goods, these include robots used for a wide range of purposes. Robots are machines capable of carrying out a complex series of actions automatically, especially one programmable by a computer. However, pursuant to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), ‘machines’ in Class 7 lack the clarity and precision to specify the scope of protection that they give as they do not provide a clear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require very different levels of technical capabilities and know-how to be produced and / or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors. Since the opponent did not file any express limitation clarifying the term ‘machines’, it cannot be assumed that machines and robots are produced by the same companies, that their methods of use coincide, or that they share the same distribution channels or that they are in competition or complementary. In summary, these goods cannot be found identical, which must lead to the conclusion that the contested robots; autonomous mobile robots and fleets thereof, namely used for land, air and water in the academic, military, mining, agricultural, retail, residential, first responder, warehousing, logistics and manufacturing fields are dissimilar to any of the opponent’s services.

Contested goods in Class 12

The contested vehicles; apparatus for locomotion by land, air or water; unmanned vehicles used for land, air and water in the academic, military, mining, agricultural, manufacturing, retail, residential and first responder fields are de facto identical with apparatus for locomotion by land, air or water listed in the opponent’s retail and wholesale services in Class 35. Therefore, these goods and the opponent’s services are similar to a low degree.

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 similar to a low degree are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be higher than average since consumers are likely to pay a higher degree of attention when purchasing vehicles or machine-tools. These goods are usually expensive ones and are infrequently bought. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

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3. The signs

	OTTO
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 signs consist of one word element ‘OTTO’, depicted in plain typeface in the contested sign (a word mark) while it is represented in red and white, italicized fonts in the earlier mark. The said word element is a given name of German origin which is used several languages of the relevant territory either spelled identically or with slight modifications (for the sake of example: Otto in German, Ottó in Hungarian). Irrespective of whether it is a common name or not, it does not relate to any of the relevant goods and services and is distinctive to a normal degree, with the exception of a certain part of the relevant public, namely, those familiar with the functioning and origin of engines; to these people, the name may also allude to Otto engine, an early internal combustion engine invented by Nikolaus Otto in which case it has a below average distinctiveness.

Visually, the signs coincide in their only word element ‘OTTO’ and they only differ in the colours and typeface of the earlier mark. Since the differences are of mere decorative nature, the signs are highly similar.

Aurally, the signs coincide in their only word element ‘OTTO’, which makes them identical.

Conceptually, the signs will either be seen as a given name or a reference to a type of engine. In both cases, they are identical.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant services from the perspective of part of the public in the relevant territory that will see the mark as a given name. For them, the mark has normal distinctiveness. The rest of the public will see the mark as alluding to a type of engine, which decreases its distinctiveness below average given the actual services concerned.

5. Other arguments

In support of its arguments on common names, the applicant cites the Office guidelines. However, the Opposition Division found that the relevant paragraph, in fact, argues the opposite of what the applicant claims since it reads as follows: ‘The rule of thumb is that when two conflicting signs consist exclusively of the same first name, consumers are likely to perceive the similar/identical goods/services marketed under those marks as coming from the same source. It is clear that in the absence of any differentiating element, likelihood of confusion is the necessary conclusion.’ (Guidelines for Examination in the Office, Part C, Opposition, Double Identity and Likelihood of Confusion – Global Assessment, Page 15).

Furthermore, the Board of Appeal decision referred to by the applicant (25/01/2002, R0095/2000-2, LAURA/LAURA MERCIER) dealt with a situation where one sign consisted of a given name while the other was composed of a surname and a given name. The case referred to is, therefore, not applicable to the present proceedings.

In its observations, the applicant also argues that its sign and the opponent’s mark have been coexisting peacefully. According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of 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 on 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) on a 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. 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.

Furthermore, the applicant argues that the earlier trade mark has a lower distinctive character given that there are many trade marks that include the word ‘OTTO’. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the said word element. Under these circumstances, the applicant’s claims must be set aside.

6. Global assessment 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods and services compared are similar to a low degree while the signs are identical aurally and conceptually and highly similar visually. Both signs consist of one single element and they only differ in minor decorative features of the earlier mark. The impact made by the aural and conceptual identity between the signs is such an important factor that it is capable of offsetting the fact that the goods and services are found to be similar to a low degree only and even the fact that the earlier has a lower degree of distinctiveness for part of the public that understands the word ‘OTTO’ as referring to a type of engine.

It is noted also that even consumers with higher than average attention would be lead to confuse the signs as they would also rely on their imperfect recollection. (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 619 393. It follows that the contested trade mark must be rejected for the contested goods found to be similar to a low degree to the opponent’s services.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 The opponent has also based its opposition on European Union trade registration No 13 713 151 for the figurative mark .  Since this mark is nearly identical to the one which has been compared and cover the same scope of services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cynthia DEN DEKKER

Ferenc GAZDA

Birgit FILTENBORG

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.