DECISION

of the Second Board of Appeal

of 12 July 2016

In Case R 88/2016-2

EFEN GmbH
Schlangenbader Str. 40 65344 Eltville Germany	Opponent / Appellant

represented by WSL Patentanwälte, Kaiser-Friedrich-Ring 98, 65051 Wiesbaden, Germany

v

Steve Krack
30 Grande Rue 1660 Luxembourg Luxembourg	Applicant / Respondent

represented by Lecomte & Partners SARL, 76-78 rue de Merl, 2146 Luxembourg, Luxembourg

APPEAL relating to Opposition Proceedings No B 2 473 695 (European Union trade mark application No 13 396 221)

The Second Board of Appeal

composed of T. de las Heras (Chairperson), H. Salmi (Rapporteur) and R. Ocquet (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 23 October 2014, Steve Krack (hereinafter ‘the applicant’) sought to register the figurative as amended

for the following list of goods:

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.

2. The application was published on 25 November 2014.

3. On 5 February 2015, EFEN GmbH (hereinafter ‘the opponent’) filed an opposition against the registration of the published trade mark application for all the goods claimed.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

• German National mark No 30 2009 021 481.6 of the figurative sign

filed on 9 April 2009 and registered on 3 August 2009 for various goods in Class 9.

• International Registration No 1 024 528 designating the European Union for the figurative sign

filed on 2 October 2009 and registered on 2 October 2009 for the following goods:

Class 9 - Electric, electronic, electromechanical and mechanical components (included in this class), electrical fuses and switching means and accessories (included in this class), especially fuse wire inserts, fuse carriers and fuse components, fuse operating devices, fuse switches, fixing clips and fixing collars for current collecting rails and cables, switching rails, housing for switching means, current limiting means, current and voltage distributors, contacts, couplers, switches, connection modules, equipment for coupling and uncoupling of data networks to energy networks and for the protection thereof against overload and overvoltage.

6. By decision of 17 November 2015 (hereinafter ‘the contested decision’), the Opposition Division rejected the opposition in its entirety on the grounds that there was as amendedlikelihood of confusion. It gave, in particular, the following grounds for its decision:

• 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 Registration No 1 024 528 designating the European Union.

Comparison of the signs

• The signs to be compared are as follows:

  Earlier right	Contested sign

• The relevant territory is the European Union.

• The opponent argues that the earlier mark depicts a stylised letter–number combination, namely ‘E3’, turned 90 degrees clockwise. The fact remains, however, that the opponent chose to register its mark in a specific orientation and, furthermore, when assessing the identity or similarity of signs, they have to be compared in the form in which they are protected, that is, in the form in which they are registered or applied for. At first sight, the upper element of the earlier mark resembles a stylised letter ‘m’, whereas the lower element may be identified as the letter combination ‘UN’ or ‘UV’.

• In his application, the applicant chose to describe the verbal elements of the contested sign as ‘E3’; however, this fact does not automatically imply that the relevant public will perceive in a clear and indubitable manner the letter ‘E’ and the numeral ‘3’ in the contested sign. In the case at issue, the Opposition Division considers that the contested sign will be perceived either as two letters ‘E’ depicted in a fairly standard typeface, with the letter on the right slightly smaller than the one on the left and placed above it in a reversed orientation, or as ‘E cubed’ (E raised to the power of three).

• The signs are visually, aurally and conceptually dissimilar, as they have no element in common at any of the three levels of comparison. Visually, as explained above, the upper element of the earlier mark will be seen as a letter ‘m’, whereas the lower element will be seen as the letter combination ‘UN’ or ‘UV’, and the contested sign will be perceived either as two letters ‘E’ of different sizes, with one letter placed above and to the right of the other and reversed, or as E cubed.

• Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign will be pronounced in the combination ‘m un’ or ‘m uv’, while the contested sign will be pronounced as two letters ‘E’ or as ‘E cubed’.

• Conceptually, the signs are dissimilar because the public in the relevant territory will perceive the earlier mark as two different letters of the Latin alphabet and the contested sign as two letters, ‘E’ or ‘E cubed’.

Conclusion

• According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

• The other earlier right invoked by the opponent (German registration No 30 2009 021 481.6) protects exactly the same sign. Consequently, the outcome of this decision would not be different vis-à-vis this other earlier right and, therefore, this other right does not need to be evaluated.

7. On 15 January 2016, the opponent filed an appeal against the contested decision, requesting that the decision be as amended set aside and the mark applied for rejected. The statement of grounds of the appeal was received on 12 February 2016.

8. No observations in reply were filed.

Submissions and arguments of the opponent

9. The arguments raised in the statement of grounds may be summarised as follows:

• The only three slight differences between the signs under comparison are not appropriate to deny a high similarity as those differences do not change the overall impression of the signs. Those differences are:

• The three parallel lines of each element of the sign of the contested trade mark application are straight. However, having rounded or straight corners does not change the symmetrical appearance/overall impression of the elements in question. The relevant part of the public would hardly remember whether the signs have rounded or straight corners.

• The longitudinal shift between the two elements of the sign of the earlier trade marks is less than the longitudinal shift between the two elements of the sign of the contested trade mark application. The difference in length of the longitudinal shifts is only recognizable when directly comparing the signs in question. However, it is well-established jurisprudence that the relevant part of the public will not face the signs in question at the same time, such that any difference in size will not be apparent to the relevant part of the public. Again, the slight difference in the shifting does not change the overall impression of both signs in question.

• The sign of the earlier trade marks might be regarded as being rotated about 90° in the counter-clockwise direction when compared to the sign of the contested trade mark application, or vice versa.

• Solely rotating a sign does not change the form in which the sign is registered or applied for. Any rotation does not change the overall-impression of the sign for the relevant part of the public. Indeed, if a slight rotation of identical signs would be appropriate to deny a likelihood of confusion, there would hardly exist any trade mark protection and any third person might then easily avoid any trade mark infringement by using a validly registered trade mark in a rotated form. Obviously, this is neither the legislator's intention nor reflected by the well-established jurisprudence.

• The relevant part of the public is of course used to face trade marks in different orientations and at different positions on several goods. Trade marks are often placed on the packing material for the goods they are registered for. When for instance wrapping the material for packing around the goods a trade mark is registered for, it usually happens that identical trade marks are used in different orientations. Several cases from the Boards of Appeal confirm it, for instance 05/07/2016, R 1460/2005-1, O2=OXYGEN (fig) / O2XYGEN (fig.) or 03/02/2010, R 425/2009-1, O2 (fig) / O2 et al.

• The contested decision stated that the contested sign will either be perceived as two letters ‘E’ of different size, or as ‘E cubed’, whereas the sign of the earlier trade marks will be pronounced in the combination ‘m un’ or ‘m vn. However, as shown above, the sign of the earlier trade marks might be perceived in a different orientation, e.g. a 90º clockwise rotation, such that the sign of the earlier trade marks will also perceived and pronounced as ‘E cubed’, too. Thus the signs are aurally identical.

• In light of the above, it could not be excluded with certainty that the signs will be perceived as ‘E3’. Thus they are conceptually identical.

• The goods claimed are identical.

• There is a likelihood of confusion.

Reasons

10. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Likelihood of confusion

11. Article 8(1)(b) CTMR determines:

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

...

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

12. A likelihood of confusion lies in 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

13. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29.09.1998, C‑39/97, Canon, EU:C:1998:442, §16 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

14. The Board will first proceed to assess, as was also done by the Opposition Division, if there is a likelihood of confusion between the contested mark and the earlier International Registration No 1 024 528.

Relevant public

15. The earlier trade mark on which the contested decision is based is an International mark designating the European Union. Therefore, in order to establish whether there is a likelihood of confusion between the marks in dispute, account must be taken of the point of view of the relevant public in the European Union.

16. It follows from the unitary character of the EUTM that an earlier EUTM or an International Registration designating the European Union is protected in the same way in all Member States. Earlier EUTMs or International Registrations designating the European Union may therefore be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). It follows that the principle laid down in Article 7(2) CMTR, according to which it suffices, in order for registration of a trade mark to be refused, that an absolute ground for refusal exists only in part of the European Union, also applies by analogy to a relative ground for refusal under Article 8(1)(b) CMTR. Thus, ‘a part’ of the European Union can consist of only one Member State (14/12/2006, T‑81/03, T‑82/03 & T‑103/03, Venado, EU:T:2006:397, § 76 and 83 last sentence).

17. Thus, the opposition has to be upheld even if there is only a likelihood of confusion between the contested trade mark and an earlier EUTM in one Member State.

18. The average consumer, who is reasonably well informed and reasonably observant and circumspect, normally perceives a mark as a whole and does not proceed to analyse its various details (28/06/2005, T‑301/03, Canal Jean, EU:T:2005:254, § 50).

19. However, the average consumer’s level of attention is likely to vary according to the category of goods and services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein).

20. The Board notes that the goods are purchased by both the public at large and professionals. Where the relevant public is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account. It follows that, in the present case, account must be taken of the level of attention of the consumer who is part of the general public (15/07/2011, T‑221/09, ERGO Group, EU:T:2011:393, §21 and the case‑law cited).

Comparison of the goods

21. For reasons of procedural economy, the Board will only assess the contested goods with the goods of the earlier mark, if the outcome of the case depends on the finding of identity or (dis)similarity of the goods (28/01/2016, T‑640/13, CRETEO / STOCRETE, EU:T:2016:38, § 90).

Comparison of the marks

22. The likelihood of confusion must be determined by means of a global appraisal of the visual, aural and conceptual similarity of the marks, on the basis of 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).

23. The signs to be compared are:

    Earlier right	Contested sign

24. First of all the Board notes that insofar as the opponent refers to the manner in which the signs may be rotated and perceived when used, it is consistent case-law that the signs have to be compared as registered or as they appear in the application for registration and not as used (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38; 24/04/2007, C‑131/06 P, Cristal Castellblanch, EU:C:2007:246, § 56 and 12/01/2006, T‑147/03, Quantum, EU:T:2006:10, § 65-67). Therefore any hypothetical use or whether or not the signs might be used in a different form as registered is irrelevant.

25. The two cases of the Boards of Appeal that the opponent refers to are not relevant for the case at hand as they concern situations where one of the conflicting marks in its applied for form was tilted. However, in the mentioned cases the way that they were tilted was part of the representation of the mark when applied for and it was found that this did not change the way the marks would be read and perceived. They did not concern the situation that the mark applied for would look different in some particular situations of actual use, therefore they are not relevant for the case at hand.

26. Visually, in the opinion of the Board, the upper element of the earlier mark resembles a stylised letter ‘m’, whereas the lower element may be identified as the letter combination ‘un’, ‘uv’ or ‘w’. On the other hand, the contested sign will be perceived either as two letters ‘E’ depicted in a fairly standard typeface, with the letter on the right slightly smaller than the one on the left and placed above it in a reversed orientation, or as ‘E cubed’ (E raised to the power of three), or as ‘E 3’.

27. The Board also notes that, if the marks are read as combinations of letters, the length of the signs may influence the effect of differences between the signs. The shorter a sign, the more easily the public is able to perceive all its single elements. Thus, for short words, even small differences may frequently lead to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39; 21/02/2013, T‑444/10, Kmix, EU:T:2013:89, § 27 and 03/12/2014, T‑272/13, M&Co., EU:T:2014:1020, § 47).

28. In light of all the foregoing, the differences between the marks caused by the difference in their letters (or in the number, if the number 3 is seen as such in the mark applied for), the different distribution and style of the elements and the different structure of the signs have such an impact on the overall impression that they clearly outweigh any common features in the signs. The conclusion must, therefore, be that the signs are not visually similar overall.

29. Phonetically, the Board finds that if the signs are pronounced and irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign will be pronounced in the combination ‘m un’, ‘m uv’ or as the letter ‘w’, while the contested sign will be pronounced as two letters ‘E’, ‘E cubed’, or as ‘E 3’.

30. Conceptually, the signs are also dissimilar because the public in the relevant territory will perceive the earlier mark as three different letters of the Latin alphabet (‘m’, ‘u’ and ‘n’ or ‘v’), or as the letters ‘m’ and ‘w’, and the contested sign as two letters, ‘E’ or ‘E cubed’ or as a letter and number combination, ‘E 3’.

31. Studying the marks objectively and as a whole, the marks have differences in their structure which are both visually and phonetically easily perceptible (28/06/2011, T‑471/09, Buonfatti, EU:T:2011:307, § 69). In view of all the above, based on an overall assessment of the visual, aural and conceptual similarities between the marks, there are significant differences between the opposing signs, and their similarities are minor when compared to their differences. The marks are dissimilar overall.

Distinctive character of the earlier mark

32. The earlier mark does not have any meaning in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the inherent distinctiveness of the earlier mark must be seen as normal.

Overall assessment of the likelihood of confusion

33. The overall assessment entails certain interdependence between the factors taken into account and, in particular, the similarity between the trade marks and between the goods or services covered. 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

34. However, for the purposes of applying Article 8(1)(b) EUTMR, the likelihood of confusion presupposes that the goods or services as well as the signs at issue are identical or similar to those in respect of which the earlier mark is registered. These conditions are cumulative. If the earlier sign and the mark applied for are not similar in the case at hand there can be no likelihood of confusion, regardless of the possible identity or similarity of the services and whatever the reputation of the earlier mark (12/10/2004, C‑106/03, Hubert, EU:C:2004:611, § 51 and 54).

35. In light of the above, based on an overall assessment of the visual, aural and conceptual similarities between the marks and notwithstanding the principles of interdependence and imperfect recollection, the Board comes to the conclusion that the marks at issue are not similar overall. It is highly unlikely that the relevant consumer would confuse the trade marks or believe that the goods applied for come from the same undertaking or, as the case may be, from undertakings that are economically linked, merely on the basis of the mentioned elements of similarity set out above. The clearly perceptible differences between the signs would not be overlooked by the relevant customer, even if used for identical goods. In conclusion, the overall impression of the signs in the perception of the relevant public is that they are not similar.

36. As to the other earlier German national mark, taking into account that it is identical to the International mark, the above reasoning applies equally when comparing the contested mark with this earlier right.

37. The appeal is dismissed.

Costs

38. Pursuant to Article 85(1) EUTMR, the opponent, as the losing party, must bear the costs of the appeal proceedings. Pursuant to Article 85(6) EUTMR and Rule 94(3) last sentence CTMIR, the opponent is therefore ordered to reimburse the applicant’s costs of professional representation for the appeal proceedings, at the level laid down in Rule 94(7)(d) CTMIR of EUR 550. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs in the amount of EUR 300.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear the total amount of EUR 850 in respect of the applicant’s representation costs in the appeal and opposition proceedings.

According to Article 6 of Commission Regulation (EC) No 216/96 Signed R. Ocquet

According to Article 6 of Commission Regulation (EC) No 216/96 Signed R. Ocquet

Signed R. Ocquet

Registrar: Signed H.Dijkema