ICE-WATTS | Decision 2760588

OPPOSITION No B 2 760 588

Ice IP S.A., rue des Tilleuls, 3, 8832 Rombach, Luxemburg (opponent), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Avi Rebibo, 37 rue Paul Vaillant Couturier, 92300 Levallois Perret, France (applicant).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 588 is partially upheld, namely for the following goods:

Class 9: Information technology and audiovisual equipment; diving equipment; devices for treatment using electricity; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; recorded content; apparatus, instruments and cables for electricity; scientific research and laboratory apparatus, educational apparatus and simulators; magnets; measuring, detecting and monitoring instruments, indicators and controllers; optical devices, enhancers and correctors.

2.        European Union trade mark application No 15 449 515 is rejected for all the above 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 15 449 515 namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 10 915 213. The opponent invoked Article 8(1)(b) EUTMR.

 

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, on 01/09/2016 the opponent was given until 06/01/2017 to substantiate its earlier rights. The evidence filed by the opponent on 03/01/2017 in relation to International trade mark registration designating the European Union No 1 152 655 and No 1 029 087 consist of an extract from the eSearch plus data base.

However, according to Rule 19(2)(a)(ii) EUTMIR, the extract from eSearch is not sufficient to substantiate the earlier rights in question. An extract emanating from the WIPO should have been provided.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 915 213.

  1. The goods

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

Class 9: Scientific, 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; magnetic data carriers, recording discs; compact discs, dvds and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software not for calculating insurance tariffs; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Information technology and audiovisual equipment; diving equipment; devices for treatment using electricity; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; recorded content; apparatus, instruments and cables for electricity; scientific research and laboratory apparatus, educational apparatus and simulators; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; optical devices, enhancers and correctors.

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.

The contested signalling devices; measuring instruments are identically contained in both lists of goods (including synonyms).

The contested information technology equipment includes, as a broader category, the opponent’s computers. 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 audiovisual equipment includes, as a broader category, the opponent’s cinematographic apparatus and instruments. 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 diving equipment includes instruments such as submersible pressure gauges that are used to monitor the remaining breathing gas supply in scuba cylinders and consequently overlap with the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested devices for treatment using electricity are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested safety, protection devices are devices used to prevent serious or fatal accidents. Therefore, they are included in the broad category of the opponent’s life-saving apparatus and instruments and they are identical.

The contested security devices overlap with the opponent’s signalling apparatus and instruments, because both categories include, for example, acoustic alarms. Therefore, they are identical.

The contested navigation, guidance, tracking, targeting and map making devices include devices such as marine GPS and overlap with the opponent’s nautical apparatus and instruments. Therefore, they are identical.

The contested apparatus, instruments for electricity include, as a broader category, or overlap with, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. 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 cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested measuring indicators and controllers are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested monitoring instruments, indicators and controllers are included in the broad category of the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested recorded content includes as a broader category the opponent’s computer software not for calculating insurance tariffs. Therefore, they are identical.  

The contested detecting instruments, indicators and controllers is similar to the opponent’s signalling apparatus and instruments since they are complementary and their producer will normally coincide. They can also be purchased at the same points of sale and they are addressed to the same end consumer.

An electromagnet is a type of magnet that runs on electricity and that works because an electric current produces a magnetic field. An electromagnet consists of a length of conductive wire, usually copper, wrapped around a piece of metal. A current is introduced, either from a battery or another source of electricity, and flows through the wire. This creates a magnetic field around the coiled wire, magnetizing the metal as if it were a permanent magnet. Consequently, the contested magnets are similar to the opponent’s apparatus and instruments for conducting electricity since they have a similar nature and share the same purpose. They can be manufactured by the same producer and provided through the same undertakings. Finally, the end consumer may also coincide.

The contested magnetizers and demagnetizers are devices that make a substance or an object magnetic or that remove these magnetic properties. To that extent, they are dissimilar to any of the opponent’s goods since they have different natures and purposes. They also have a different method of use and are neither complementary nor in competition. Furthermore, producers and distribution channels will normally not coincide.

  1. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

  1. The signs