OPPOSITION No B 2 609 900

Wright Flow Technologies Inc, 1409 Ellis Street, 53187 Waukesha, Wisconsin, United States (opponent), represented by WP Thompson, 138 Fetter Lane, EC4A 1BT London, United Kingdom (professional representative)

a g a i n s t

Euro Web Associates Limited, 1422-4 London Road, Leigh on Sea, SS9 2UL ESSEX, United Kingdom (applicant), represented by Xavier Le Cerf, Espace Berlioz, Legipolis, 30 rue Albert Caquot, 06410 Sophia-Antipolis, France (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 609 900 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; weighing apparatus and instruments; signalling apparatus; photographic apparatus and instruments; measuring apparatus and instruments; checking (supervision) apparatus and instruments; visual monitoring apparatus; teaching apparatus; teaching apparatus and instruments.

Class 37: Machinery installation, maintenance and repair.

2. European Union trade mark application No 14 443 601 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent initially filed an opposition against all the goods and services of European Union trade mark application No 14 443 601 . The opposition is based on European Union trade mark registration No 7 321 946 for the word mark ‘REVOLUTION’. The opponent invoked Article 8(1)(a) and (b), Article 8(4) and Article (5) EUTMR.

On 17/01/2019, the opponent in its observations expressly limited the scope of the opposition to part of the goods and services covered by the contested application, namely to all the goods in Class 9 and all the services in Class 37. It also requested to withdraw Article 8(4) and Article 8(5) EUTMR as grounds of the opposition, and that the proceedings continue with only Articles 8(1)(a) and (b) EUTMR as grounds of the opposition.

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 7: Pumps; positive displacement fluid pumps for use in pharmaceutical, food processing and cosmetic industrial applications.

Class 9: Flow meters.

Class 37: Repair of pumps; maintenance of pumps.

The contested goods and services are the following:

Class 9: Scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; cameras [photography]; cinematographic machines and apparatus; optical apparatus and instruments; weighing apparatus and instruments; radioactivity measuring instruments; signalling apparatus; photographic apparatus and instruments; measuring apparatus and instruments; checking (supervision) apparatus and instruments; visual monitoring apparatus; life-saving apparatus and equipment; mechanical life-saving apparatus; life-saving apparatus and instruments; teaching apparatus; teaching apparatus and instruments; apparatus and instruments for conducting electricity; apparatus and instruments for controlling electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for accumulating and storing electricity; apparatus and instruments for switching electricity; electric power distribution machines; electrical controls; sound recording apparatus; sound and picture recording apparatus; sound transmitting apparatus; sound reproduction apparatus; video reproducing apparatus; apparatus for the reproduction of images; recording substrates [magnetic]; optical recording media; recording substrates [optical]; magnetic data carriers, recording discs; DVDs; video compact discs; compact discs; compact discs [audio-video]; digital recording media; coin-operated mechanisms; cash registers; calculators; data processing equipment; computers; tablet computers; smartphones; electronic book readers; games software; games software; recorded computer software; peripherals adapted for use with computers; wearable computer peripherals; batteries, electric; detectors; electric wires; relays, electric; diving suits; gloves for divers; divers’ masks; clothing for protection against accidents, irradiation and fire; protection devices for personal use against accidents; fire extinguishers; spectacles [optics]; 3D spectacles; opticians’ goods; spectacle cases; diagnostic apparatus, not for medical purposes; smart cards; bags adapted for laptops.

Class 37: Construction services; construction information; building consultancy; building construction supervision; bricklaying; plastering; plumbing; roofing services; building insulating; demolition of buildings; hire of building machinery; cleaning of buildings [interior]; cleaning of buildings [exterior surface]; window cleaning; car cleaning; vehicle maintenance; vehicle breakdown assistance [repair]; disinfecting; rat exterminating; cleaning of clothing; renovation of clothing; leather care, cleaning and repair; fur care, cleaning and repair; linen ironing; shoe repair; retreading of tires [tyres]; vulcanisation of tires [repair]; office machines and equipment installation, maintenance and repair; machinery installation, maintenance and repair; installation, maintenance and repair of computer hardware; maintenance and repair of horological and chronometric instruments; installation, changing, replacement and repair of locks; furniture restoration; shipbuilding.

As a preliminary remark, it should be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 Class 9

The opponent’s flow meters are, as explained by the opponent itself, a kind of instrument used to measure the linear, nonlinear, volumetric or mass flow rate of a liquid or a gas.

Therefore, the contested scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; weighing apparatus and instruments; signalling apparatus; photographic apparatus and instruments; measuring apparatus and instruments; checking (supervision) apparatus and instruments; visual monitoring apparatus; teaching apparatus; teaching apparatus and instruments can include, as broader categories, the opponent’s flow meters, or at least overlap with them. Since the Opposition Division cannot dissect, ex officio, the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The remaining contested goods in Class 9 consist of a wide variety of goods in different areas, such as information technology and audiovisual equipment, apparatus and devices for controlling the distribution or use of electricity, optical apparatus and instruments, safety equipment and protective clothing. They have nothing relevant in common with any of the opponent’s goods and services since they differ in nature, purpose and method of use. They also target a different public and do not coincide in distribution channels or points of sale. They are neither complementary nor in competition and their usual origins are different. Therefore, these goods are considered dissimilar.

Contested services in Class 37

The contested machinery maintenance includes, as a broader category, the opponent’s maintenance of pumps. Since the Opposition Division cannot dissect, ex officio, the broad category of the contested services, they are considered identical to the opponent’s services.

The contested machinery repair includes, as a broader category, the opponent’s repair of pumps. Since the Opposition Division cannot dissect, ex officio, the broad category of the contested services, they are considered identical to the opponent’s services.

The contested machinery installation is highly similar to the opponent’s maintenance of pumps, as they have the same nature and usually coincide in producer, relevant public, distribution channels and method of use.

The remaining contested services in Class 37 consist of a variety of services related to the construction of buildings and ships, and the maintenance and cleaning of a wide variety of goods, such as buildings, cars, clothing, shoes, office machines, computer hardware, horological and chronometric instruments, locks and furniture. They have nothing in common with the opponent’s goods and services which, as already explained, belong to a very specific area (pumps and flow meters).

Consequently, these services are dissimilar, since they have different natures, purposes and methods of use, target different publics and are distributed through different channels. Furthermore, they are neither complementary nor in competition and their usual origins are different.

2. Relevant public — degree of attention

The goods and services found to be identical or highly similar target the public at large as well as professionals with specific professional knowledge or expertise (e.g. for flow meters).

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. For example, for scientific apparatus and instruments and for machinery installation, the degree of attention of the consumer will certainly be high, since these goods and services can be expensive.

3. The signs

REVOLUTION
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 common word element ‘REVOLUTION’ will be understood by the relevant public as a revolt or as an innovation/transformation in a particular area of human activity, either because this word exists as such in the relevant language, for example in English, French or German, or because the equivalent words in the relevant languages are so similar in spelling and/or pronunciation, that they will be attributed said concept (e.g. ‘revolución’ in Spanish, ‘revolutie’ in Dutch or ‘revolucija’ in Croatian and Slovenian). As this word has no meaning in connection with the relevant goods and services, it is distinctive.

The figurative element of the contested sign will be perceived by part of the public as a key. For another part of the public it may resemble an upper-case letter ‘R’ and will be perceived as repeating the initial letter of the word ‘REVOLUTION’, written underneath it in small purple upper-case letters. From the perspective of the public perceiving the figurative element as the depiction of a key, this will constitute a conceptual difference between the marks, which does not arise if it is perceived as a letter ‘R’. Therefore, the Opposition Division considers it appropriate to focus the present decision on the part of the public that perceives it as a letter ‘R’, since it is the scenario in which likelihood of confusion is more likely to occur.

The figurative element has no meaning in connection with the relevant goods and services and is therefore distinctive. It is also the dominant (eye-catching) element of the sign by virtue of its central position and much bigger size than the word ‘REVOLUTION’, below it. This verbal element is depicted in standard upper-case letters, with its purple colour being merely decorative.

Visually, the signs coincide in the distinctive word element ‘REVOLUTION’. They differ in the figurative element of the contested sign, which has no counterpart in the earlier sign.

When signs consist of both verbal and figurative components, in principle, the verbal component usually has a stronger impact on the consumer because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, consumers will pay less attention to said device of the contested sign, because they will rely on the common verbal element.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the verbal element ‛REVOLUTION’, present identically in both signs. The figurative element, the large letter ‘R’ in the contested sign, is not likely to be pronounced, since it will be perceived as the first letter of the word below it.

Therefore, the signs are aurally identical for those consumers pronouncing only ‛REVOLUTION’ in the contested mark, and aurally highly similar for consumers pronouncing all the elements of the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the figurative element of the contested sign will be perceived as the first letter of the verbal element, it is conceptually linked to that word. Therefore, its presence does not alter the conceptual perception of the contested sign and, the signs are conceptually identical.

4. Distinctiveness of the earlier mark

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services 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 and services are partly identical, partly highly similar and partly dissimilar. They target the public at large as well as the professional public, with a degree of attention ranging from average to high.

The signs are visually similar to an average degree, aurally identical or highly similar and conceptually identical. Furthermore, the earlier mark is distinctive to an average degree.

The earlier mark is completely incorporated in the contested sign as its single verbal element. The signs only differ in the figurative elements of the contested sign, considered of reduced impact for the reasons explained above.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings.

Consumers may believe that the goods and services offered under the opposing marks have the same origin or are provided by economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion at least on the part of the public for which the figurative element of the contested sign is perceived as a letter ‘R’. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to proceed with the analysis with respect to the remaining part of the public.

Therefore, the opposition is partially well founded on the basis of the European Union trade mark registration No 7 321 946. It follows that the contested trade mark must be rejected for the goods and services found to be identical or highly similar to those of the earlier mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services, because the signs and the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Sofía SACRISTÁN MARTÍNEZ

María Clara IBÁÑEZ FIORILLO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.