OPPOSITION No B 2 526 120

Nexans, 8, rue du Général Foy, 75008 Paris, France (opponent), represented by Cabinet Bruno Lhermet, 85 boulevard Malesherbes, 75008 Paris, France (professional representative)

a g a i n s t

Nexion Trade Limited, 1b Georgiou Gemistou Street, 2047 Strovolos Nicosia, Cyprus (applicant), represented by Τριανταφυλλοσ Σπαχοσ, Μητροπολεωσ 10, 105 63 Αθηνα, Greece (professional representative).

On 01/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 526 120 is upheld for all the contested goods, namely:

Class 9: Apparatus, instruments and cables for electricity; Devices for treatment using electricity.

2. Community trade mark application No 13 740 709 is rejected for all the contested goods. It may proceed for the remaining goods and 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 13 740 709, namely against some of the goods in Class 9. The opposition is based on, inter alia, French trade mark registration No 3 036 871. The opponent invoked Article 8(1)(b) and 8(5) 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 first to examine the opposition in relation to the opponent’s French trade mark registration No 3 036 871.

1. The goods

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

Class 9: Electric cables and wires; electronic cables and wires; telecommunications cables; winding wires (electricity), magnetic, telephone wires; connectors; switches; connections; cut-outs; capacitors; converters; branching, splitter and junction boxes for electric, electronic and telecommunications cables and wires; junction sleeves and sheaths for electric, electronic and telecommunications cables and wires; components and accessories for connecting electric, electronic and telecommunications cables and wires; electric conductors; apparatus for processing information; apparatus for transmission and reproduction of sound, images or data; recorded computer programs for managing cable installations.

The contested goods are the following:

Class 9: Apparatus, instruments and cables for electricity; Devices for treatment using electricity.

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.

Cables for electricity are identically contained in both lists of goods.

The contested apparatus, instruments for electricity; devices for treatment using electricity are similar to the opponent’s apparatus for transmission and reproduction of sound, images or data, as they can coincide in end user and distribution channels. Furthermore, they are complementary.

2. 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 higher than average, depending on the price or complexity of the apparatus and instruments in question.

3. The signs

NEXANS	nexion
Earlier trade mark	Contested sign

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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 (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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

Both marks are word marks. The earlier mark is the word ‘NEXANS’ while the contested sign is the word ‘nexion’.

The earlier mark and the contested sign have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘NEX*N*’, whereby four out of six letters of the earlier mark are fully encompassed in the contested sign. However, they differ in the fourth and last letters of the earlier mark, ‘A’ and ‘S’, respectively, and in the fourth and fifth letters of the contested sign, ‘I’ and ‘O’, respectively. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NEX’, present identically in both signs. Since the last syllable, ‘ANS’, of the earlier mark is pronounced as /ã/ while the last syllable ‘ION’ of the contested sign is pronounced /iõ/, the pronunciation of the signs is ‘nexã’ and ‘nexiõ’, which is highly similar. Therefore, the signs are similar to an above average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods are identical and similar.

The earlier trade mark’s degree of distinctiveness is normal and the degree of attention of the relevant public varies from average to higher than average.

The overall impressions created by the marks are similar.

The differences are located in the middle or at the end of the signs, where consumers generally tend to pay less attention when they encounter a trade mark. Furthermore, the differences in these two letters do not, by themselves, introduce sufficient differences into the signs, as they do not greatly alter the visual or aural comparison. Since neither of the signs has a meaning for the public in the relevant territory, there is also nothing that will assist consumers to differentiate between them from a conceptual point of view.

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public, even when the degree of attention is higher than average. 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 French trade mark registration No 3 036 871. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its their reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘NEXANS’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR.

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

Peter QUAY

Karin KUHL

Victoria DAFAUCE MENÉNDEZ

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.