OPPOSITION No B 2 730 672

Brannstrom Sweden AB, Uddevallagatan 14, 416 70 Göteborg, Sweden (opponent), represented by Bergenstråhle & Partners Småland AB, Lasarettsgatan 17, 331 30 Värnamo, Sweden (professional representative)

a g a i n s t

Qionglei Zheng, Calle Bembibre N°4-52, 28947 Fuenlabrada (Madrid), Spain (applicant)

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 672 is partially upheld, namely for the following contested goods:

Class 9:         Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment; Diving equipment; Measuring, detecting and monitoring instruments, indicators and controllers.

2.        European Union trade mark application No 15 322 985 is rejected for all the above goods. It may proceed for the remaining goods.

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 15 322 985, namely all the goods in Class 9 and part of the goods in Class 11. The opposition is based on, inter alia, European trade mark registration No 9 543 811. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the notice of opposition the opponent indicated that the opposition is directed against all the goods in Class 9 and part of the goods in Class 11. In its further submissions however it states that, as regards Class 9, the opposition is directed only against certain goods within that Class.

This contradicts the indications in the notice of opposition and the opponent did not explicitly declare that it wants to restrict the scope of the opposition. Therefore, the Office will proceed with the examination of the opposition based on the opponent’s indications in the notice of opposition, namely that is filed against all the goods in Class 9 and part of the goods in Class 11.

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 trade mark registration No 9 543 811.

1. The goods

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

Class 9         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;  Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers; Fire-extinguishing apparatus.

The contested goods are the following:

Class 9         Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment; Diving equipment; Recorded content; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers. 

Class 11         Regulating and safety accessories for water and gas installations; Industrial treatment installations.

As a preliminary remark, 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.

Contested goods in Class 9

Educational apparatus; signalling devices; measuring instruments are identically contained in both lists of goods (including synonyms). 

The contested navigation, guidance, tracking, targeting and map making devices are included in the broad category or overlap with, the opponent’s nautical apparatus and instruments therefore, they are identical.

The contested measuring indicators and controllers are included in the broad category of the opponent’s measuring apparatus and instruments therefore, they are identical.

The contested educational simulators are included in the broad category of the opponent’s teaching apparatus and instruments therefore, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category or overlap with, the opponent’s scientific apparatus and instruments therefore, they are identical.

The contested optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments; therefore, they are identical.

The contested apparatus, instruments for electricity include, as a broader category, or overlap with, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested devices for treatment using electricity overlap with the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested safety, security, protection devices overlap with the opponent’s life-saving apparatus and instruments. Therefore, they are identical.

The contested audiovisual equipment overlaps with the opponent’s cinematographic apparatus and instruments. Therefore, they are identical.

The contested information technology equipment overlaps with the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested diving equipment overlaps with the opponent’s signalling apparatus and instruments as the opponent´s goods also contain signalling devices that are specifically intended for diving. Therefore, they are identical.

The contested detecting and monitoring instruments, indicators and controllers are included in the broad category of the opponent’s surveying apparatus and instruments; therefore, they are identical.

The contested cables for electricity are similar to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity as they can coincide in purpose, relevant public, producer and distribution channels.

The contested recorded content; magnets, magnetizers and demagnetizers are dissimilar to all the opponent´s goods in Class 9. They have a different nature and purpose, they differ in their 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 11

Regulating and safety accessories for water and gas installations; industrial treatment installations are dissimilar to the opponent´s goods in Class 9. They have a different nature and purpose, they differ in the targeted public and producers and are neither in competition nor complementary to each other.

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 found to be identical are partially directed at the public at large as well as at business customers with specific professional knowledge or expertise. They may vary in price and complexity; therefore the attention of the relevant public will vary from average to high.

3. The signs

PB	PB POWER BEST
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).

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements POWER and BEST of the contested sign are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in the United Kingdom, Ireland and Malta.

The element PB, present in both signs, has no meaning for the relevant public and is, therefore, distinctive.

The element POWER of the contested sign will be associated with a source of energy, especially electricity, used to operate e.g. lights, heating, machinery and other devices. Bearing in mind that the relevant goods can be powered by a source of energy, e.g. electricity, this element is non-distinctive for these goods, namely all the applicant´s goods in Class 9.

The element BEST of the contested sign is the superlative of the English word good and is used to denominate the most excellent of a particular group, category, etc. This element is non-distinctive for all the applicant´s goods in Class 9, as it merely highlights that they are the best in their respective category.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the distinctive letters PB, forming the entirety of the earlier mark and the first verbal element of the contested sign. They differ in the additional verbal elements POWER (non-distinctive) and BEST (non-distinctive) of the contested sign, which have no counterpart in the earlier mark.

Even though the marks differ considerably in their length, the coinciding beginning of the signs has to be taken into account, as well as the fact that they only differ in non-distinctive elements.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, although the contested sign as a whole does not have any meaning for the public in the relevant territory, its elements POWER and BEST will be associated with the meanings as explained above. However, the earlier mark has no meaning in that territory.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 goods have been found to be partially identical, similar and dissimilar. The signs are visually and aurally highly similar. The attention of the relevant public will vary from average to high and the distinctiveness of the earlier mark is normal.

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.

Given that the contested sign incorporates the entire earlier mark in its beginning, whereas the differences between the signs are confined to non-distinctive elements, it is highly conceivable that the relevant consumer may perceive the contested mark as a sub-brand or a variation of the earlier mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, even for consumers with a high level of attention. Therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the 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.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 9 543 778 “PB 200” (word), registered for

Class 9         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a further element, namely the number 200, which is not present in the contested trade mark. Moreover, it covers mostly the same scope of goods.

The only additional goods covered by this earlier right, namely apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; calculating machines, data processing equipment and computers are also dissimilar to the remaining contested goods, namely recorded content; magnets, magnetizers and demagnetizers in Class 9 and regulating and safety accessories for water and gas installations; Industrial treatment installations in Class 11.

Whilst the opponent´s apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers might be used in the creation of or contain the contested recorded content, this fact in itself is not sufficient to justify a finding of similarity, as the goods still differ in their nature, purpose, method of use, usual commercial origin and relevant public.

Equally, the fact that the opponent´s magnetic data carriers include a magnetized medium to store data is not sufficient to find similarity with the contested magnets, magnetizers and demagnetizers as the goods still differ in their nature, purpose, method of use, usual commercial origin and relevant public.

Finally, there are no points of contact whatsoever between the contested regulating and safety accessories for water and gas installations; Industrial treatment installations in Class 11 and the opponent´s apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; calculating machines, data processing equipment and computers.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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 will 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

Lars HELBERT

Tobias KLEE

Sigrid DICKMANNS

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.