DECISION

of the Second Board of Appeal

of 29 October 2019

In case R 2172/2018-2

EDISON S.p.A.
Foro Buonaparte, 31 20121 Milano Italy	Opponent / Appellant

represented by Notarbartolo & Gervasi S.P.A., Corso di Porta Vittoria, 9, 20122 Milano, Italy

v

SMART TECHNOLOGY
Route de Charleroi 5 6180 Courcelles Belgium	Applicant / Defendant

represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe - Terhulpen, Belgium

APPEAL relating to Opposition Proceedings No B 2 642 711 (European Union trade mark application No 14 634 216)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), A. Szanyi Felkl (Rapporteur) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 1 October 2015, SMART TECHNOLOGY (‘the applicant’) sought to register the word mark

edisio

for the following goods and services:

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.

2. The application was published on 20 October 2015.

3. On 20 January 2016, EDISON S.p.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods and services.

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

5. The opposition was based on earlier EUTM Registration No 3 315 991 for the figurative mark

filed on 18 August 2003 and registered on 19 August 2013 for goods and services in Classes 9, 37 and 42.

6. The signs and goods and services in conflict were as follows:

   EUTMR applied for	Earlier EUTM
   edisio
   Contested goods and services	Opposition based on the following goods and services
   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.	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.

7. By decision of 6 September 2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. It gave, in particular, the following grounds for its decision:

• The contested ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in Class 9 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.

• 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’ in Class 37 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.

• 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’ in Class 42 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.

• 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.

• 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.

• Conceptually, although the public in the relevant territory will associate the earlier mark with the inventor Thomas Alva 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.

• The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

• 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.

• 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.

• 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.

Submissions and arguments of the parties

8. On 6 November 2018, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 7 January 2019 and can be summarised as follows:

• In relation to the goods and services comparison, the opponent argues that:

• 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’ in Class 9 are identical or highly similar and not only lowly similar;

• The earlier ‘transmitter’ in Class 9 is identical or highly similar to the contested ‘apparatus for recording, transmission or reproduction of sound or images’ also in Class 9;

• 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’ in Class 37 are similar to a high degree to the earlier goods in Class 9 and services in Classes 37 and 42;

• 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 are highly similar to the earlier goods in Class 9 and services in Class 42.

• Visually, the signs are highly similar;

• Phonetically, the signs are highly similar;

• Conceptual dimension is irrelevant. In particular, Thomas Alva Edison may be known by some consumers but is unknown to many others. There is no unanimous knowledge of him throughout the EU.

9. The applicant filed its observations on 22 April 2019. They can be summarised as follows:

• The marks are visually and phonetically dissimilar;

• Conceptual comparison is not possible;

• Thomas Edison is a figure of international renown as evidenced by the number of schools and universities, places or programs bearing his name;

• The contested goods in Class 9 and the earlier goods are dissimilar;

• The contested services in Class 37 and the earlier services are dissimilar;

• The contested services in Class 42 and the earlier goods and services are dissimilar;

• The relevant public is a specialized public with a high level of attention;

• There is no likelihood of confusion.

Reasons

10. All references made in this decision should be seen as references to the EUTMR 2017/1001 (OJ L 154, 16.6.2017, p. 1), codifying EUTMR 207/2009, unless specifically stated otherwise in this decision.

11. The appeal complies with Articles 66, 67 and 68 EUTMR. It is, therefore, admissible.

Article 8(1)(b) EUTMR

12. According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two 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.

13. 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, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

14. Likelihood of confusion 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public

15. The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein) and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

16. In the present case, the Opposition Division correctly held that the relevant public consists of the public at large and professionals. The goods are electric and electronic devices and the services are related to their use and maintenance. However, the Board notes that the degree of attention will be higher than average, since instruments and apparatus in home automation are rather sophisticated technical products, which are not everyday purchases and/or involve higher security and safety standards, and may be selected and purchased with a higher degree of care and attention on account of their technical characteristics and their price (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41; by analogy, 13/10/2009, T-146/08, Redrock, EU:T:2009:398, § 44-47). The same is true as regards the services concerned.

Relevant territory

17. In the current case, the earlier mark is a EUTM. It follows that the relevant territory is the European Union.

Comparison of the goods

18. In the present case, for reasons of procedural economy, the examination of the appeal will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

Comparison of the marks

19. The signs to be compared are:

    	edisio
    Earlier EUTM	Contested sign

20. The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

21. The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333 § 42).

22. In light of the foregoing, before examining whether there is any visual, phonetic and conceptual similarities between the marks at issue, the Board will make an assessment on the distinctive and dominant elements of the marks at issue (12/11/2015, T-449/13, WISENT / ŻUBRÓWKA BISON BRAND VODKA, EU:T:2015:839, § 60-61).

Distinctive and dominant elements

23. In the present case, the earlier sign is a figurative sign 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’.

24. As correctly held by the Opposition Division, the verbal element ‘EDISON’ will be perceived by the relevant public as the surname of Thomas Edison, one of the most famous inventors, 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. It follows that the word ‘EDISON’ has a clear and specific meaning which can be and will be grasped immediately by the relevant public, especially since the goods and services are of technical nature.

25. As referred to the relevant goods and services, the word ‘EDISON’ is normally distinctive because it does not describe or allude to any of the possible characteristics of the goods and services.

26. The figurative element consists of two incomplete circles, interconnected in such a way that they form a lower case ‘e’. Although this element is not fully negligible, its stylisation endows the mark as a whole with a figurative character. It must be noted, that in the present case, the letter ‘e’, associated with the relevant goods and services in Classes 9, 37 and 42, informs the relevant public of the fact that those goods and services are connected with energy or electricity, given that the letter ‘e’ is often used as an abbreviation for the terms ‘energy’ or ‘electricity’ (21/05/2008, T-329/06, E, EU:T:2008:161, §§24 - 30). On that account the letter ‘e’ is also descriptive of the goods and services at issue, with the result that conceptually it is of limited importance in the comparison of the marks (14/03/2017, T-276/15, e (fig.) / e (fig.), EU:T:2017:163, §§27-28).

27. The contested sign is a word mark that consists of a word ‘edisio’. It is an entirely fanciful word that does not have any meaning for the relevant public.

Visual comparison

28. In the present case, the signs coincide in the string of letters ‘EDIS*O’.

29. The signs 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.

30. The Opposition Division held that the signs are similar to an average degree. The Board agrees with this assessment. In particular, 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. These differences will not be unnoticed by the relevant public. In addition, the relevant public will also notice the rather prominent, figurative element placed at the beginning of the earlier mark.

Aural comparison

31. Phonetically, the pronunciation of the signs coincides in the sound of the syllables [e-di], present identically in both signs.

32. 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.

33. In view of the above, the Board agrees with the Opposition Division that the conflicting signs are similar to an average degree.

Conceptual comparison

34. FFFFrom a conceptual point of view, the Opposition Division held that the relevant public in the relevant territory will associate the earlier mark with the inventor Thomas Edison.

35. The opponent argues that Thomas Edison may be known by some consumers but is unknown to many others. There is no unanimous knowledge of him throughout the EU.

36. The applicant argues that Thomas Edison is a figure of international renown as evidenced by the number of schools and universities, places or programs bearing his name.

37. The Board takes the view that Thomas Edison is particularly well-known public figure in the European Union. He is the inventor of, e.g., light bulb, telegraph and phonograph. Due to that, he is known as ‘the father of electricity’ and is often portrayed as the greatest inventor of the nineteenth century. His name is taught during school education, there are documentary movies and books about him, he is regularly being mentioned in contemporary debates (including, e.g., as a role-model for today’s teenagers, see https://www.bbc.com/future/article/20180316-four-teenage-inventors-changing-the-world, 17/10/2019). Also, as correctly noted by the applicant, a large number of schools, universities, places or programs bear his name. Due to that, Thomas Edison is undoubtedly a public figure that everyone reasonably well-informed and reasonably observant and circumspect in the EU must have come across (see, by analogy, 26/04/2018, T-554/14, MESSI (fig.) / MASSI et al., EU:T:2018:230, § 52). The figures cited by the applicant confirm it. Although Thomas Edison lived between in the 19^th and at the beginning of 20^th century, a contemporaneous Internet search still gives 71.900.000 hits when his name is typed.

38. Therefore, the Board confirms the finding of the Opposition Division that the word ‘EDISON’ has a clear and specific meaning that can be grasped immediately by the relevant public. Also, the stylised letter ‘e’ will be understood as a reference to ‘energy’ or ‘electricity’, by the major part of the relevant public, as explained in paragraph 26, above.

39. The contested mark, on the other hand, consists of a single, meaningless verbal element ‘edisio’, which does not refer to any concept.

40. It follows that the conflicting trade marks are conceptually different.

Distinctiveness of the earlier mark

41. In determining the degree of distinctive character of a trade marks, an overall assessment has to be made of the greater or lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking.

42. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22‑23). As such, the distinctive character of a trade mark can be appraised only, firstly by reference to the goods in respect of which registration is sought and, secondly, by reference to the way it is perceived by the relevant public.

43. 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 marks will rest on their distinctiveness per se.

44. The Opposition Division assessed the distinctiveness of the earlier mark as normal. The parties have not pointed out any mistakes in the reasoning or the conclusion of the Opposition Division. The Board concurs with the Opposition Division.

Overall assessment of the likelihood of confusion

45. A global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

46. To sum it up, in the present case, the relevant public consists of the public at large and professionals. The conflicting goods and services were assumed to be identical. The signs are visually and phonetically similar to an average degree. The signs are conceptually different. The distinctiveness of the earlier mark is normal.

47. In view of all the above factors, the Board finds that there can be no likelihood of confusion on the part of the relevant public.

48. In particular, according to the 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, §§ 20-27). This may particularly be the case where it refers to a name of a public figure that is so well-known that anyone reasonably well-informed and reasonably observant and circumspect in the relevant territory must have come across it (see, by analogy, 26/04/2018, T‑554/14, MESSI (fig.) / MASSI et al., EU:T:2018:230, § 52; 22/06/2004, T‑185/02, Picaro, EU:T:2004:189, §§ 55-57).

49. In the present case, the earlier mark consists of the word ‘EDISON’, i.e. the family name of Thomas Edison who is a well-known public figure in the European Union. As discussed in more detail above, the constant presence of the name of Thomas Edison in school, movies, books and online is such that anyone reasonably well-informed and reasonably observant and circumspect in the EU must have come across it. It follows that the earlier mark has a meaning that is clear and specific so that it can be grasped immediately by the relevant public. In particular, the reputation of Thomas Edison is of a degree that it is not plausible to consider that the use of the name ‘EDISON’ in a trade mark may override the association with the well-known person Thomas Edison in the perception of the relevant public (see, by analogy, 22/06/2004, T‑185/02, Picaro, EU:T:2004:189, §57). Therefore, the Board takes the view that the conceptual differences between the conflicting signs counteract the visual and phonetic similarities between them.

50. In light of the foregoing, taking into account the relevant factors and their mutual interdependence, there is no reason to assume that a significant part of the relevant public will be misled into thinking that the goods bearing the signs in dispute would come from the same undertaking or, as the case may be, from undertakings that are economically linked.

51. The appeal therefore needs to be dismissed and the contested decision confirmed.

Costs

52. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and appeal proceedings.

53. These consist of the applicant’s costs of professional representation of EUR 550.

54. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to pay EUR 550 for the applicant’s costs in the appeal proceedings. The total amount to be paid by the opponent in the opposition and appeal proceedings is EUR 850.

Signed S. Stürmann

Signed A. Szanyi Felkl

Signed C. Negro

Registrar: Signed H.Dijkema