OPPOSITION No B 2 642 711

Edison S.p.A., Foro Buonaparte, 31, 20121, Milano, Italy (opponent), represented by Notarbartolo & Gervasi S.P.A., Corso di Porta Vittoria, 9, 20122, Milano, Italy (professional representative)

a g a i n s t

Smart Technology, Route de Charleroi 5, 6180 Courcelles, Belgium (applicant), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan 32, 1310 La Hulpe, Belgium (professional representative).

On 06/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 642 711 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 634 216, ‘edisio’. The opposition is based on European Union trade mark registration No 3 315 991 . The opponent invoked Article 8(1)(b) EUTMR.

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 9: Electric installations for the remote control of industrial operations; self-regulating fuel pumps; gauges; heat regulating apparatus; hydrometers; ignition (electric apparatus for remote -); water level indicators; integrated circuits; electromagnetic coils; central processing units; programs for computers; electro-dynamic apparatus for the remote control of signals; temperature controlling apparatus; transmitting sets (telecommunication); commutators; conduits (electric); electric batteries; galvanometers; reducers (electricity); relays, electric; semiconductors; transformers (electricity) for industrial installations; transistors [electronic]; electrical cables; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting.

Class 37: Construction, repair and installation of industrial installations for generation and distribution of electrical energy; industrial plants for the extraction, refining and distribution of fuels.

Class 42: Research in the field of construction, repair and installation of industrial installations for the generation and distribution of electrical energy and of industrial installations for extraction, refinement and distribution of fuels.

The contested goods and services are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; scientific and electronic, measuring, signalling and checking apparatus and instruments in the field of home automation, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems; apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers; home automation software; control boxes for programmable electrical installations.

Class 37: Installation and activation of home automation systems; installation and activation of measuring, signalling and checking systems in the field of home automation, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems.

Class 42: Scientific and technological services in the field of home automation; development of computer hardware in the field of home automation; development of computer systems in the field of home automation; design of home automation systems, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems; technical consultancy in the field of household technology.

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 ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to 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 contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity include, as a broader category, the opponent’s ignition (electric apparatus for remote -); commutators; conduits (electric); electric batteries; galvanometers; reducers (electricity); relays, electric; semiconductors; transformers (electricity) for industrial installations; electrical cables; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested control boxes for programmable electrical installations are included in the broad category of the opponent’s electric installations for the remote control of industrial operations; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting. Therefore, they are identical.

The contested data processing equipment and computers and the opponent’s programs for computers; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting can be manufactured by the same producers, target the same relevant public and are distributed through the same channels. Furthermore, they are complementary. Therefore, they are similar.

The contested home automation software and the opponent’s programs for computers; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting can have the same producer, distribution channels and relevant public. Therefore, they are similar.

The contested scientific and electronic, measuring, signalling and checking apparatus and instruments in the field of home automation, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems and the opponent’s heat regulating apparatus; electro-dynamic apparatus for the remote control of signals; temperature controlling apparatus; all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting can have the same producer, distribution channels and relevant public. Therefore, they are similar to a low degree.

In telecommunications, a transmitter is an electronic device with an antenna that produces radio waves. The word ‘transmitter’ is usually used only in relation to equipment that generates radio waves for communication purposes. A transmitter can be a separate piece of electronic equipment or an electrical circuit within another electronic device. The contested apparatus for recording, transmission or reproduction of sound or images and the opponent’s transmitting sets (telecommunication); all being for installations for generating, distributing and monitoring of energy, and not being for installations for electric lighting can have the same producer and distribution channels. Furthermore, they can target the same relevant public. Therefore, they are similar to a low degree.

Contested services in Class 37

The contested installation and activation of home automation systems; installation and activation of measuring, signalling and checking systems in the field of home automation, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems are installation services related to home automation, whereas the opponent’s services in Classes 37 and 42 are related to construction, repair and installation and to research regarding industrial installations for electrical energy and fuel. These services have different natures and purposes. It is unlikely that they will have the same providers. Furthermore, they target different relevant publics and are not complementary or in competition. Furthermore, by their nature, services are generally dissimilar to goods. Although under certain circumstances, a similarity can be found between goods and services, in the present case the contested services and the opponent’s goods in Class 9 have different purposes. They are not complementary or in competition. They do not have the same provider or manufacturer and they target different relevant publics. Therefore, the contested services are dissimilar to all of the opponent’s goods and services.

Contested services in Class 42

The contested development of computer hardware in the field of home automation; development of computer systems in the field of home automation and the opponent’s programs for computers can have the same manufacturer or provider, distribution channels and relevant public. Furthermore, they can be complementary. Therefore, they are similar.

The contested scientific and technological services in the field of home automation; design of home automation systems, in particular for the remote control of heating, ventilation and lighting systems, systems for opening and closing doors, blinds or shutters, alarm and surveillance systems and energy management systems; technical consultancy in the field of household technology are services provided in relation to home automation, whereas the opponent’s services are research services in the field of construction, repair and installation of industrial installations for the generation and distribution of electrical energy and of industrial installations for extraction, refinement and distribution of fuels in Class 42 and construction, repair and installation of industrial installations for generation and distribution of electrical energy; industrial plants for the extraction, refining and distribution of fuels in Class 37. These services have different natures and purposes. It is unlikely that they could have the same providers. They target different relevant publics and are distributed through different channels. Furthermore, they are not complementary or in competition. The opponent’s goods in Class 9 are also not similar to the contested services in any of the criteria. Apart from the fact that, by their nature, services are different from goods, the opponent’s goods and the contested services have different purposes and are not complementary. Therefore, the contested services in Class 42 are dissimilar to all of the opponent’s goods and services.

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.

The degree of attention varies from average to high depending on the specialised nature, the terms and conditions and the price of the goods and services purchased.

3. The signs

	edisio
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 trade mark is a figurative mark containing the verbal element ‘EDISON’, depicted in standard upper case letters, and, to its left, a figurative element that resembles a stylised lower case letter ‘e’.

The verbal element ‘EDISON’ will be perceived by the relevant public as the surname of Thomas Edison, an inventor who is known for having developed such devices as the electric light bulb, the phonograph and the motion picture camera. Thomas Edison is famous for various inventions and it is considered that his name would be known to an average consumer of the European Union who has a basic educational background, that is, by both the general and a professional public. Consequently, the average consumer, when encountering the earlier mark , will associate it with the surname of the inventor. However, the verbal element ‘EDISON’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and services, since it does not describe or allude to any of the possible characteristics of the goods and services. Therefore, it has an average degree of distinctiveness.

The figurative element of the earlier mark will be perceived, by at least part of the relevant public, as a stylised letter ‘e’. For this part of the relevant public, this element reinforces the first letter of the verbal element ‘EDISON’ and therefore it has an average degree of distinctiveness. It cannot be excluded that part of the relevant public will not attribute any meaning to the figurative element. For this part of the public, this element is of a rather decorative nature and it has a below average degree of distinctiveness.

The contested sign is a one-word mark. According to case-law, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The word ‘edisio’ of the contested sign has no meaning for the relevant public. It is not descriptive, allusive or otherwise weak in relation to the relevant goods and services and therefore it has an average degree of distinctiveness.

Visually, the signs coincide in the letters ‘EDIS*O*’. However, they differ in the second letter ‘I’ of the contested sign, which has no counterpart in the earlier mark, and in the final letter, ‘N’, of the earlier mark, which has no counterpart in the contested sign. The signs also differ in the figurative element of the earlier mark, which has no counterpart in the contested sign.

Although the signs coincide in several letters, including their beginnings, they differ in other letters, placed in different positions in the marks, including their endings, which cannot go unnoticed. 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 syllables ‘E-DI’, present identically in both signs. The pronunciation differs in the sound of the syllable ‘SON’ in the earlier mark, which has no counterpart in the contested sign, and in the sound of the syllables ‘SI-O’ in the contested sign, which have no counterparts in the earlier mark. Furthermore, the signs also differ in their number of syllables.

Although the pronunciation of the beginning of the signs is the same, their endings sound quite different, since the earlier mark ends in a consonant whereas the final two sounds of the contested sign are vowels. This difference between the signs will be clearly perceptible by consumers when the signs are referred to verbally.

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

Conceptually, although the public in the relevant territory will associate the earlier mark with the inventor Thomas Edison, as explained above, the contested sign has no meaning and the relevant public will not make a conceptual link between the signs. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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 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, despite the presence of a weak element in the mark (for a part of the public), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 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).

According to case-law, where it is established in fact that the objective characteristics of a given product mean that the average consumer purchases it only after a particularly careful examination, it is important in law to take into account that such a fact may reduce the likelihood of confusion between the marks relating to such goods at the crucial moment when the choice between those goods and marks is made (12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, § 40). In the present case, the goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. They target both the public at large and professionals with specific knowledge or expertise. The degree of attention varies from average to high, depending on the specialised nature, the terms and conditions and the price of the goods and services. Taking into account the specialised nature of the majority of the goods and services, it is likely that consumers will not purchase or order these goods and services without careful examination.

According to settled case-law, the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). In order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

The signs are visually and aurally similar to an average degree and conceptually not similar. The visual and aural similarities between the signs lie mainly in the signs’ first four letters, ‘EDIS’. Regarding the endings of the signs, although they both contain the letter ‘O’, this letter is placed in different positions and, consequently, the endings of the signs, ‘-ON’ versus ‘-IO’, are quite different.

As stated above in section c) of this decision, conceptually, the signs are not similar. The earlier mark will be associated with the famous inventor Thomas Edison, as it is considered that an average consumer in the European Union who has a basic educational background will associate the word ‘Edison’ with the inventor of the electric light bulb and other electrical devices, bearing in mind that the goods are related to electricity, electrical installations and electric devices. On the other hand, when encountering the contested sign, the average consumer will not perceive any meaning in it and thus will not make a conceptual link between the signs. Therefore, it is unlikely that the average consumer will confuse the marks or even make an association between them. As regards the professional public with specific knowledge and expertise, it is even more unlikely that they will confuse the signs or make any association between them, since this public has specific knowledge in this area and therefore it is even more likely that this part of the public will associate the word ‘EDISON’ of the earlier mark with the inventor Thomas Edison.

According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract the visual and phonetic similarities between them (12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, § 20; 18/12/2008, C‑16/06 P, Mobilix, EU:C:2008:739, § 98; 23/03/2006, C‑206/04 P, Zirh, EU:C:2006:194, § 35; 26/04/2018, T–554/14, MESSI (fig.) / MASSI et al., EU:T:2018:230, § 73).

In the present case, it is considered that the average consumer will immediately associate the earlier mark with an inventor and will not attribute any meaning to the contested sign. Therefore, this lack of conceptual similarity between the signs outweighs the visual and aural similarities between them and this is sufficient to exclude any likelihood of confusion, including likelihood of association.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and Rule 94(7)(d)(ii) CTMIR, in force before 01/10/2017), 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

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.