OPPOSITION No B 2 669 458

Blue Solutions, Odet, 29500 Ergue Gaberic, France (opponent), represented by Ernest Gutmann - Yves Plasseraud S.A.S., 3, rue Auber, 75009 Paris, France (professional representative)

a g a i n s t

Shenzhen overocean technology limited, No. 248 Building B Antique City, Xinxiu Road Shennan East Road, Huangbei Street, Luohu District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 669 458 is upheld for all the contested goods, namely:

Class 9: Batteries; Battery chargers; Solar batteries; Plugs, sockets and other contacts [electric connections]; Uninterruptable power supply apparatus; Global Positioning System [GPS] apparatus.

Class 12: Air vehicles; Amphibious airplanes; Space vehicles; Vehicles for locomotion by land, air, water or rail; Remote control vehicles, other than toys; Aircraft; Vehicle wheel tires [tyres]; Sleighs [vehicles]; Aerial conveyors; Cycles; Electric vehicles; Couplings for land vehicles; snowmobiles; Rolling stock for railways; Reversing alarms for vehicles.

2. European Union trade mark application No 14 882 914 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 882 914, namely against some of the goods in Class 9 and all the goods in Class 12. The opposition is based on French trade mark registration No 144 080 272. 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: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electric current, in particular batteries, battery chargers, capacitors and super-capacitors; cables, apparatus for charging electric batteries; downloadable software and firmware for telephone and computer applications for the rental, booking and arrangement of subscriptions to a car rental service; sockets; electronic tracking apparatus for vehicles; monitoring apparatus for domestic or industrial electrical energy consumption; apparatus for analysing signals, current and voltage; devices for photovoltaic conversion of solar radiation into electrical energy; solar panels for electricity generation; solar cells; photovoltaic apparatus and installations for generating solar electricity.

Class 12: Apparatus for electric locomotion by land, air or water; electrically propelled land vehicles; spare parts for electrically propelled vehicles for locomotion by land, namely, bodywork parts, parts of motors and engines, brakes, shock absorbers; electrically powered cars, boats and trams; electrically powered mopeds, electrically powered scooters, electrically powered trucks; electric motors and transmission parts for electrically powered vehicles.

Class 35: Retail sales services relating to electric vehicles and spare parts therefor; retail sale of solar panels.

Class 37: Maintenance, servicing and repair of electric vehicles, boats and trams; service stations (recharging electric batteries for vehicles, maintenance); maintenance and repair of apparatus and installations for the collection, storage, distribution, conversion of renewable energy including solar energy.

Class 39: Transport services; vehicle rental services; distribution and supply of electricity; tracking services, locating and monitoring of vehicles and vessels.

The contested goods are the following:

Class 9: Batteries; Battery chargers; Solar batteries; Plugs, sockets and other contacts [electric connections]; Uninterruptable power supply apparatus; Global Positioning System [GPS] apparatus.

Class 12: Air vehicles; Amphibious airplanes; Space vehicles; Vehicles for locomotion by land, air, water or rail; Remote control vehicles, other than toys; Aircraft; Vehicle wheel tires [tyres]; Sleighs [vehicles]; Aerial conveyors; Cycles; Electric vehicles; Couplings for land vehicles; snowmobiles; Rolling stock for railways; Reversing alarms for vehicles.

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

The term ‘in particular’, used in the opponent’s list of goods and services in Class 9, indicates that the specific goods 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods in Class 12 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.

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

All of the contested goods in this class are identical to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electric current, in particular batteries, battery chargers, capacitors and super-capacitors; cables, apparatus for charging electric batteries; sockets; electronic tracking apparatus for vehicles, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include or overlap with the contested goods.

Contested goods in Class 12

The contested air vehicles; amphibious airplanes; vehicles for locomotion by land, air, water or rail; remote control vehicles, other than toys; aircraft; sleighs [vehicles]; aerial conveyors; cycles; electric vehicles; snowmobiles are identical to the opponent’s apparatus for electric locomotion by land, air or water, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with the contested goods.

The contested vehicle wheel tires [tyres]; couplings for land vehicles, reversing alarms for vehicles are parts and fittings for vehicles; therefore, these goods are similar to apparatus for electric locomotion by land, as they can have the same producer, end user and distribution channels. Furthermore, they are complementary.

Space vehicles are rocket-powered vehicles used to transport unmanned satellites or humans between the Earth’s surface and outer space. The companies that have the expertise to manufacture these goods and put them on the market are the same as the companies that make apparatus for electric locomotion by air, and the channels of trade will be the same. These goods are consequently, similar to a low degree.

The contested rolling stock for railways is made and put on the market by the same companies that manufacture electrically powered trams, and the channels of trade are the same. Moreover, the goods are complementary in the sense that they are essential for each other; consequently, the goods are 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 found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased goods and services; for example, it will be average for some batteries, whereas it will be very high in relation to space vehicles.

3. The signs

	BigBlue
Earlier trade mark	Contested sign

The relevant territory is France.

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 a figurative mark comprising the word ‘blue’ depicted in this colour, and it lacks dominant elements. ‘Blue’ is the English term for the colour blue and is part of the basic English vocabulary (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Furthermore, this word is very close to the French equivalent, ‘bleu’. Consequently, it will be understood by the relevant public.

In its observations, the applicant argues that ‘the term “blue” most certainly does – at best – possess an average to low level of distinctiveness’; the applicant has not, however, submitted any reasons to explain why the level of distinctiveness of the mark should be below average, and the Opposition Division considers that the level of distinctiveness is average as it is not meaningful in relation to the goods.

In the contested mark, contrary to what the applicant argues, the French public will perceive two words, ‘Blue’ and ‘Big’, for two reasons: first, as both words are basic English words, they will be understood by the relevant part of the public referred to above; second, the expression ‘BigBlue’ is visually broken down into two parts as the upper case letter ‘B’ is in the middle. It must be remembered that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

As it is a word sign, the contested mark lacks dominant elements. In terms of the distinctiveness of its components, although the relevant public might not attribute an exact meaning to the combination of ‘Big’ and ‘Blue’, a very significant part of the public will know that ‘big’ is an adjective so usually qualifies the word it accompanies, in this case ‘Blue’. For this reason, it is subordinate to ‘blue’, which is not meaningful, and is therefore distinctive for the goods at issue.

Visually, the signs coincide in ‘Blue’ but differ in the colour of the earlier mark and the word ‘Big’ of the contested mark. The colour merely reinforces the word ‘Blue’ and therefore does not contribute to differentiating the marks. As stated above, consumers will understand that ‘Big’ is subordinate to the word ‘Blue’, which the signs have in common. Therefore, although the verbal difference between the signs is at the beginning of the contested sign as the applicant points out, the degree of visual similarity between the marks must be deemed average.

Aurally, the signs coincide in the pronunciation of the word ‘Blue’ but differ in the pronunciation of the word ‘Big’. Taking into account what has been stated above regarding the role of the word ‘Big’ in relation to the element that the marks have in common, the degree of aural similarity must be deemed high.

It has already been explained in this decision that a relevant part of the French public will grasp the meaning of both words in the signs: ‘Blue’, which they have in common, and ‘Big’. It might be the case that the relevant consumers will not attribute any particular meaning to the combination of ‘Big’ and ‘Blue’. Consequently, the degree of conceptual similarity must be deemed high.

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 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

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.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The goods target the general and professional public and the attention varies from average to high. In this regard, it must be remembered, however, that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The signs are visually similar to an average degree and aurally and conceptually highly similar, as the differences between them are limited to a colour that reinforces the concept of ‘Blue’ and an adjective that merely qualifies this word.

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).

Under the circumstances described above, even in relation to the professional public and/or when a high degree of attention is paid to the goods, and even when these goods are similar to only a low degree to the opponent’s, the relevant public might think that the goods originate from the same company or from undertakings with economic ties.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the French public and therefore the opposition is well founded on the basis of the opponent’s French trade mark registration.

It follows from the above that the contested trade mark must be rejected for the contested goods.

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

Angela DI BLASIO

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.