OPPOSITION No B 2 358 359

Power Integrations, Inc., 5245 Hellyer Avenue, San Jose, California CA 95138, United States of America (opponent), represented by Fish & Richardson P.C., Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 München, Germany (professional representative)

a g a i n s t

Mann Enterprises LTD, Unit E, Brocks Business Centre, Homefield Road West, Haverhill Suffolk CB97BN, United Kingdom, (applicant), represented by Von Boetticher Rechtsanwälte Partnerschaftgesellschaft MBB, Oranienstr. 164, 10969 Berlin, Germany (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 358 359 is upheld for all the contested goods.

2.        European Union trade mark application No 12 607 198 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 607 198 for the word mark ‘The Pi Hut’. The opposition is based on, inter alia, European trade mark registration No 8 466 708 for the word mark ‘PI EXPERT’. 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 trade mark registration No 8 466 708.

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 9: Computer software, in particular for designing power supply and power conversion systems.

The contested goods are the following:

Class 9: Cases adapted for computers; components for computers, excluding power adapters other than such for single-board computers for hobbyist and educational use; computer add-on boards; computer cabling; computer hardware; computer software; computers; phone plugs; power adapters for single-board computers for hobbyist and educational use; wireless computer peripherals; computer networking and data communications equipment; memory sticks; computers and computer hardware.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested computer software is identically mentioned in the opponent’s list of goods. These goods are, therefore, identical.

The contested cases adapted for computers; components for computers, excluding power adapters other than such for single-board computers for hobbyist and educational use; computer add-on boards; computer cabling; phone plugs; power adapters for single-board computers for hobbyist and educational use; wireless computer peripherals; computer networking and data communications equipment; memory sticks are all kinds of peripherals adapted for use with computers. The earlier computer software, in particular for designing power supply and power conversion systems, is similar to these contested peripherals adapted for use with computers, as they can coincide in end user and distribution channels. Furthermore, they are complementary.

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

The contested computer hardware; computers; computers and computer hardware are similar to the opponent’s computer software, in particular for designing power supply and power conversion systems. They can coincide in producer, end user and distribution channels. Furthermore, they are complementary.

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 to a more professional public, for example in the IT-field.

The degree of attention varies from average to above average, since some of the goods are quite specialised, their price could be high and they are infrequent purchases.

3. The signs

PI EXPERT	The Pi HUT
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).

As both of the marks are word marks, it is irrelevant whether they are written in lower case or upper case letters or a combination thereof (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57). Furthermore, being word marks, they do not have any element that could be seen more dominant than the other(s).

The common verbal element, ’PI’, is meaningful in the whole relevant territory. It refers to the ratio of the circumference of a circle to its diameter, a number which is represented in mathematics by the 16th letter of the Greek π. This term is distinctive in relation to the goods at issue.

In the earlier mark, the element ’PI´ is followed by the term ‘EXPERT’ that will  be understood by the majority of the relevant public throughout the European Union as meaning ‘experienced professionals’, due to the identical or similar equivalents in the respective languages of the Member States. Consequently, this term will be perceived as a promotional laudatory statement which serves merely to highlight positive aspects of the relevant goods, namely that they are provided by professionals or produced for professionals.

The first element of the contested mark, ‘THE’, is a basic English word and will be associated by the consumers in question with the English definite article, namely as a determiner that expresses the reference to that noun. Its capacity to identify the goods covered by the marks as coming from a particular undertaking is low. Therefore, it has a low distinctiveness.

The second element of the contested sign, ‘Pi’, will be perceived as having the same meaning as in the earlier mark and is normally distinctive for the goods in question.

The English word ‘HUT’ placed in third position in the contested sign is understood in part of the EU, for example, in the English-speaking part as referring to ‘a small house with only one or two rooms, especially one which is made of wood, mud, grass, or stones’ (see Collins English Dictionary online). In other parts of the territory, this element has no meaning. The Opposition Division will first examine the opposition in relation to the part of the public for which ‘HUT’ has no meaning and has a normal degree of distinctiveness. Therefore, the relevant public is the part of the public for which `HUT´ has no meaning.

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.

Visually and aurally, the signs coincide in the element ‘PI’ and differ in the non-distinctive or weak words ’expert’ (earlier mark) and ’the’ and the distinctive word ’Hut’ (contested sign). Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive both signs as including the same concept inasmuch as they refer to ‘PI’. The difference between the signs lays in the meaning of the non-distinctive and weak terms ‘expert’ of the earlier mark and ’The in the contested sign, both having a very limited impact on the comparison of the signs. Furthermore, the word ’Hut’ has no meaning. To this extent, the signs are conceptually highly 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.

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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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 are identical and similar. The earlier mark has an average degree of distinctiveness. The goods target both the public at large and a more professional public and the level of attention varies from average to above average.

The signs are visually and aurally similar to an average degree. They are conceptually highly similar on account of the coinciding, distinctive, element ‘PI’. Although the signs include further elements, these additional elements are not sufficient to differentiate the signs, as explained above. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counteract their similarities, in particular taking into account the fact that the goods are identical and similar.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (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 of the public, even though it displays a high degree of attention. 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 8 466 708. It follows that the contested trade mark must be rejected for all the contested goods.

As this 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 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 marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Chantal VAN RIEL

Inés GARCIA LLEDO

Saida CRABBE

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.