OPPOSITION No B 2 583 980

Cicsa Indusriales del Calor, S.A., Pº De las Flores, 27 Naves 7 Y 8 P.I. Logipark, 28823 Coslada (Madrid), Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 – 1º B, 28020 Madrid, Spain (professional representative)

a g a i n s t

Zehnder Group International AG, Moortalstraße 1, 5722 Gränichen, Switzerland (applicant), represented by Patentanwälte Bregenzer und Reule Partnerschaftsgesellschaft mbB, Neckarstraße 47, 73728 Esslingen, Deutschland (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 583 980 is partially upheld, namely for the following contested goods:

Class 11:        Heating, ventilating and steam generating apparatus and installations, and components therefor, included in class 11; heating systems and installation using alternative kinds of energy; air-conditioning apparatus and installations; refrigerating apparatus; drying installations; heat storage apparatus; air filtering installations; filters for ventilating, air conditioning and air purifying apparatus; filters for air conditioning; air humidifying installations; air dehumidifying apparatus; driers (air -); ventilation apparatus and installations; systems, apparatus and installations for ventilating, air conditioning, air purifying, heat recovery, humidifying and dehumidifying purposes; radiators; heating/cooling radiators, heating/cooling convectors; panel radiators; heated towel rails; solar collectors and heating systems; installations for generating thermal energy from solar collectors; heat exchangers, not parts of machines; exhaust gas, air and water heat exchangers and systems; heat pumps; heat regenerators; heat/moisture exchangers (enthalpy exchangers); hot water cylinders; water heaters; de-icing apparatus and installations; electric heating apparatus and installations, electric heating cartridges and cartridge heaters; electrical installations for refrigerating; electric cooling cartridges; electric cartridge coolers.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 279 921, namely against all the goods in Class 11. The opposition is based on Spanish trade mark registration No 2 737 868. The opponent invoked Article 8(1)(b) EUTMR.

2.        European Union trade mark application No 14 279 921 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based Spanish trade mark No 2 737 868.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 03/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 03/07/2010 to 02/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 11:        Radiators.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/062016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/09/2016 to submit evidence of use of the earlier trade mark. This deadline was extended upon request by the opponent until 03/11/2016. On 28/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• 126 copies delivery notes for the period of time between 27/09/2010 und 09/12/2015. The delivery notes are issued by the opponent to different branches of Leroy Merlin España and majority of them include the word ‘ZETA’ in the description of the goods, which is in Spanish. The delivery notes between 27/09/2010 and 25/02/2014 include the earlier mark as registered, only in black and white on the top left corner.
• 127 copies of invoices for the period of time between 15/07/2010 and 03/07/2015. The invoices are issued by the opponent to different addresses mostly in Spain. A few invoices are addressed to subjects in Portugal, Poland, France, The Netherlands, Andorra, Lithuania, United Kingdom, Switzerland, Morocco and Italy. Many of the invoices include the word ‘ZETA ’ in the description of the goods (in Spanish) and the following signs are depicted on the top left corner  
• Copy of a data sheet of different models of towel rails, including the models ‘ZETA X’ and ‘ZETA T’, the depiction of relevant products is included. The earlier trade mark is present on the right bottom corner whereas the Leroy Merlin logo is present on the top left corner and the following sign on the top right corner. The document is in Spanish.
• Undated catalogue with the title ‘Radiador toallero Z-T eléctrico’, including the earlier trade mark and the depiction of the products and description of their characteristics.  
• Price list for 2012. The earlier mark is depicted on some of the pages of this document; however, it seems that the prices and information included are in relation to the radiators bearing the brand Zenith.
• Excerpts from the Leroy Merlin’s catalogues for Spain and Portugal for the period between 2011 and 2015, including towel rails ‘ZETA’.
• Catalogue for 2014/2015 with the title ‘The Art of Heating’ bearing the  and the opponents logo on the first page and including i.a. depiction of the products called ‘ZETA T’, ZETA X’, ‘ZETA R’, ‘ZETA ONE / ZETA CB’ description of their characteristics (in Spanish) and price (in Euros). It includes a photo of an angle valve for the radiators bearing the dominant element of the earlier mark, the stylized word ‘ZETA’.
• Catalogue for 2012/2013 with the title ‘Heating as art, Chauffage est devenu un art’ including the following logo   as well as the opponent’s logo on the first page of the catalogue, including the depiction of products ‘ZETA X’, ‘ZETA T’ and their description.  It also includes photos of an angle valve for the radiators bearing the dominant element of the earlier mark, the stylized word ‘ZETA’. The catalogue is in English and French.
• Catalogue for 2011/2012. Including the earlier trade mark, the opponent’s logo and the following logo . It is clear that the products depicted in the catalogue, each of them called with a different name, e.g. Magna, Beck, Sahara belong to the series of ZETA INOX. The catalogue also includes photos of an angle valve for the radiators bearing the dominant element of the earlier mark, the stylized word ‘ZETA’. The catalogue is in Spanish.
• Catalogue for 2011/2012 of the products belonging to ZETA SERIES, the earlier mark is depicted in the catalogue as well as the following logo  . The catalogue also includes photos of an angle valve for the radiators bearing the dominant element of the earlier mark, the stylized word ‘ZETA’. The catalogue is in Spanish.
• Several instruction manuals of the models of the radiators from the series   . The manuals are in Spanish and Portuguese.
• Catalogue of the opponent’s products from 2010, including the earlier trade mark as well as the opponent’s logo and the following logo  . It includes the products, each of them bearing a different name, e.g. KREMLIN, SIRIO from the series ZETA INOX. There is a reference to ‘radiadores Zeta’ for example on the page 10, or to ‘los radiadores de acero inoxidable ZETA INOX, los radiadores con marca’ on page 11.
• Sample of boxes of products from the series ZETA COLLECTION.  

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The documents submitted demonstrate that the place of use is Spain. The delivery notes and invoices are in Spanish and were issued directly by the opponent (a Spanish company) to different entities with addresses in, inter alia, Spain.

The applicant contests the evidence of use filed by the opponent on the grounds that the earlier trade mark has not been used in Spain, as some documents indicate use of the opponent’s trade mark in other territories e.g. Portugal, France.

According to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

This principle also applies to earlier national trade marks. Therefore, the invoices issued to clients e.g. in France, Portugal show that the goods were distributed by a Spanish company (the opponent) with an address in, Pº De las Flores, 27 Naves 7 Y 8 P.I. Logipark, 28823 Coslada (Madrid), Spain. This clearly shows that the goods were exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

Time of use

Most of the evidence is dated within the relevant period. The opponent submitted also some undated evidence such as a product catalogue, sample of packaging, instruction manuals. These documents have to be seen in conjunction with the dated evidence and, therefore, may still be taken into consideration. Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the delivery notes and the invoices, supported by the products catalogues (whether from the opponent itself or from a third party, Leroy Merlin in this case), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The delivery notes and invoices issued by the opponent relate to the full duration of the relevant period and demonstrate the frequency of use of the marks during that period. Although the evidence does not indicate a particularly high commercial volume of use, it demonstrates that sales of goods offered under the earlier marks were made to various clients in Spain or were exported from Spain to clients in other countries. Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the delivery notes and invoices are non-consecutive and cover an extensive period, from 2010 to 2015, must also be taken into consideration. All this permits the inference that the invoices have been submitted merely as examples of sales and do not represent the total amount of sales of goods under the earlier marks realised by the opponent during the relevant period. Therefore, it is clear from the evidence submitted that the opponent distributed or provided goods under the earlier trade mark or its slight variations in the relevant market, and this gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period. In any case, the documents prove that use of the marks has been more than mere token use.

The applicant contests the evidence of use filed by the opponent on the grounds that a substantial part does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

• Use of the mark as registered

The earlier mark is the following figurative mark .

In the evidence submitted it appears as registered, for example in the data sheets, some of the catalogues and in its slightly modified verbal forms such as ‘ZETA X’, ‘ZETA T’, ZETA CB’ on the invoices and on several other documents, mainly the catalogues. Furthermore, in several submitted documents e.g. in the catalogues, it appears for example in the following figurative forms: , , , .

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

Hence the use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). In particular, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

In the present case, the words ‘COLLECTION’, ‘INOX’, ‘SERIES’ will be understood by the relevant public with their respective meanings. The word ‘series’ will be perceived as ‘range of products’ (series de productos), ‘inox’ as a reference to the stainless steal (acero inoxidable in Spanish). The word ‘collection’ is in English, however due to the fact that the equivalent word in Spanish is ‘colección’, the Spanish consumers will understand its meaning without any difficulties. It is very common to refer to a range of products which have something in common as a collection. Bearing in mind the relevant goods (radiators), all the aforementioned verbal elements are non-distinctive and their addition does not alter the distinctive character of the earlier mark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

• Use in the course of trade

In the present case, the trade mark has been used in the course of trade. This can be deduced, in particular, from the delivery notes and the invoices submitted by the opponent and dated between 2010 and 2015.

• Use for the relevant goods

The documents submitted concern radiators, whether they are heated towel rails or conventional radiators. Hence the earlier trade mark is considered to have been used for radiators.

Overall assessment of the proof of use

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

1. The goods

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

Class 11:        Radiators.

The contested goods are the following:

Class 11:        Heating, ventilating and steam generating apparatus and installations, and components therefor, included in class 11; heating systems and installation using alternative kinds of energy; air-conditioning apparatus and installations; refrigerating apparatus; drying installations; water supply and sanitary apparatus and installations; heat storage apparatus; air filtering installations; filters for ventilating, air conditioning and air purifying apparatus; filters for air conditioning; air humidifying installations; air dehumidifying apparatus; driers (air -); ventilation apparatus and installations; systems, apparatus and installations for ventilating, air conditioning, air purifying, heat recovery, humidifying and dehumidifying purposes; radiators; heating/cooling radiators, heating/cooling convectors; panel radiators; heated towel rails; solar collectors and heating systems; installations for generating thermal energy from solar collectors; heat exchangers, not parts of machines; exhaust gas, air and water heat exchangers and systems; heat pumps; heat regenerators; heat/moisture exchangers (enthalpy exchangers); hot water cylinders; pressure water tanks; water heaters; de-icing apparatus and installations; electric heating apparatus and installations, electric heating cartridges and cartridge heaters; electrical installations for refrigerating; electric cooling cartridges; electric cartridge coolers.

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.

It is worth mentioning that a radiator is a device, usually a container filled with steam, water or another liquid that gives out heat, often as part of a heating or cooling system.

Radiators are identically contained in both lists of goods.  

The contested heating apparatus and installations, and components therefor, included in class 11, heat storage apparatus include, as a broader category the opponent’s radiators. 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 heating systems and installation using alternative kinds of energy; systems, apparatus and installations for heat recovery; solar heating systems; heat exchangers, not parts of machines; exhaust gas, air and water heat exchangers and systems; electric heating apparatus and installations overlap with the opponent’s radiators. Therefore, they are identical.

The contested heating/cooling radiators, panel radiators; heated towel rails are included in the broad category of the opponent’s radiators. Therefore, they are identical. 

The contested heating/cooling convectors; heat regenerators; heat/moisture exchangers (enthalpy exchangers) have the same nature and purpose as the opponent’s radiators. They can coincide in producer, end user and distribution channels. Therefore they are highly similar. 

The contested air conditioning apparatus and installations; ventilating and steam generating apparatus and installations, and components therefor, included in Class 11 perform cooling, heating or ventilation that modifies the condition of air in a closed space. They are considered as highly similar to the opponent’s radiators as they can have the same purpose (heating). They can coincide in producer, end user and distribution channels. Moreover, to a certain extent, they may be in competition.

The contested solar collectors; installations for generating thermal energy from solar collectors; heat pumps; hot water cylinders; water heaters; electric heating cartridges and cartridge heaters; de-icing apparatus and installations can be all used, inter alia, for heating purposes. They are considered similar to the opponent’s radiators as they have the same purpose can coincide in producer, end user and distribution channels.

The contested air filtering installations; filters for ventilating, air conditioning and air purifying apparatus; filters for air conditioning; air humidifying installations; air dehumidifying apparatus; driers (air -); ventilation apparatus and installations; systems, apparatus and installations for ventilating, air conditioning, air purifying, humidifying and dehumidifying purposes; refrigerating apparatus; drying installations; electrical installations for refrigerating; electric cooling cartridges; electric cartridge coolers are in general apparatus and their parts used to change or replace air in any space in order to impact the quality, temperature or other characteristics of the air. The opponent’s radiators are devices for heating the surrounding space (air). Hence, they have the same broad purpose of conditioning air in closed environments. They often coincide in their producers and target the same consumers. Furthermore, they are usually sold in the same outlets and through the same distribution channels. Therefore, they are similar.

However the contested water supply and sanitary apparatus and installations; pressure water tanks are dissimilar to the goods covered by the earlier mark. Their purpose is different, namely water storage and distribution. The items which belong to sanitary apparatus and installations are e.g. bathtubs, showers, sinks, water closets. All these goods and the opponent’s goods differ in their natures, purpose, trade channels, methods of use and are neither complementary nor in competition with each other. Although the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Neither the fact that some of goods at issue may be used in close proximity of each other (e.g. in the bathroom) ‘justifies a finding of similarity. In this regard, the Opposition Division points out, that complementarity has to be clearly distinguished from use in combination where goods are merely used together whether by choice or convenience. This means that they are not essential for each other (decision of 16/12/2013, R 634/2013-4 – ‘ST LAB’ § 20). In the present case, a strict complementarity between the goods does not exist.  

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 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 (e.g. a higher than average degree of attention will be paid when purchasing heating systems and installation using alternative kinds of energy but also radiators whereas an average degree of attention will be paid when purchasing filters for ventilating, air conditioning and air purifying apparatus).

3. The signs

	ZEHNDER ZETA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 is a figurative mark consisting of element ‘ZETA’ written in stylised letters in light blue with black-silverish framing. The word ‘Radiadores’ appears to the right of the top left corner of the letter ‘Z’, and hence is placed above the letters ‘eta’ of this element. It is depicted in light blue colour and in much smaller letters than the element ‘ZETA’. The sentence ‘Los Radiadores con marca’ presented in orange and significantly smaller letters then the other elements in the mark are positioned at the bottom of the whole composition, starting under the letter ‘Z’ and finishing under the letter ‘a’. Above the word ‘marca’ and placed within the bottom half of the letter ‘a’ is a small orange circle.    

The common element ‘ZETA’ will be understood by the relevant public as a reference to the last letter of the Spanish alphabet ‘Z’. In addition a part of the public might perceive it also as the sixth letter of the Greek alphabet and/or as the sixth star in a constellation.

None of these meanings are descriptive, allusive or otherwise weak for the relevant goods. Therefore, this element is distinctive.

The element ‘ZEHNDER’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

‘Radiadores’ in the earlier mark will be understood as ‘radiators’, the meaning of which meaning has already been described above. The phrase ‘Los Radiadores con marca’ would be perceived as ‘branded radiators, radiators with a brand’. Bearing in mind that the relevant goods are radiators, these elements are descriptive and laudatory respectively and as such are non-distinctive.

As regards the orange circle placed in the lower part of the letter ‘a’ of the element ‘ZETA’ in the earlier sign, it is of a purely decorative nature. Therefore, the verbal element ‘ZETA’ is the most distinctive element in that sign. Moreover, this element due to its size and position is the dominant element as it is the most eye-catching.

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 ‘ZETA’, which is distinctive. However, they differ in the first word of the contested sign and all the other words contained in the earlier mark, in addition to its graphic representation.

Since the common element ‘ZETA’ is the visually dominant and distinctive element in the earlier mark, and plays an independent distinctive role in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ZETA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛ZEHNDER’ of the contested mark. They also differ in all the other words contained in the earlier mark. Nevertheless, as explained above, due to their size and/or non/distinctive character, these additional words are less likely to be pronounced. Moreover, since all these words are non-distinctive in relation to the goods in question, they have a minimal impact in differentiating the sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, through the element ‘ZETA’, the signs conceptually similar to an average degree.

As explained above, the additional words in the earlier mark are non-distinctive and as such they have a minimal impact in differentiating the sign. As the word ‘ZEHNDER’ does not have any meaning in the relevant territory, its does not affect the recognition and comprehension of the word ‘ZETA’ in the contested sign.

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/some non-distinctive elements in the mark as stated above in section c) of this decision.

4. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

At the present case, the goods have been found partly identical, partly similar (to various degrees) and partly dissimilar. The marks have been found visually, aurally and conceptually similar to an average degree.

The marks coincide in the word element ‘ZETA’. This word is the only dominant element in the earlier mark and entirely distinctive in relation to the goods at issue. Although the earlier mark contains other words, they are smaller and non-distinctive, as described above. Hence, the consumer will refer to the earlier mark as ‘ZETA’ without any doubt. The contested mark also contains the meaningless word ‘ZEHNDER’ at the beginning. However, it does not change or affect the recognition and perception of the distinctive and independent word ‘ZETA’ in the contested sign, which moreover will be perceived by the majority of the relevant public as having the same concept, ‘ZETA’ being the last letter of the alphabet.

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division notes, that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.

Since the component ‘ZETA’ will be easily recognized and perceived in both signs and because of the said meaning of all the other words in the earlier mark and the findings of the above paragraph, the Opposition Division finds that the relevant consumer may perceive the contested sign as a variation of the earlier mark. Consequently, the public may attribute the same (or economically linked) commercial origin to the goods that are identical, even where the public’s degree of attention is higher.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 737 868.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar (to various degrees) to those 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

LYNN BURTCHAELL

Renata COTTRELL

Julia SCHRADER

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.