OPPOSITION No B 1 682 700

Zero Emissions Technologies, S.A., Avda. de la Buhaira 2, 41018 Sevilla, Spain (opponent), represented by Pedro Maria García-Cabrerizo y del Santo, Vitruvio 23, 28006 Madrid, Spain (professional representative)

a g a i n s t

Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co. Ltd.) No. 2 Takara-cho, Kanagawa-ku, Yokohama-shi, Kanagawa-ken, Japan (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 682 700 is partially upheld, namely for the following contested goods and services:

Class 9:        Measuring apparatus and instruments; Vehicular telematics apparatus; Navigation apparatus for vehicles (on-board computers); Computers; Computer software; Computer programs; computer software games; flash drives; interactive video game programs; Electrical communication apparatus and instruments; Telephone apparatus; Vehicular radios communication apparatus and instruments; Data transmitters and receivers equipped with automobiles; Electronic machines; apparatus; all of these goods being used in relation to land vehicles and related goods and services.

Class 38:        News agencies (providing information of newspaper articles); News services for communication media; Providing user access to global positioning signals for navigation purposes; Mobile telephone communication; Telex services; Communication by computer terminals; Communication by telegram; Communication by telephone; Facsimile transmission; Paging Services; Radio broadcasting; Television broadcasting; Cable television broadcasting; Rental/Leasing of communication equipment, including telephones, facsimile machines; Information about data communication (including information by cable and radio communication networks); Communication by satellite; Communication by E-mail; Information about communication networks by computer terminals; Communication by VAN (value added network); Providing telecommunications connections to a global computer network; Internet portal services; Providing user access to the internet; Data communication with letters, image and sound by e-mail and computers; providing user access to global computer network (all of these goods being used in relation to land vehicles and related goods and services)

2.        European Union trade mark application No 8 879 256 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 8 879 256. The opposition is based on European Union trade mark registration No 5 785 407, European Union trade mark No 6 760 607 and Spanish trade mark registration No 278 890. 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 No 5 785 407.

1. The goods and services

The services on which the opposition is based are the following:

Class 35:        Business management; business administration; office functions; assistance with business management or office functions of an industrial company dedicated to everything relating to the environment, the control of CO2 emissions and the reduction of greenhouse gas emissions; import and export; computerized file management; compilation of data on a central computer; marketing studies; opinion polling; commercial or industrial business management assistance relating to franchises.

Class 37:        Construction of real estate; repair and installation; asphalting; installation of air conditioning and heating apparatus; quarrying services; bricklaying, plumbing and painting; disinfecting; rat exterminating; pipeline construction and maintenance.

Class 39:        Transport services in general; distribution, packaging and storage of goods; distribution of electricity, water and energy; air transport; transport by sea and inland waterway.

Class 40:        Material treatment services; abrasion; slaughtering of animals; destruction of waste and trash; boilermaking and ceramics; Food and drink preservation; leather working; production of energy; processing of oil.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; computer programming, in particular programs relating to the environment and the reduction of greenhouse gas emissions; quality control; oil-well testing; geological, biological, chemical and technical research; material testing; construction drafting; engineering and architecture.

The contested goods and services are the following:

Class 9:        Measuring apparatus and instruments; Counters; Time recording apparatus; Timers for automatic apparatus; Timers for switching on electrical devices at pre-programmed times; Remote control mechanisms; Batteries and cells; Battery charge indicators and monitors; Battery chargers; Power distribution or control machines and apparatus; Electricity distribution boxes; Rotary converters; Inverters; Phase modifiers; Chargers; Transformers (electricity); Electric wires and cables; Vehicular telematics apparatus; Charge completion automatic notification apparatus; Navigation apparatus for vehicles (on-board computers); Not-yet-inserted charge plug notification apparatus; Integrated circuits; Electric circuits; Computers; Computer software; Computer programs; Remote control systems for recharging; Electrodes; Magnets; Anti-theft warning apparatus; computer software games; mouse pads; flash drives; interactive video game programs; sunglasses. Electrical communication apparatus and instruments; Telephone apparatus; Vehicular radios communication apparatus and instruments; Data transmitters and receivers equipped with automobiles; Electronic machines; apparatus; all of these goods being used in relation to land vehicles and related goods and services.

Class 12:        Motor vehicles (including electric vehicles), automobiles, wagons, trucks, vans, sport utility vehicles, buses, recreational vehicles (RV), sport cars, racing cars, lorries, forklift trucks, and towing tractors (tractors), and structural parts and fittings therefore, tractors, anti-theft alarms for vehicles, adhesive rubber patches for repairing tubes or tires. All aforementioned goods being included in international class 12.

Class 38:        News agencies (providing information of newspaper articles); News services for communication media; Providing user access to global positioning signals for navigation purposes; Mobile telephone communication; Telex services; Communication by computer terminals; Communication by telegram; Communication by telephone; Facsimile transmission; Paging Services; Radio broadcasting; Television broadcasting; Cable television broadcasting; Rental/Leasing of communication equipment, including telephones, facsimile machines; Information about data communication (including information by cable and radio communication networks); Communication by satellite; Communication by E-mail; Information about communication networks by computer terminals; Communication by VAN (value added network); Providing telecommunications connections to a global computer network; Internet portal services; Providing user access to the internet; Data communication with letters, image and sound by e-mail and computers; providing user access to global computer network; all of these goods being used in relation to land vehicles and related goods and services.

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 term ‘including’, used in the applicant’s list of goods in services, and ‘in particular’, used in the opponent’s services, indicates that the specific goods and services 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, 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 9

The contested Navigation apparatus for vehicles (on-board computers) (all of these goods being used in relation to land vehicles and related goods and services) and the opponent’s Scientific and technological services are similar as they usually coincide in producer and end user. Furthermore they are complementary.

Programming is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

The contested Computer software, Computer programs, computer software games; flash drives; interactive video game programs (all of these goods being used in relation to land vehicles and related goods and services) are similar to the opponent’s computer programming as they usually coincide in producer/provider, end user and distribution channels.

Although the nature of the contested Vehicular telematics apparatus, Computers, Electrical communication apparatus and instruments; Telephone apparatus; Vehicular radios communication apparatus and instruments; Data transmitters and receivers equipped with automobiles; Electronic machines, apparatus (all of these goods being used in relation to land vehicles and related goods and services) and the opponent’s computer programming services in Class 42 is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

Although the nature of the contested Measuring apparatus and instruments and the opponent’s Scientific and technological services in Class 42 is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Therefore, they are considered similar to a low degree.

The remaining contested Counters; Time recording apparatus; Timers for automatic apparatus; Timers for switching on electrical devices at pre-programmed times; Remote control mechanisms; Batteries and cells; Battery charge indicators and monitors; Battery chargers; Power distribution or control machines and apparatus; Electricity distribution boxes; Rotary converters; Inverters; Phase modifiers; Chargers; Transformers (electricity); Electric wires and cables; Charge completion automatic notification apparatus; Not-yet-inserted charge plug notification apparatus; Integrated circuits; Electric circuits; Remote control systems for recharging; Electrodes; Magnets; Anti-theft warning apparatus; mouse pads; sunglasses (all of these goods being used in relation to land vehicles and related goods and services) are dissimilar to all of the opponent’s services in Classes 35, 37, 39, 40 and 42. Even though some of the goods are used in the provision of the services, this is not sufficient for finding similarity. These goods and services have a different nature and purpose. They are not complementary nor in competition. They target different consumers and they are normally not produced or provided by the same kind of undertakings.

Contested goods in Class 12

The contested Motor vehicles (including electric vehicles), automobiles, wagons, trucks, vans, sport utility vehicles, buses, recreational vehicles (RV), sport cars, racing cars, lorries, forklift trucks, and towing tractors (tractors), and structural parts and fittings therefore, tractors, anti-theft alarms for vehicles, adhesive rubber patches for repairing tubes or tires (All aforementioned goods being included in international class 12) are either motorised vehicles or thereto related goods. The opponent’s Transport services in general in Class 39 refer to a fleet of trucks or ships used to move goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. The opponent’s packaging and storage of goods refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. The nature, purpose and method of use of these services and the contested goods in Class 12 are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar. Furthermore, they are dissimilar to all the opponent’s services in Classes 35, 37, 39, 40 and 42. Even though some of the goods are used in the provision of the services, this is not sufficient for finding similarity. These goods and services have a different nature and purpose. They are not complementary nor in competition. They target different consumers and they are normally not produced or provided by the same kind of undertakings.

Contested services in Class 38

The contested News agencies (providing information of newspaper articles); News services for communication media; Providing user access to global positioning signals for navigation purposes; Mobile telephone communication; Telex services; Communication by computer terminals; Communication by telegram; Communication by telephone; Facsimile transmission; Paging Services; Radio broadcasting; Television broadcasting; Cable television broadcasting; Rental/Leasing of communication equipment, including telephones, facsimile machines; Information about data communication (including information by cable and radio communication networks); Communication by satellite; Communication by E-mail; Information about communication networks by computer terminals; Communication by VAN (value added network); Providing telecommunications connections to a global computer network; Internet portal services; Providing user access to the internet; Data communication with letters, image and sound by e-mail and computers; providing user access to global computer network (all of these goods being used in relation to land vehicles and related goods and services) fall under the broader category of telecommunications, which are services that allow people to communicate with one another by remote means. The opponent’s service computer programming in Class 42 is involved in the process of ensuring a telecommunication connection and can contribute to the functioning of the contested services. Therefore, all these services may have the same intended purpose of communicating data. Moreover, they can be complementary and can have the same providers and distribution channels (12/11/2008, T-242/07, QWEB; EU:T 2008:488; see also decision of 23/01/2014, R 0279/2013-4 – ‘huGO’). Thus, the aforesaid contested services are considered similar.

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 and services found to be similar (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise in, for example, the computer and scientific fields. The degree of attention may vary from average to high depending on the price and specialised nature or terms and conditions of the purchased goods and services. A higher degree of attention is paid for navigation apparatuses and computers.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

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 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.

In the present case, the Opposition Division finds it appropriate, in order to remove the need to examine the specific meaning (or lack thereof) of the marks (and their elements/components) for different parts of the relevant public, to focus the comparison of the signs on the non-professional Greek- and Hungarian-speaking part of the relevant public. For the latter the verbal elements ‘ZEROEMISSIONS’ (earlier sign) and ‘z ro Emission’(contested sign) have no meaning.

The earlier mark is consisting of the single element ‘ZEROEMISSIONS’ depicted in orange bold letters. As the element ‘ZEROEMISSIONS’ has no meaning for the relevant part of the public, it is, therefore, distinctive.

The contested sign is consisting of the verbal element ‘z ro Emission’, depicted in bold black letters. The component ‘z ro’ entails a round figurative element which, due to its depiction and position within the verbal element, will be perceived as a tilted lower case letter ‘e’. Consequently the verbal element is perceived as ‘zero Emission’, which has no meaning for the relevant part of the public. It is, therefore, distinctive.

Visually, the signs coincide in the sequence of letters ‘ZERO_EMISSION*’, as the figurative element in the contested sign will be perceived as the lower case letter ‘e’. However, the signs differ in the depiction of the letter ‘e’ of the contested sign, the additional letter ‘s’ of the earlier sign and their colours. Furthermore, the contested sign is depicted in upper and lower case letters, whereas the earlier sign is solely depicted in upper case letter. They differ also in the fact that there is a gap between the verbal components ‘ZERO’ and ‘EMISSION’ in the contested sign which is missing its counterpart in the other mark.

Bearing in mind all the above, the signs are considered visually similar to an average degree.

Aurally, the signs coincide in the sound of the sequence of letters ‘ZERO_EMISSION*’, as the figurative element in the contested sign will be pronounced as the letter ‘e’. They differ merely in the last letter ‘s’ of the earlier sign. Therefore, the signs are considered aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar (and even identical) 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 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.

5. Global assessment, other arguments and conclusion

The contested goods are partly similar and partly dissimilar to the opponent’s services. The contested services are similar to the opponent’s services. The degree of attention may vary from average to higher than average when choosing the relevant goods or services. The signs have been found visually similar to an average degree and aurally highly similar. The coincidences between the signs are found in the sequence of letters ‘ZRO_EMISSION*’ which is distinctive for the relevant goods and services. The differences, as explained above in section c) of this decision, are not sufficient to offset the similarity between the signs.

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).

Furthermore, 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). 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).

Considering all the above, there is a likelihood of confusion on the non-professional part of the Greek- and Hungarian-speaking part of the public. This applies also for the contested goods which were found similar to a low degree as the similarities between the signs are overwhelming. 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.

In its observations, the applicant argues that the descriptiveness and non-distinctiveness of combination of the English words zero-emission had been accepted and refers to Case R 194/2011-2 by the Boards of Appeal. When considering the statements of the Boards of Appeal that the combination of the English words zero-emission would be understood by every average consumer in the whole European Union and that this combination of words has a relative lack of distinctive character it is to be noted that even “finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with 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” (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). Therefore, even under these particular circumstances, the outcome, finding likelihood of confusion, due to the overwhelming similarities between the signs, even for the goods which were only found similar to a low degree, cannot be different. Under these circumstances, the applicant’s claims must be set aside.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to the services (including those similar to a low degree only) of the earlier trade mark.

The rest of the contested goods are dissimilar. 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 goods cannot be successful.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 785 407.

The opponent has also based its opposition on the following earlier rights:

Earlier European Union trade mark registration No 6 760 607 for the figurative mark registered for services in Classes 35, 37 and 39.

 Spanish trade mark registration No 278 890 for the figurative mark  registered in for services in Classes 35, 37, 39, 40 and 42.

The earlier European Union trade mark registration No 6 760 607 covers a narrower scope of goods than the ones compared in section a) of this decision. The earlier Spanish trade mark registration No 278 890 is also registered, in addition to the services compared in section a) of this decision, for services in Class 40. Although the scope of protection of these marks is broader as that it includes an additional class, the services are clearly dissimilar to the remaining contested goods. The services registered in Class 40 cover slaughtering, the treatment of food and beverage and different kind of materials and the processing of oil. Therefore, these services have no coinciding points with the remaining contested goods, which cover components of various kinds of vehicles and electrical and electronic components, alarms and equipment, as they differ in nature, producer/provider, relevant public, distribution channels and intended purpose. Furthermore, they are not in competition or complementary. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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

Judith NÉMETH

André Gerd Günther BOSSE

Plamen IVANOV

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.