OPPOSITION No B 2 762 725

Tesla Holding a.s., Poděbradská 56/186, 180 66 Praha 9 – Hloubětín, Czech Republic (opponent), represented by CMS Cameron McKenna LLP, Budapest, Károlyi utca 12, 1053, Hungary (professional representative)

a g a i n s t

Shenzhen Zun Yi Pin Technology Co. Ltd, 3/F, No.45 Futang Road, Tangxiayong Industrial Area, Songgang Sub-District, Bao An District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by AOMB Polska Sp. z o.o., Emilii Plater 53, 28th floor, 00 113 Warszawa, Poland (professional representative)

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 725 is upheld for all the contested goods.

2.        European Union trade mark application No 15 387 533 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 387 533, for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 7 050 024, for the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) 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 7 050 024.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Accumulators, electric, aerials, audiovisual teaching apparatus, distribution machines, automatic, electric batteries, cells, lightning arresters, lightning conductors, buzzers, electric, electric coils, electromagnetic coils, choking coils (impedance), cyclotrons, bar code readers, time switches, automatic, chips (integrated circuits), galvanic cells, grids for batteries, solar batteries, contact lenses, optical lenses, readers (data processing equipment), remote control apparatus, electric installations for the remote control of industrial operations, electric apparatus for remote ignition, detectors, diagnostic apparatus, not for medical purposes, slide projectors, optical lamps, diffraction apparatus (microscopy), dictating machines, magnetic disks, compact discs (audio-video),  luminous or mechanical road signs, electric wires, digital video disc players, electric cables, electric connections, welding apparatus, electric, electric devices for attracting and killing insects, hair-curlers, electrically heated, electrified fences, electronic pens (display units), electronic notice boards, thermionic lamps and tubes, facsimile machines, respirators for filtering air, fluorescent screens, cameras (photography), galvanic cells, galvanizing apparatus, electroplating apparatus, apparatus for changing record player needles, record players, hands-free sets for telephones, voting machines, speaking tubes, chronographs, time recorders,  indicators (electricity), inductors (electricity), integrated circuits, intercommunication apparatus, coaxial cables, junction sleeves for electric cables, starter cables, fibre optic cables, cinematographic cameras, batteries for pocket lamps, torches, integrated circuit cards (smart cards), cathodes, containers for microscope slides, collectors, electric, electric apparatus for commutation, terminals (electricity), capacitors, connectors (electricity), contacts, electric, photocopiers (photostatic, electrostatic, thermic), make-up removing appliances, electric, armatures (electricity), covers for electric outlets, darkroom lamps (photography), lasers, not for medical purposes, magnetic data media, magnetic cards (encoded), magnetic encoders, audio cassette recorders, video recorders, beacons, luminous, megaphones, converters, electric, microwave equipment, microprocessors, modems, chargers for electric batteries, furniture especially made for laboratories, signals, luminous or mechanical, navigational instruments, optical data media, notebook computers, objectives (lenses) (optics), screens, branch boxes (electricity), electric resistances, anti-interference devices (electricity), limiters (electricity), optical discs, optical apparatus and instruments, oscillographs, personal stereos, lighting ballasts,  ozonators, soldering irons, electric, luminous or mechanical signalling panels, computer peripherals, projection screens, plotters, calculating machines, computers, computer memories, fuses, semiconductors, printed circuits,  cases fitted with dissecting instruments (microscopy), processors (central processing units), projection apparatus, cathodic anti-corrosion apparatus, cassette players, compact disc apparatus, portable telephones, voltage surge protectors, circuit breakers, audio and video receivers, sound reproduction apparatus, radars, radios, radiotelephony sets, regulating apparatus, electric, electric light dimmers, rheostats, dimmer switches (electric), heat regulating apparatus, electric relays, rheostats, loudspeakers, vehicle radios, switchboards, control panels (electricity), satellite navigation apparatus, transmitters of electronic signals, sirens, distribution boxes (electricity), image sensors, scanners (data processing), recorded computer software, sonars, circuit closers, connectors for electric lines, masts for wireless aerials, welding electrodes, electric welding apparatus, flashing lights (luminous signals), junction boxes (electricity), telephone wires, telephone apparatus, TV sets,  transformers (electricity), transistors (electricity), automatic turnstiles, particle accelerators, scales, electricity conduits, video cameras, videophones, conductors, electric, switches, electric, transmitting sets (telecommunications), transmitters of electronic signals, high-frequency apparatuses, teaching apparatus,   data processing equipment, radiotelegraphy sets, sockets and other contacts (electric connections),  electric, answering machines, amplifying tubes, amplifiers,  flashlights (photography), electric irons, with express exclusion of electronic keys locks; access control devices and alarms.

The contested goods are the following:

Class 9: Chargers for electric batteries; Galvanic cells; Battery chargers; Galvanic batteries; Batteries, electric; Accumulators, electric; Solar batteries; Chargers for electronic cigarettes; Lithium ion batteries.

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.

Chargers for electric batteries; galvanic cells; batteries, electric; accumulators, electric; solar batteries are identically included in both signs.

The contested battery chargers include, as a broader category, or overlap with, the opponent’s chargers for electric batteries. 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 galvanic batteries; lithium ion batteries are included in the broad category of the opponent’s electric batteries. Therefore, they are identical.

The contested chargers for electronic cigarettes are similar to the opponent’s chargers for electric batteries since they have the same nature. Furthermore, they can have the same providers and distribution channels.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

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 earlier mark consists of the stylised element ‘TESLA’, preceded by a circular shape that contains an arc-like element. Although the contested sign is highly stylised, it does not block, however, the perception of the word element ‘TESLA’ by the relevant public.

A part of the relevant public, mainly the specialised public, will understood the element ‘TESLA’ in both signs as designating a ‘unit of energy measurement, unit of magnetic induction or magnetic flux density in the metre–kilogram–second system (SI) of physical units’ or as a reference to Nicola Tesla, a world-renowned Serbian-American inventor and engineer who discovered and patented the rotating magnetic field, the basis of most alternating-current machinery. Bearing in mind that the relevant goods are chargers, batteries and accumulators (all for electric purposes), it is considered that this element has a limited distinctiveness for this part of the public, since it could be understood as technical information or a property of the goods, given than ‘tesla’ is a characteristic of electric currents.

However, it is not expected that the remaining part of the public (e.g. consumers of electronic cigarettes and the general consumer of electric batteries) will associate the element ‘TESLA’ with any meaning. Therefore, for this part of the relevant public, it is distinctive.

Although the earlier mark contains a circular shape and the contested sign is highly stylised, it has to be pointed out 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).

Visually, the signs coincide in the element ‘TESLA’, which is the only verbal element in both signs. However, they differ in the figurative element of the earlier mark, as explained above, and their respective stylisations.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical.

Conceptually, as regards the part of the public that will understand the word ‘TESLA’, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived either as ‘a unit of measurement, which is used to indicate the strength of magnetic fields’ or as a reference to the Serbian-American scientist, the signs are conceptually identical for this part of the public.

For the remaining part of the public in the relevant territory neither of the signs has a meaning. Therefore, since a conceptual comparison is not possible in this case, the conceptual aspect 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, in the case of the specialised public the distinctiveness of the earlier mark must be seen as low for the goods in question, whereas it will be normal for the remaining part of the public.

5. 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).

In addition, 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, the goods are partly identical and partly similar, the earlier mark has either a low or an average distinctiveness, and the degree of attention of the relevant public varies from average to high.

The signs are visually highly similar and aurally identical since they comprise the same verbal element, ‘TESLA’. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26). Furthermore, although the earlier mark includes a circular shape and the element ‘TESLA’ is stylised in both signs, these aspects will have less impact in the overall impression of the signs, as stated above. From a conceptual perspective, the signs are either identical or a conceptual comparison is not possible, depending on the public’s perception in relation to the element ‘TESLA’ and the goods in question.

Although the distinctiveness of the coinciding element is low for a part of the relevant public, as explained above, the distinctiveness of the earlier mark is one of the factors taken into consideration when assessing likelihood of confusion on the part of the public. Thus, even with marks or elements that may be of a weak distinctive character there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61). The other factors, namely the high similarity of the signs from a visual perspective, the aural identity of the signs and the identity and similarity of the goods in question, are overwhelming, even for the specialised part of the relevant public.

All the foregoing aspects contribute to a finding of likelihood of confusion as there are no further elements in the contested sign capable of diminishing this impression of similarity.

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. Indeed, it is highly conceivable that the relevant consumer, even displaying a higher than average degree of attention, will perceive the contested mark as a sub-brand, in this case another (updated or modern) figurative version of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 411 758. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

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

Ric WASLEY

Marta GARCÍA COLLADO

Richard BIANCHI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.