OPPOSITION No B 1 686 099
Gas Natural SDG, S.A., Plaça del Gas 1, Planta 16, 08003 Barcelona, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Exergy S.p.A., Via Degli Agresti, 6, Bologna, Italy (applicant), represented by Studio Torta S.p.A., Via Viotti 9, 10121 Torino, Italy (professional representative).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 686 099 is partially upheld, namely for the following contested goods and services:
Class 4: Gases being fuels.
Class 9: Apparatus, installations and instruments for energy generation and transmission.
Class 39: Distribution, supply and transport of energy.
Class 40: Generation of electricity from solar energy; production of energy.
2. European Union trade mark application No 8 849 192 is rejected for all the above goods and services. It may proceed for the remaining 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 8 849 192 for the wordmark ‘SEBIGAS’. The opposition is based on, inter alia, European Union trade mark registration No 6 967 194 for the figurative mark. 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 6 967 194.
- The goods and services
The goods and services on which the opposition is based, after the limitation made by the opponent in its application on 12/07/2016, are the following:
Class 4: Fuel compounds, namely natural gas.
Class 37: Installation, repair and maintenance of natural gas installations, natural gas units, natural gas pipelines, natural gas boilers, and fittings and installations using natural gas and electricity.
Class 39: Distribution, transport and storage of natural gas and electricity.
The contested goods and services are the following:
Class 4: Gases being fuels.
Class 9: Apparatus, installations and instruments for energy generation and transmission.
Class 39: Distribution, supply and transport of energy.
Class 40: Generation of electricity from solar energy; production of energy.
Class 42: Engineering, research and development in the field of energy generation.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The terms ‘namely’ and ‘being’ used respectively in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual goods and services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed goods and services.
As a preliminary remark, the applicant claimed that the applicant and the opponent have different fields of activities. This statement cannot be taken into account for the comparison of goods and services, since the comparison of the goods and services must be made on the basis of the terms included in the lists of the parties.
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 4
The contested gases being fuels overlap with the opponent’s fuel compounds, namely natural gas. Therefore, they are identical.
Contested goods in Class 9
The contested apparatus, installations and instruments for energy generation and transmission are similar to the opponent’s installation, repair and maintenance of natural gas installations, natural gas units, natural gas pipelines, natural gas boilers, and fittings and installations using natural gas and electricity in Class 37, as they can have the same origins, end users and distribution channels.
Contested services in Class 39
The contested distribution and transport of energy include, as broader categories, the opponent’s distribution, transport of natural gas. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested supply of energy overlaps with the opponent’s distribution of natural gas and electricity. Therefore, they are identical.
Contested services in Class 40
The contested generation of electricity from solar energy; production of energy are similar to a low degree to the opponent’s distribution, transport of natural gas in Class 39. All these activities are related to the provision of power and are complementary.
Contested services in Class 42
The contested engineering, research and development in the field of energy generation are dissimilar to all the opponent’s goods and services in Classes 4, 37 and 39. The contested services differ from the earlier goods in terms of their nature, purpose and method of use. They do not have the same usual origins, distribution channels and are not in competition.
- 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 different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention of the relevant public may vary from average to high according to the degree of specialisation and the environmental and/or safety considerations and constraints of the relevant goods and services.
- The signs
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SEBIGAS
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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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The component ‘SERVI’ of the earlier mark is meaningless in certain territories, for example, in those countries where German is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public. Since this component is meaningless for this part of the public, the distinctiveness of the earlier mark is normal. Therefore, at least as far as this part of the public is concerned, the applicant’s arguments regarding the weak distinctive character of the earlier mark are not relevant.
The earlier mark is a figurative mark consisting of two verbal components, ‘servi’ and ‘Gas’. They are clearly distinguishable due to the fact that the element ‘servi’ is in dark blue and the component ‘gas’ is in yellow and its first letter is in upper case while the remaining letters are in lower case. The component ‘Gas’ will be understood by the relevant public as a substance like air that is neither liquid nor solid and burns easily, that is used as a fuel for cooking and heating. Bearing in mind that in the field of relevant goods and services which are either gases or may be associated with gas, this element is not distinctive. The component ‘SERVI’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is a word mark consisting of a single word ‘SEBIGAS’. In this element, there can be differentiated two components, ‘SEBI’ and ‘GAS’. The component ‘GAS’ will be understood, as stated above. This element is non-distinctive in the field of the relevant goods and services. The component ‘SEBI’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.
Neither of the signs has any element that could be considered clearly more visually dominant than other elements.
Visually, the signs coincide in ‘SE**IGAS’. However, they differ in the additional letters ‘RV’ of the earlier mark, which are its third and fourth letter and in the letter ‘B’ of the contested sign. The differences are most likely to be overlooked by the relevant consumer, being located in the middle of the marks, where they are less noticeable. Moreover, consumers generally tend to focus on the beginning of the word elements of the signs 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.
Therefore, even though the sequence of letters ‘GAS’ present in both signs is non-distinctive, overall the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SE**IGAS’, present in both signs. The pronunciation differs, firstly, in the sound of the additional letter ‘R’ of the earlier mark, which is its third letter and the last of its first syllable and secondly, in the sounds of the first letters of the second syllables of the signs, namely ‘V’ of the earlier mark versus ‘B’ of the contested sign. The differences are most likely to be overlooked by the relevant consumer, being located in the middle of the marks, where they are less noticeable. It is important to note that the signs have an identical number of syllables (3) and the same rhythm and intonation.
Therefore even though the sequence of letters ‘GAS’ present in both signs is non-distinctive, the signs are aurally similar, at least to an average degree.
Conceptually, neither of the signs has a meaning as a whole for part of the public under analysis. Although the coinciding word ‘GAS’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this component is non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.
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 German-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive component in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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 and services in dispute are partly identical, partly similar (to different degrees) and partly dissimilar. The relevant public for assessing likelihood of confusion are the public at large and professional customers with specific knowledge or expertise, whose degree of attention varies from average to higher than average. Furthermore, the earlier mark has a normal degree of distinctiveness.
Il should be noted, the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The applicant refers to previous decisions of the Office to support its arguments (15/09/2010, B 1 443 946, AUTOGAS/ GREENGAS; 30/11/2010, B 918 070, NATURGAS/GAS NATURAL). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The cases mentioned are not sufficiently comparable with the present case to weigh significantly in favor of an identical outcome. In those cases, the signs were found to be less similar visually, aurally and/or conceptually than in the case in dispute.
Considering all the above and given that the signs are visually and aurally similar to an average degree and none of them has a concept that could help to make a distinction between the signs, there is a likelihood of confusion on the part of the German-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 partly well founded on the basis of the opponent’s European Union trade mark registration No 6 967 194. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.
The rest of the contested services, namely all the services in Class 42, are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
The opponent has also based its opposition on the Spanish trade mark registration No 2 831 926 for the figurative mark for the following goods and services: fuel compositions, in particular gas in Class 4; installation, repair and maintenance of gas installations, gas equipment, gas pipelines, boilers, gas and electric accessories and installations in Class 37; distribution, transport and storage of gas and electricity in Class 39.
This other earlier right invoked by the opponent covers goods and services which are clearly different to the remaining services in Class 42 of the contested trade mark. Most of them have already been compared above and all the opponent’s goods and services clearly differ from the contested services in Class 42 since they do not have the same natures, purposes, distribution channels and they are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
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
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Justyna GBYL
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Alexandra APOSTOLAKIS |
Adriana VAN ROODEN |
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.