OPPOSITION No B 2 569 492

Sener, Ingeniería y Sistemas, S.A., Avda. Zugazarte, 56, 48930 Las Arenas, Guecho (Vizcaya), Spain (opponent), represented by Clarke, Modet y Cía, S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

T&T Multieléctrica, Lda, Crasto de Campia Vouzela, 3670 056 Campia, Portugal (applicant), represented by Patentree, Edificio Net, Rua de Salazares 842, 4149-002 Porto, Portugal (professional representative).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 569 492 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 769 617 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 769 617. The opposition is based on European Union trade mark registration No 448 209 and Spanish trade mark registration No 2 708 969. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF SPANISH TRADE MARK REGISTRATION No 2 708 969

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case, the evidence filed by the opponent is not in the language of the proceedings.

On 29/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 03/03/2016.

The opponent submitted the necessary translation on 08/03/2016, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded, as far as it is based on this earlier mark.

The opposition will proceed as far as it is based on earlier European Union trade mark registration No 448 209.

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.

1. The goods and services

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

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 37: Construction, installation and repair services.

Class 42: Engineering services in general.

The contested goods and services are the following:

Class 9: Apparatus and instruments for accumulating and storing electricity; Solar panels; Measuring, detecting and monitoring instruments, indicators and controllers; Energy controllers for air-conditioning systems and/or water-heating systems; Energy regulators; Water- and/or air-temperature regulators; Energy control devices; Temperature-control apparatus for use in water- and/or air-heating systems; Temperature-control apparatus for use in water- and/or air-cooling systems; Water- and/or air temperature sensors; Semiconductors.

Class 11: Apparatus for heating; Heating and/or air-conditioning apparatus and installations; Heating and/or air-conditioning apparatus, namely for domestic purposes; Solar-powered heating and/or air-conditioning apparatus; Apparatus and installations for heating and/or air-conditioning using solar power; Solar energy capture apparatus for heating and/or air-conditioning; Installations for the heating of air and/or water; Solar panels for heating and/or air-conditioning; Refrigerating apparatus; Refrigerating appliances and installations; Heat pumps; Heat pumps for energy processing; Solar panels for heating and/or air-conditioning; Heating, ventilating, and air conditioning and purification equipment (ambient); Combined heating and air conditioning apparatus; Space heating apparatus; Residential heating units; Solar panels for air-conditioning and/or water heating; Solar modules for air-conditioning and/or water heating; Solar cells for air-conditioning and/or water heating.

Class 42: Scientific and technological services in the field of solar energy and research relating thereto; Scientific and technological services in the field of air-conditioning and/or water heating in buildings; Technical consultancy in the field of solar energy; Technical consultancy relating to research in the field of solar energy; Industrial analysis in the field of solar energy; Design and development of solar panels, solar cell modules and other technical goods in the field of solar energy; Information relating to the aforesaid services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Classes 9 and 11

The contested apparatus and instruments for accumulating and storing electricity in Class 9 include electric batteries for vehicles, which are an essential part of vehicles. These goods and the opponent’s vehicles in Class 12 are, therefore, complementary. They also may have the same producers and distribution channels and are, therefore, similar.

The remaining contested goods are solar panels, measuring, detecting and monitoring instruments, devices in the field of energy and semiconductors in Class 9, as well as heating, air-conditioning, refrigerating and ventilating apparatus and parts for them in Class 11. All these technical goods are considered to be connected to the opponent’s installation and repair services in Class 37. Indeed, the latter cover a broad range of products which can be repaired or installed and due to the nature of the contested goods it is common in the relevant market sector for the manufacturer of such goods to also repair and/or install them, or for an appointed representative working on behalf of the applicant to carry out the repair work.

It is a frequent market practice that providers of such services also make available the goods and vice versa and consumers are aware of the practice. In fact, it is common that the contested goods are sold by suppliers who also offer, in their in-house shops, repair services which include testing, cleaning, installing and repairing services capable, inter alia, to render these technical devices as good as new. Thus, it can be expected that these goods and services coincide in their relevant public as well as in their distribution channels. In view of the foregoing, these goods and services are deemed to be similar.

Contested services in Class 42

The opponent’s engineering services refer to the development, design, construction and modification of goods in specialised fields using specialised or scientific knowledge and skills. Therefore, they include, or at least overlap with, the contested scientific and technological services in the field of solar energy and research relating thereto; scientific and technological services in the field of air-conditioning and/or water heating in buildings; design and development of solar panels, solar cell modules and other technical goods in the field of solar energy. Therefore, these services are identical.

The contested technical consultancy in the field of solar energy; technical consultancy relating to research in the field of solar energy; industrial analysis in the field of solar energy; information relating to the aforesaid services; information relating to scientific and technological services in the field of solar energy and research relating thereto; information relating to scientific and technological services in the field of air-conditioning and/or water heating in buildings; information relating to design and development of solar panels, solar cell modules and other technical goods in the field of solar energy are consultancy, analysis and information services related to the opponent’s engineering services according to the aforementioned definition. All these services could be in the same field and be provided by the same undertakings, through the same channels, and could target the same public. Moreover, they are complementary. Therefore, they are considered similar.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise for more specialised goods and services. The degree of attention will, therefore, vary between average and higher than average (according to their particularities, price, the frequency of their purchase, etc.).

3. The signs

SENER
Earlier trade mark	Contested sign

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 earlier mark is the word mark ‘SENER’.

The contested sign features the verbal element ‘senergy’ written in a black, fairly standard typeface. It does not have a meaning per se. However, it is conceivable that it may allude to ‘energy’ or ‘synergy’. In relation to some of the relevant goods and services, the word ‘energy’ would be weak. Nevertheless, as this is an allusion, the sign will be seen as a whole and will not be broken down into several elements. Moreover, this concept will be perceived by only part of the public.

The signs have no element that could be considered more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘SENER’, constituting the entirety of the earlier, distinctive, mark and the majority of the contested sign. They differ only in the final two letters, ‘GY’, and the slightly stylised typeface of the contested sign.

Moreover, the letters in common appear at the beginning of the contested sign. 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.

In addition, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Finally, the earlier mark is a word mark and, as a consequence, it is the words themselves that are protected and not their written form. In particular, differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛SENER’, present in both signs. The pronunciation differs in the sound of the less striking final letters, ‘GY’, of the contested sign, which constitute only one syllable out of three.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territories. However, as mentioned previously, part of the public may perceive in the contested sign an allusion to the concepts of ‘energy’ (‘intensity or vitality of action or expression; capacity or tendency for intense activity; vigorous or intense action; capacity of a body or system to do work; measure of this capacity; source of power’) or ‘synergy’ (‘the potential ability of individual organizations or groups to be more successful or productive as a result of a merger’). In this case, since only one of the signs evokes concepts, the signs are not conceptually similar.

However, for the part of the public that does not perceive any of these allusions, 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 marks

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 their 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

A likelihood of confusion (including a likelihood of association) 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.

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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

Moreover, 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 the goods and 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).

In the present case, the goods and services are partly identical and partly similar. The signs are visually and aurally similar to a high degree, since the earlier mark, ‘SENER’, is fully included in the beginning of the contested sign.

The signs differ only in the less striking ending and in the slightly stylised typeface of the contested sign. Moreover, the possible conceptual difference affects only part of the public.

Account should also be 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. This is all the more true when, as is the case for part of the public in the present case, the signs will not be associated with any concept.

Based on all the foregoing, it is considered that, for a sufficiently large part of the public, there are strong coincidences between the signs. Taken together with the identity and similarity of the goods and services, it is likely that these consumers (even the more attentive ones) will believe that the conflicting goods and services come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 448 209. It follows that the contested sign must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Marta GARCÍA COLLADO

Steve HAUSER

Volker MENSING

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.