OPPOSITION No B 2 468 109

Intenso GmbH, Gutenbergstraße 2, 49377 Vechta, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)

a g a i n s t

EDP - Energias de Portugal, S.A., Praça Marquês de Pombal, 12, 1250-162 Lisboa, Portugal (applicant), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative).

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 468 109 is upheld for all of the contested goods, namely:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

2. Community trade mark application No 12 944 121 is rejected for all of the contested goods. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 944 121, namely against all of the goods in Class 9. The opposition is based on international trade mark registration No 1 152 305 designating the European Union. The opponent invoked Article 8(1)(b) CTMR.

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

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 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

The contested goods are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

All of the goods are identically contained in both lists.

2. The signs

Memory 2 Move
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P, ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. This is also applicable to international registrations designating the European Union.

In the present case, for reasons related to the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus on the English-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the numeral ‘2’ followed by the word ‘MOVE’. In addition, there is a point of visual similarity residing in the last grapheme, ‘Y’, of the first word of each sign. However, they differ in the letter string ‘MEMOR-’ of the earlier mark and ‘ENERG-’ of the contested sign, the fact that the elements are separated by spaces in the earlier mark whereas all three elements are conjoined in the contested sign, and the red colour of the numeral ‘2’ in the contested sign.

Aurally, the pronunciations of the signs coincide in the sounds corresponding to the numeral ‘2’ and the word ‘MOVE’ present identically in both signs, and to that extent the signs are aurally similar. It is noted that as the numeral, ‘2’, is followed by the verb, ‘MOVE’, it can be reasonably assumed that the relevant public will pronounce the ‘2’ as if it were the preposition ‘to’. In addition, there is a point of aural similarity residing in the last phoneme, ‘Y’, of the first word in each sign. The pronunciations differ in the sound of the letter string ‛MEMOR-’ of the earlier mark and ‘ENERG-’ of the contested sign, which have no counterparts. However, the pronunciations are of the same length and share the same rhythm and intonation.

Conceptually, neither of the signs as a whole has any clear meaning for the relevant public, notwithstanding the fact that the individual elements will be understood as described below.

It can be reasonably assumed that the numeral, ‘2’, when followed by a verb will be perceived as a short form for the preposition ‘to’. It is common, particularly in internet slang (the language used for texting and chatting) and marketing language, to create such abbreviations by replacing phonetically similar words with numerals, for example 2 means ‘to’ and 4 means ‘for’. Therefore, ‘2 MOVE’ will be recognised as ‘to move’, referring to, inter alia, going or taking something from one place to another. Since this concept is present in both signs, they are conceptually similar to that extent.

The earlier mark’s word ‘MEMORY’ will be associated with, inter alia, the ability of the mind to store and recall past sensations, thoughts, knowledge, etc. and the part of a computer in which data or program instructions can be stored for retrieval. The contested sign’s word ‘ENERGY’ will be associated with, inter alia, a source of power derived from the utilization of physical or chemical resources.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a certain degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘MEMORY’ of the earlier mark will be associated with, inter alia, the ability of the mind or of the computer to store and recall/retrieve information. In the context of the electricity-related goods at issue, that concept neither is directly descriptive nor laudatory or commonplace. Therefore, the element has an average degree of distinctiveness.

The combination ‘2 MOVE’, present in both signs, will be perceived as referring to a change in location. That concept can be seen as a vague allusion to the portability of the goods at issue. Therefore, the degree of distinctiveness of the combined element ‘2 MOVE’ in each sign is somewhat below average.

The element ‘ENERGY’ of the contested sign will be associated with, inter alia, a source of power. As the relevant goods are directly related to electricity, it is considered that this element is non‑distinctive for these goods. Moreover, it is a commonplace word used in the marketing of such goods. The public understands the meaning of the element and will not pay as much attention to this non‑distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 clear 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 a weak element, as explained in section c) of this decision.

5. 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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of energy engineering. The degree of attention will vary from average in relation to inexpensive mass consumption goods, such as chargers for mobile phones, to higher than average in relation to technically sophisticated and expensive apparatus that are bought infrequently and are expected to last for a long time.

6. Global assessment, other arguments and conclusion

The Court has set out the essential principle that 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 (judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17). This principle of interdependence is crucial to the analysis of likelihood of confusion, particularly as, in the present case, the contested goods are identical to the opponent’s goods, whereas the similarity between the signs is moderate.

The similarities between the signs essentially result from the combined numeral-word element ‘2 MOVE’. Admittedly, the non-common elements result in certain visual, aural and conceptual differences. They, however, need to be weighed up against other circumstances of the case.

Specifically, whilst the common element, ‘2 MOVE’, is not particularly distinctive in relation to electrical equipment, the element ‘ENERGY’ in the contested sign is devoid of any distinctive character. On a visual level, it is noted that although, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (judgment of 07/05/2009, T‑185/07, ‘CK Creaciones Kennya’, paragraph 45). In the present case, notwithstanding the difference in the initial letter strings, ‘MEMOR-’ in the earlier mark vs. ‘ENERG-’ in the contested sign, the following sequences, ‘-Y 2 MOVE’, do coincide. The spaces between the elements in the earlier mark and the red colour of the numeral in the contested sign visually highlight the ‘2 MOVE’ component in each sign contributing to their overall similarity.

Therefore, the differences identified between the signs need to be viewed in the context of the fact that the common element will be mentally registered by the relevant public in view of the graphical features present in both signs. Furthermore, the signs have the same structure and there is a rather strong aural similarity.

In this regard, it is noted that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if it does not confuse the two signs directly, believe that they are related trade marks having the same commercial origin. In the present case, the public may think, for instance, that the signs under comparison are used as badges of origin for different types of electrical equipment from the same product line.

On an overall assessment, based on the average degree of distinctiveness of the earlier mark and taking into account the principle of interdependence, the Opposition Division considers that the differences identified between the signs are not sufficient to safely exclude any likelihood of confusion for the English-speaking part of the relevant public in the context of identical goods, even where the public pays an enhanced degree of attention for the goods in question.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the European Union.

As stated above in section b) 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 152 305 designating the European Union.

It follows that the contested trade mark must be rejected for all of the contested goods.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

Alexandra APOSTOLAKIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.