OPPOSITION No B 2 646 738
Rosenberger Hochfrequenztechnik GmbH & Co. KG, Hauptstr. 1, 83413 Fridolfing, Germany (opponent), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft mbB, Herrnstr. 44, 80539 München, Germany (professional representative)
a g a i n s t
Rotator Oy, Tuottotie 4, PL 10, 33961 Pirkkala, Finland (applicant).
On 20/03/2017, the Opposition Division takes the following
1. Opposition No B 2 646 738 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 685 226 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 685 226. The opposition is based on European Union trade mark registration No 13 300 801. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Recorded content; information technology and audiovisual equipment; measuring, detecting and monitoring instruments, indicators and controllers; magnets, magnetizers and demagnetizers; navigation, guidance, tracking, targeting and map making devices; safety, security, protection and signalling devices.
Class 12: Vehicles and conveyances.
Class 35: Commercial trading and consumer information services; business analysis, research and information services.
Class 38: Telecommunication services.
Class 39: Navigation (positioning, and route and course plotting); global positioning system navigation services; cargo tracking services.
Class 42: IT services; science and technology services.
Class 45: Lost dog location services; fugitive recovery services; information services relating to health and safety; security consultancy; security services for the protection of property and individuals; stolen vehicle location services.
The contested goods and services are the following:
Class 9: Monitoring instruments.
Class 37: Maintenance and repair of instruments.
Class 39: Vehicle location services.
The applicant notes that ‘the opponent is marketing gps-devices for purposes of localization of equipment under trademark “rotrack” while applicant is using figurative trade mark “Rotatrack” for marketing products and services for the overall management of primarily heavy equipment: these include localization services but also possibility to monitor hours and geographical area where the equipment have been used, to set reminders for maintaining the equipment etc.’ In this respect, the Opposition Division notes that it can assess the similarity of goods and services based only on the goods and services for which the marks are registered and/or for which registration is sought.
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
Monitoring instruments are identically contained in both lists of goods.
Contested services in Class 37
The contested maintenance and repair of instruments includes maintenance and repair of various instruments and/or products, such as the opponent’s measuring, detecting and monitoring instruments in Class 9. Such maintenance and repair services can be provided by the same companies that manufacture the opponent’s goods, and these goods and services may target the same relevant public. Therefore, the Opposition Division finds that the contested services are similar to the opponent’s goods in Class 9.
Contested services in Class 39
The contested vehicle location services are services that are used to locate automobiles or other vehicles, for example, fleets of vehicles such as taxis and emergency vehicles (to find the location of such vehicles at any given moment). The Opposition Division finds that these services are included in and/or overlap with the opponent’s navigation (positioning, and route and course plotting), which includes all kinds of navigation and positioning services, for example to find the route and the position of a stolen bicycle or a missing person, or the location of a vehicle. Therefore, the contested services are identical to the opponent’s services.
- 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.
The applicant claims that the ‘goods and services marketed under both signs in question are targeted virtually exclusively to companies’.
The Opposition Division finds that, although some of the relevant goods and services may target companies or professionals (e.g. the vehicle location services) and will be offered by, for instance, taxi companies or emergency services operating ambulances or police vehicles, the goods and services at issue are also likely to be offered to non-professional consumers (e.g. average consumers who are trying to locate their stolen car). Therefore, the Opposition Division finds that the relevant goods and services found to be identical or similar are directed at the public at large. Where the goods or services of both marks target both the general public and specialists, the likelihood of confusion will be assessed for the part of the public displaying the lower degree of attention, as this part of the public will be more prone to confusion.
In the present case, the likelihood of confusion will be assessed taking into account the degree of attention of the public at large, which is average.
- The signs
Earlier trade mark
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The earlier mark, ‘rotrack’, and the verbal element of the contested sign, ‘Rotatrack’, are meaningless in certain parts of the relevant territory, for example in Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for which the marks’ word elements have no meaning.
In view of the foregoing, the earlier mark will be perceived as a fanciful and distinctive term in Spanish. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper or lower case letters, or in a combination thereof.
The word ‘Rotatrack’ of the contested sign is also distinctive (for the reasons explained above). However, the figurative element of the contested sign (the red marker) is, contrary to the applicant’s argument, non-distinctive for the relevant goods and services, since it is a common symbol used to pinpoint a desired location or address on a digital map. Therefore, the figurative element will not have a strong influence on how Spanish consumers perceive the contested sign.
Visually, the signs coincide in the letters ‘rot**rack’ and differ in the additional letters ‘at’ in the fourth and fifth positions in the contested sign’s word element. Consumers generally tend to focus on the first element of a sign when confronted with a trade mark. This is justified by the fact that 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. Furthermore, it should be noted that the contested sign’s word element is written in a standard font. Therefore, its stylisation is rather commonplace and will not have any impact on the public’s visual perception of the sign. In addition, the figurative element that surrounds the letter ‘o’ in the contested sign is non-distinctive and insignificant for the visual comparison of the signs. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters /rot**rack/ and differs in the sound of the additional letters /at/, which appear in the middle of the contested sign, where they are less noticeable than the coinciding initial and final sounds of the signs at issue. Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs’ word elements will be perceived as conveying any concept in Spanish. However, the figurative red marker in the contested sign will be perceived as a commonly used symbol (as explained above). Because it is non-distinctive, it has no impact on the conceptual comparison of the signs. Therefore, a conceptual comparison is not possible and does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and 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.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods and services are partly identical and partly similar. Moreover, the signs are visually and aurally highly similar and the earlier mark is distinctive to a normal degree. The degree of attention of the relevant public is deemed to be average, although some of the goods and services may target professional consumers. Account is also 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 the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 300 801. It follows that the contested trade mark must be rejected for all the contested goods and services.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.