OPPOSITION No B 2 727 892
Voltéo Développement, 37, Avenue de Magudas, 33185 Le Haillan, France (opponent), represented by Cabinet Plasseraud, 1, rue Lafaurie de Monbadon, 33000 Bordeaux, France (professional representative)
a g a i n s t
Voltez GmbH, Gartenstraße 42, Potsdam 14482, Germany (applicant).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 892 is upheld for all the contested goods, namely
Class 7: Current generators.
Class 9: Apparatus, instruments and cables for electricity.
Class 12: Vehicles and conveyances.
2. European Union trade mark application No 15 270 598 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 270 598, namely against some of the goods in Class 7 and all the goods in Classes 9 and 12. The opposition is based on French trade mark registration No 3 685 012 for the word mark ‘Voltéo’ and European Union trade mark registration No 9 615 261 for the word mark ‘VOLTEO’, on French company name ‘VOLTEO DEVELOPPEMENT’ and on French non-registered trade name ‘Voltéo’. The opponent invoked Article 8(1)(b) and Article 8(4) 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 French trade mark registration No 3 685 012.
- The goods
The goods on which the opposition is based are the following:
Class 9: Scientific (other than for medical purposes), 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, reproduction or processing of sound or images; magnetic data carriers, recording discs, optical discs; floppy-disks; ATMs and mechanisms for pre-payment apparatus; cash registers; calculating machines; data processing equipment and computers; fire-extinguishing apparatus; games software; computer software (recorded programs); peripheral devices for computers; batteries, electric; detectors; electric wires; electric relays; dungarees, costumes, gloves or diving masks; clothing for protection against accidents, radiation and fire; protection devices for personal use against accidents; spectacles (optics); optical goods; eyewear cases; diagnostic apparatus not for medical purposes; smart cards, cards with microprocessors; safety tarpaulins.
Class 12: Vehicles.
The contested goods are the following:
Class 7: Current generators.
Class 9: Apparatus, instruments and cables for electricity.
Class 12: Vehicles and conveyances.
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 7
The contested current generators are devices that convert mechanical energy to electrical energy for use in an external circuit. As such they are highly similar to the opponent’s apparatus and instruments for transforming, accumulating, regulating or controlling electricity in Class 9. Indeed, the goods under comparison are all used in relation to electricity in a complementary way, taking part in the process of producing electricity and processing it before it reaches its final use. Therefore, they are also similar in nature and purpose (i.e. complex devices used in relation to, either, generating, or transforming, accumulating, regulating or controlling electricity) and share the same distribution channels and points of sale. In addition, they can coincide in end consumers and are likely to be manufactured by the same kind of undertakings.
Contested goods in Class 9
Taking into account that the contested apparatus, instruments for electricity can only be goods for conducting, switching, transforming, accumulating, regulating or controlling electricity, they are identical to the opponent’s apparatus and instruments for transforming, accumulating, regulating or controlling electricity.
The contested cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.
Contested goods in Class 12
Vehicles are identically contained in both lists of goods.
A conveyance is a vehicle (see Collins Dictionary online at https://www.collinsdictionary.com/dictionary/english/conveyance). Therefore, the contested conveyances are synonym and identical to the opponent’s vehicles.
- 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 to a high degree are directed at the public at large as well as 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, or terms and conditions of the purchased goods. For instance, taking into consideration the price of vehicles such as cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).
- The signs
| Voltéo | |
|
Earlier trade mark |
Contested sign |
The relevant territory is France.
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).
Although it cannot be excluded that part of the public may perceive a reference to volts or to voltage in the initial parts of the earlier mark and the word element of the contested sign, and therefore establish a link with part of the goods at issue, namely those related to electricity, ‘Voltéo’ and ‘VOLTEZ’ have no meaning as a whole for the relevant public and are, therefore, distinctive. Moreover, it should be noted that 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.
The figurative element of the contested sign will be associated at least by part of the public with the colours of the German flag and perceived as an indication of the geographical origin of the relevant goods. Therefore, it is non-distinctive for the part of the public which perceives this element in such a way. In any event, it should be noted 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 sequence of letters ‘VOLTE-‘ whereas they differ in their respective final letters ‘O’ and ‘Z’, as well as in the diacritic sign of the letter ‘E’ in the earlier mark as well as in the figurative aspects of the contested sign which have no counterparts in the earlier mark. Taking into account the lesser impact of such elements, the signs are visually similar to an average degree.
Aurally, taking into account the fanciful nature of the word element of the contested sign, the final part of the contested sign, ‘-EZ’, may be pronounced differently by the relevant public. Nevertheless, the pronunciation of the signs coincides in any event at least in the sound of the letters ‛VOLT’, present identically in both signs. In view of the foregoing and taking into account the diacritic sign of the earlier mark, the pronunciation of the signs may coincide further in the sound of the letter ‘E’ that the signs have in common. The pronunciation of the signs differs in any event in the sound of the letter ‘O’ of the earlier mark and differs further in the sound of the letter ‘Z’ of the contested sign, if pronounced at all.
It should be noted that even if for part of the public the pronunciation of the signs should not coincide totally in the sound of their common letter ‘E’, it remains that any difference will hardly be perceptible.
In view of all the above, for part of the relevant public at least, the signs are aurally similar to a high degree.
Conceptually, as mentioned above, although the signs as a whole do not have any meaning for the public in the relevant territory, it cannot be excluded that part of the public perceives a reference to volts or voltage in both signs in relation to some of the goods. In such unlikely case, and taking into account the limited distinctiveness of ‘VOLT-‘ in the signs for these goods, the signs are conceptually similar to a low degree. For the remaining part of the public, as neither of the signs has a meaning, a conceptual comparison is not possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.
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 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 an element in the mark that is possibly weak for part of the goods and from the perspective of part of the public, as stated above in section c) of this decision.
- 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 (see Canon, § 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 certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. 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).
Account is 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). In this respect, it should be noted that 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). This is all the more true taking into account the identity or high similarity of the goods at issue in relation to signs that are at least visually similar to an average degree and aurally similar to a high degree and the normal distinctiveness of the earlier mark.
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 French trade mark registration No 3 685 012.
It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right French trade mark registration No 3 685 012 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(4) 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
| Katarzyna ZANIECKA | Martina GALLE | Frédérique SULPICE |
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.