MAC POWER | Decision 2688862
Date Published: Oct 11, 2017
OPPOSITION No B 2 688 862
Mac-Johnson Controls Colombia, S.A.S. MAC-JCI, Carrera 35 No. 10-300 Acopi Yumbo – Valle, Colombia (opponent), represented by Claudio Prat Peñas, Ronda Ocho de Marzo número 77, 1º 2º, 08390 Montgat (Barcelona), Spain (professional representative)
a g a i n s t
Madeira & Madeira - Importação de Ferragens e Ferramentas,S.A., Zona Industrial da Pedrulha, Lote 13, 3050-183 Casal Comba, Portugal (applicant), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisbon, Portugal (professional representative).
On 23/03/2016, the Opposition Division takes the following
1. Opposition No B 2 688 862 is partially upheld, namely for the following contested goods:
Class 9: Measuring apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.
2. European Union trade mark application No 14 820 096 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 820 096, namely against all the goods in Class 9. The opposition is based on inter alia, European Union trade mark registration No 4 122 834. 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 Union trade mark registration No 4 122 834.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Batteries for vehicles, excluding batteries for computers.
Class 35: Advertising, business management, business administration, office functions, purchasing, sales, import, export, commercial representation services for products, including batteries and vehicle products in general, excluding wheel rims for vehicles.
The contested goods are the following:
Class 9: Clothing and footwear for protection against accidents, irradiation and fire; clothing and gloves for protection against accidents or wounds for use in welding; protective masks; eyewear and masks for protection against dust; weighing, measuring and signalling apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.
An interpretation of the wording of the opponent’s list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the opponent’s list of goods and 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘excluding’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 apparatus and instruments for accumulating electricity include, as a broader category the opponent’s batteries for vehicles, excluding batteries for 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 apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity and the opponent’s batteries for vehicles, excluding batteries for computers are of the same nature and have the same purpose, i.e. the flow of electricity and its management. They can have the same manufacturers and be distributed through the same channels; moreover they may target the same consumers. Therefore, they all are considered similar to a high degree to the opponent’s batteries for vehicles, excluding batteries for computers.
The contested measuring apparatus and the opponent’s batteries for vehicles, excluding batteries for computers may have the same producers, as well as, the same distribution channels. Moreover, they may be offered to the same consumers. Therefore, they are considered similar to a low degree.
The contested weighing and signalling apparatus and the opponent’s batteries for vehicles, excluding batteries for computers in Class 9 and advertising, business management, business administration, office functions, purchasing, sales, import, export, commercial representation services for products, including batteries and vehicle products in general, excluding wheel rims for vehicles services in Class 35 are of different natures, they do not have the same purposes, nor the same methods of use. Their producers, distribution channels, as well as targeted consumers are different. Furthermore, these goods are neither complementary to, nor in competition to each other. For all these reasons they are dissimilar.
The contested clothing and footwear for protection against accidents, irradiation and fire; clothing and gloves for protection against accidents or wounds for use in welding; protective masks; eyewear and masks for protection against dust that all are articles intended to cover various parts of human body and protect them against various types of hazards in order to avoid any potential injury or infection. This personal protective equipment is of a very different nature with respect of the opponent’s goods in Class 9 and services in Class 35. These goods and services have different purposes and methods of use. Also, they are produced and offered by different companies, they do not share distribution channels and they target at different consumers. Neither they are complementary to, nor in competition with each other. Consequently, they are considered dissimilar.
- 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 various degrees are directed at the public at large and also at professionals. The goods at issue are rather specialised goods and may demand specific professional knowledge or expertise, and therefore, depending on the type, kind and intended purpose of the measuring apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity the degree of attention of relevant public may vary from average to high. Moreover, the impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41).
- The signs
Earlier trade mark
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.
The common element ‘MAC’ and the word ‘POWER’ are likely to be understood by English-speaking consumers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The element ‘MAC’ may be understood by at least a part of the relevant English-speaking public as referring to ‘Mac raincoat, especially one made from a particular kind of waterproof cloth’ (Collins English Dictionary, online edition).
However, it can also be expected that a part of the English-speaking public will regard this word as meaningless and therefore, as it is not descriptive, allusive or otherwise weak for the goods and services of any of the signs, it is distinctive.
For the sake of procedural economy, the Opposition Division will then continue the examination of the opposition in relation to the part of the relevant public for which the element ‘MAC’ has no meaning and it has a normal degree of distinctiveness.
As regards the contested sign, it is a figurative sign that, a part of containing the meaningless term ‘MAC’, also contains the word ‘POWER’ depicted using white upper case letters, and placed below the word ‘MAC’ on a black rectangle serving as background. At the bottom of the sign, a green device is placed, namely a stylized wall plug which is over whole length of the side of the rectangle in the bottom.
Furthermore, the contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Moreover, this element is barely perceptible. Consequently, this will not be taken into consideration for the purposes of comparison.
The word ‘MAC’ in the contested sign is more distinctive, than the remaining meaningful element, namely the word ‘POWER’, which is understood as the ‘ability or capacity to do something’ (Collins English Dictionary online edition), and may be seen as week for some goods protected by the contested sign, namely for: apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity.
Furthermore, it is considered that the contested sign is composed of distinctive verbal elements ‘MAC POWER’ and less distinctive figurative elements in form of a green wall plug device and simple black rectangle serving as a background. Therefore, these verbal elements are more distinctive than the figurative elements.
The contested sign has no elements that could be considered clearly more dominant than other elements.
As regards the contested mark, account must be taken on the fact that 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 distinctive word element ‘MAC’. However, they differ in the additional word of the contested sign, that is the word ‘POWER’, a weak element, and in the figurative elements of this mark in the form of a green device of wall plug and a black rectangular background that, as mentioned above, have lesser impact on the consumers than the preceding word elements.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the only syllable of the word ‘MAC’ present identically in both signs. The pronunciation differs in the syllables of the word ‛POW/ER’ of the contested mark, which has no counterpart in the earlier sign.
Since the differing element is a weak element, the signs are deemed to be aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the word ‘POWER’ of the contested sign as a meaningful, although weak element; the other part of the contested sign ‘MAC’ has no meaning for part of the English-speaking public in that territory. This coinciding element of the earlier mark ‘MAC’ would not be associated by at least a part of the relevant public with any meaning. Furthermore, the contested sign differs in the concept of a wall plug, as it includes depiction of such item. Therefore, the signs are not conceptually similar.
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 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.
- 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods and the opponent’s goods and services in Class 9 and 35 have been found partly identical, partly similar to various degrees and partly dissimilar. The distinctiveness of the earlier mark is normal. The level of attention of the relevant public is deemed to vary from average to high.
The signs are considered visually and aurally similar to an average degree. The whole single word mark ‘MAC’ is included in the contested sign. The additional elements of the contested sign play, for different reasons, a secondary role. While the word element ‘POWER’ is weak, and therefore less capable to attract the consumers’ attention, the additional figurative elements of the contested sign are also of lesser importance, and for the reasons seen above in section c) of the present decision, they are not capable of deflecting the consumers’ attention from the coinciding element ‘MAC’ that will have the most of the consumers’ attention.
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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 4 122 834. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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.
The opponent has also based its opposition on the following earlier trade marks:
- European Union trade mark registration No 4 027 587, a figurative mark
for the goods in Class 9 and the services in Class 35,
- European Union trade mark registration No 12 407 615, a word mark ‘MAC POWER PACK GOLD PLUS’ for the goods in Class 9.
Since these marks contain identical word element ‘MAC’ to the one which has been compared and contain additional figurative/word elements, furthermore as they cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to the goods in Class 9 for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
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.