OPPOSITION No B 2 474 073

Hager SE, Zum Gunterstal, 66440 Blieskastel, Germany (opponent), represented by Patentanwälte Bernhardt/Wolff Partnerschaft, Europaallee 17, 66113 Saarbrücken, Germany (professional representative)

a g a i n s t

Steve Krack, 30 Grand Rue, 1660 Luxembourg, Luxembourg (applicant), represented by Lecomte & Partners SARL, 76-78 rue de Merl, 2146 Luxembourg, Luxembourg (professional representative).

On 17/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 474 073 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 396 221. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 174 614. The opponent invoked Article 8(1)(a) and (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.

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 international trade mark registration designating the European Union No 1 174 614.

1. The goods and services

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

Class 9: Installation equipment for electrical power transmission and distribution, namely distribution cabinets, distribution boxes, distribution housings, distribution boards, small installation distribution devices, meter stations, meter panels, bus bars, bus bar mounts, phase rails, apparatus mounting rows, mounting panels, connecting terminals, terminal strips, terminal pieces, taps, and trunking systems for cable routing and apparatus installation, namely cable trays, mesh trays, cable ducts, cable cladding, cable mounts, wiring ducts, connecting boxes, appliance built-in sockets, room and vertical columns, all the above-mentioned goods to the extent included in this class; electrical protective devices, namely circuit breakers, residual current devices and signalling devices, surge arresters, isolating switches, main switches, power switches, safety switch disconnectors, fuse links, fuse holders, fuse rails, motor circuit breakers, plug sockets for industrial applications, encapsulated circuit breakers; electrical, including remote acting, control and monitoring devices, namely switches, changeover switches, pressure switches, light signalling devices, socket outlets, bells, transformers; metering instruments, smoke, wind, rain, temperature, brightness and motion sensors; electrical/electronic display and monitoring devices for multiple applications; automatic circuit controllers, namely relays, contactors, time switches, switching clocks, programmable switching devices and controllers, load shedding relays, control relays, regulators, dimmers, remote controls, remote acting switches, remotely controlled circuit breakers, thermostats; electrical installation equipment for the consumer field, namely wall-mounted switches, ceiling-mounted switches (cord operated switches), dimmer switches, electronic switches, socket outlets including consumer units with integrated switch and/or fuses and/or residual current protection, data line socket outlets, telephone socket outlets, plugs, couplings, connecting boxes, consumer units for the connection of electrical cookers; door intercom and video systems (with and without wires), intruder and fire alarms, smoke and heat signalling devices, transmission devices for telephones, video monitoring appliances, transmitters and receivers as well as cables for the transmission of data, images and audio, electrical/electronic appliances for automatic control of building installations; electrical/electronic appliances for automatic control of apparatuses for cleaning, hardening, dehardening, degassing, gassing, disinfecting, heating and cooling of water as well as cleaning, disinfecting, dehumidification, humidification, gassing, heating and cooling of air; catalogues stored on data storage devices, planning and calculation software for electrical installation, monitoring and control software for electrical installation; software which is stored in particular on a central server and/or on control interfaces, for display and/or for control, automation and operation of electrical and electronic installations and data processing installations, specifically lighting installations, heating devices, air-conditioning installations, ventilation installations, drying installations, protection installations, roller shutters, roller blinds, rollers and sun canopies, installations for consumption indication, installations with audio and video devices or information technology devices, in particular for multiple occupancy dwellings and free standing houses and for commercially used and public buildings; central units in which this software is integrated; control interfaces for the above-mentioned devices and installations, specifically remote controls, keyboards and screens; all the above-mentioned goods exclusively in the field of electrical installations of buildings.  

Class 38: Telecommunication, in particular for remote transmission of information about electrical and/or electronic installations and about data processing installations, specifically information about lighting installations, heating devices, air-conditioning installations, ventilation installations, drying installations, protection installations, roller shutters, roller blinds, rollers and sun canopies, installations for power supply management, for consumption indication, installations with audio and video appliances or data processing appliances, in particular for dwellings, houses and multiple occupancy dwellings and for commercially used and public buildings, and services for remote indication and for remote control, remote automation, remote control of these installations and devices via an Internet page and/or a local telecommunication net; all the above-mentioned services exclusively in the field of electrical installations of buildings.  

Class 42: Technical advice, in particular in the field of energy saving, in particular regarding energy consumption in buildings, and for the design of electrical devices and installations, in particular power supply installations; inspection and checking of said devices and installations; preparation of technical expert’s reports, in particular regarding energy consumption in buildings, all the above-mentioned services exclusively in the field of electrical installations of buildings.

The contested goods are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Plugs, sockets and other contacts [electric connections]; multi plugs; Switches, electric.

Class 11: Lighting appliances; Sockets for electric lights; Lightbulbs.

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

Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity are identical to the opponent’s equipment for electrical power transmission and distribution, electrical protective devices, electrical, including remote acting, control and monitoring devices, automatic circuit controllers and electrical installation equipment for the consumer field, because, in spite of the limitation that the term ‘namely’ places on the list of goods protected by the earlier mark, and the limitation that appears at the end of the specification (in the field of electrical installations of buildings), the contested goods form a broad category that includes the opponent’s goods. It is impossible for the Opposition Division to filter the contested goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested plugs, sockets and other contacts [electric connections]; multi plugs; switches, electric are included in the opponent’s broader category of installation equipment for electrical power transmission and distribution, namely connecting terminals, connecting boxes; appliance built-in sockets, etc.

Contested goods in Class 11

The contested goods in this class are similar to the goods protected by the earlier mark in Class 9 that are related to electricity (e.g. equipment for electrical power transmission and distribution, electrical protective devices, electrical, including remote acting, control and monitoring devices, automatic circuit controllers and electrical installation equipment for the consumer field), as they often have the same commercial origins and are distributed through the same channels; furthermore, the goods are used in combination with each other for the same purpose.

2. The signs

E3
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark consists of the letter ‘E’ followed by the number 3. In the case of the contested mark, the consumers might perceive either two letters ‘E’ (although one is in an inverted position) or, due to the smaller size and, in particular, the position of the second element, they might perceive the sign as ‘E cubed’.

Visually, the signs coincide in the letter ‘E’, but they differ in the second figure/letter, which is stylised and positioned differently in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will differ, as the earlier mark will be pronounced as a letter ‘E’ and a cardinal number ‘3’, whereas the contested sign will be pronounced either as a double letter ‘E’ or as ‘E cubed’.

Conceptually, the earlier mark conveys the concept of the letter ‘E’ (which will be perceived as an abbreviation of ‘electricity’) and the number ‘3’, and the contested sign will be perceived either as a double letter ‘E’ or as ‘E cubed’.

Taking the above into account, the signs are similar in that the letter ‘E’ is depicted at the beginning of each sign; however, they differ in the second element of the contested sign because, even when perceived as the number ‘3’, this element gives the letter a different quality from the mere combination of a letter and a number of which the earlier mark consists.

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 ‘E’, present in both signs, will be associated with ‘electricity, electrical’ (decision of 04/09/2015, R 204/2015-5 – ‘E3 fig.’, paragraph 41). Bearing in mind that the relevant goods all relate to electricity, or are lighting appliances and lightbulbs that are powered through electricity, it is considered that this element is non-distinctive. 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 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 non‑distinctive element in the mark as stated above 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary depending on the exact nature and price of the goods.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

It has been explained above that the contested sign may be perceived as two letters ‘E’ (one of them inverted) or, if the second element is perceived as the number ‘3’, due to its size and position it will most likely be considered to form a unit with the letter ‘E’, and the sign will be perceived as ‘E cubed’. However, even if this were not the case, the fact that the marks are linked through the letter ‘E’ is not sufficient to cause consumers to be confused as to the origin of the goods, not even in the case of identity between the goods, given that the letter ‘E’ is non-distinctive for the goods at issue. Furthermore, the opponent has not demonstrated that its mark enjoys enhanced distinctiveness or reputation. Consequently, the opposition filed under Article 8(1)(b) CTMR must be rejected.

The other earlier right invoked by the opponent (German trade mark registration No 30 2010 004432) covers the same goods and protects the same sign. Therefore, there is no likelihood of confusion with respect to this earlier right.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR because the signs are obviously not identical.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Solveiga BIEZA

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.