OPPOSITION No B 2 655 838

Robert Bosch GmbH, Robert-Bosch-Platz 1, 70839 Gerlingen, Germany (opponent), represented by Dieter Alvermann, Robert Bosch GmbH, Wernerstraße 1, 70469 Stuttgart, Germany (employee representative)

a g a i n s t

Dennis Meijer, Korte Klarenstraat 4, 2000 Antwerpen, Belgium (applicant).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 655 838 is upheld for all the contested goods.

2. European Union trade mark application No 14 978 704 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 978 704. The opposition is based on European Union trade mark registration No 67 744. 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

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

Class 7: Electric motors (excluding those for land vehicles), starters, (excluding those for land vehicles), generators, ignition systems for internal combustion engines, glow-plugs, sparking plugs, lambda probes, ignition distributors, ignition coils, magnetos, sparking plug connectors, injection pumps, fuel pumps, speed governors, injection nozzles and nozzle holders; machine valves; fuel filters, oil filters, air filters; hydraulic pumps, hydraulic motors, hydraulic valves, hydraulic cylinders, hydraulic reservoirs, hydraulic filters; pneumatic valves, power steering systems, compressed-air brakes, compressed-air devices, namely air compressors, compressed-air reservoirs, control valves, braking valves; exhaust-gas turbochargers; electronic control devices for production technology, resistance welding systems, servo drives and drive spindles, robot controllers, programmable controllers; modular elements for automatic assembly/production technology, including workplace equipment, namely worktables and workbenches, machine mountings, safety and protective devices, pivotable workplaces, lifting devices, table presses, material provision and management systems, namely conveyor belts and conveying chains, vibratory feeders, tilting devices as well as programmable electrical devices including grippers and single-arm robots; deburring machines (mechanical, thermal and electrochemical); packaging machines; electric power tools and their plug-in tools; electric kitchen appliances and accessories; dishwashing machines, washing machines, high frequency generators, startiers for internal combustion engines; parts and accessories for the abovementioned products insofar as they are contained in Class 7.

Class 9: Electrical and electronic measuring, monitoring and control devices for installation in motor vehicles; apparatus for recording, conditioning, processing, transmitting, receiving and indicating signals, data, images and sounds, electric and electromagnetic data carriers; video cameras, monitors, loudspeakers, antennas for radios and television receivers, telephones, car aerials, portable radiotelephones, car telephones; alarm systems; devices for location and navigation for installation in land vehicles, aircraft and marine craft; high- frequency generators, power supply devices, electric filters, semiconductor components, optoelectronic components; printed, etched and potted circuits, integrated circuits, relays, fuses, leads for electric, electronic and optical signals, cable connections, electric switches, electronic headlamp beam adjustment, electric motors, sensors, detectors, switching devices/switch boxes, solar cells and solar generators; analysers for motor vehicles, namely for exhaust gas analysis, soot particle analysis, brake function, diagnostic instruments and equipment for simulations, engine testers, workshop test devices for injection pumps, starters and generators; batteries, charging devices, battery testers, amplifiers, transformers, cable drums; parts and accessories for the abovementioned goods.

Class 11: Heating, cooking, grilling, warming and cooling apparatus; gas igniters, insofar as they are contained in Class 11; spotlights and lights including those for vehicles; cooling devices/refrigerators; ventilation systems; hair-dryers, coffee machines; roasters; baking ovens; electric egg-boilers; toasters; air-conditioning systems; monitoring and control devices for gas heaters; tumble diers; parts and accessories for the abovementioned goods of Class 11.

The contested goods are the following:

Class 7: Electric pumps for swimming pools; Water pumps for water filtering units; Circulating pumps; Portable filtration units [machines]; Metered gasoline pumps; Robotic swimming pool cleaning machines; Sweeping machines for use in swimming pools; Swimming pool cleaning machines; Water pumps for swimming pools; Automatic swimming pool sweepers.

Class 9: Measuring instruments; Pressure controllers [gauges]; Measuring devices, electric; Dosage dispensers; Automatic dosage apparatus; Ph meters; Digital pH meters; Rulers [measuring instruments]; Digital indicators; Electronic meters; Gauges with digital readout; Pool alarms.

Class 11: Water conditioning apparatus; Water purifying apparatus; Water treatment apparatus for water softening; Water treatment apparatus for water softening for domestic use; Chemical sterilization units [water treatment equipment]; Water purifying installations; Water purification tanks; Water purification units; Industrial-water purifying apparatus; Filters for water purifiers; Filter boxes for water purification; Water purifying apparatus and machines; Water purifying units for producing potable water; Water purification, desalination and conditioning installations; Hand held portable water purification apparatus; Filters for use with swimming pools; Disinfectant dispensers for toilets; Chlorinating units for water treatment; Ionization apparatus for the treatment of water; Installations for water treatment under osmotic process; Cartridge filtration units [water treatment equipment]; Ultraviolet sterilization units [water treatment equipment]; Reverse osmosis filtration units [water treatment equipment]; Swimming pool heaters; Installations for heating swimming pools; Swimming pool chlorinating apparatus; Fixed underwater lighting installations for swimming pools; Spa pools; Flexible pipes being parts of basin plumbing installations.

An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of its goods.

The term ‘including’ 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 7

The contested electric pumps for swimming pools and circulating pumps overlap with the opponent’s injection pumps, as they are all pumps. Therefore, they are identical.

The contested water pumps for water filtering units and water pumps for swimming pools are included in the broad category of the opponent’s hydraulic pumps. Therefore, they are identical.

The contested metered gasoline pumps are included in the broad category of the opponent’s fuel pumps. Therefore, they are identical.

The contested portable filtration units [machines] are similar to the opponent’s electric motors (excluding those for land vehicles), as they can have the same producers and end users. Furthermore, they are complementary, as both can be parts of the same machines and they can be functionally dependent on one another.

The contested robotic swimming pool cleaning machines; sweeping machines for use in swimming pools; swimming pool cleaning machines; automatic swimming pool sweepers are similar to the opponent’s hydraulic valves, hydraulic cylinders, hydraulic reservoirs, hydraulic filters, as the opponent’s goods are spare or replacement parts for the contested machines. The opponent’s parts and fittings are particularly important for the functioning of the contested machines and the public may also expect these components to be produced by, or under the control of, the same manufacturer. Furthermore, they are complementary. Therefore, these goods are similar.

Contested goods in Class 9

The contested measuring instruments; measuring devices, electric; rulers [measuring instruments] include, as broader categories, or overlap with, the opponent’s electrical and electronic measuring … devices for installation in motor vehicles. 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 pressure controllers [gauges] include, as a broader category, or overlap with, the opponent’s electrical and electronic … control devices for installation in motor vehicles. 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 dosage dispensers; automatic dosage apparatus overlap with the opponent’s electrical and electronic measuring … devices for installation in motor vehicles. These contested goods are devices used to measure and release doses of fluids and they can be electrical and used in motor vehicles. Therefore, these goods are identical.

The contested Ph meters; digital pH meters; digital indicators; electronic meters; gauges with digital readout are included in the broad category of the opponent’s apparatus for … indicating … data. Therefore, they are identical.

The contested pool alarms are included in the broad category of the opponent’s alarm systems. Therefore, they are identical.

Contested goods in Class 11

The contested swimming pool heaters; installations for heating swimming pools are included in the broad category of the opponent’s heating … apparatus. Therefore, they are identical.

The contested fixed underwater lighting installations for swimming pools are included in, or overlap with, the broad category of the opponent’s spotlights and lights including those for vehicles. Therefore, they are identical.

The contested water conditioning apparatus; water purifying apparatus; water treatment apparatus for water softening; water treatment apparatus for water softening for domestic use; chemical sterilization units [water treatment equipment]; water purifying installations; water purification tanks; water purification units; industrial-water purifying apparatus; water purifying apparatus and machines; water purifying units for producing potable water; water purification, desalination and conditioning installations; hand held portable water purification apparatus; … ionization apparatus for the treatment of water; installations for water treatment under osmotic process; … reverse osmosis filtration units [water treatment equipment]; … swimming pool chlorinating apparatus are similar to the opponent’s air-conditioning systems, as they can have the same producers, end users and distribution channels.

The contested filters for water purifiers; filter boxes for water purification; … filters for use with swimming pools; (…) chlorinating units for water treatment; … cartridge filtration units [water treatment equipment]; ultraviolet sterilization units [water treatment equipment]; … flexible pipes being parts of basin plumbing installations are similar to the opponent’s hydraulic pumps in Class 7, as they can have the same producers, end users and distribution channels.

The contested spa pools are baths containing hot aerated water. Therefore, they are similar to the opponent’s heating … apparatus, as they can have the same producers, end users and distribution channels.

The contested disinfectant dispensers for toilets are automatic machines or containers that are designed to release specific amounts of disinfectant fluids. They are very commonly installed in places where water stagnates to prevent the proliferation of microbes. Therefore, they are similar to a low degree to the opponent’s hydraulic pumps in Class 7, as they can have the same producers and distribution channels.

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 varying degrees are specialised machines, devices and their parts and accessories. They are directed at the public at large as well as at professionals.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

BOSCH	BoschBlue
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the single word ‘BOSCH’.

The contested sign is the single word ‘BoschBlue’.

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 word marks are depicted in lower or upper case letters.

The Court has held 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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51).

In the present case, the English-speaking part of the public may understand the one-word contested sign as two distinct words, given that the element ‘Blue’ will be understood as the name ‘of a colour intermediate between green and violet, as of the sky or sea on a sunny day’ (information extracted from Oxford Dictionaries on 24/02/2017 at http://www.oxforddictionaries.com/). By contrast, the element ‘Bosch’ has no meaning in English.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The element ‘Blue’ of the contested sign will be associated with a colour, as explained above. Bearing in mind that the relevant goods are devices, machines and apparatus related to water and its treatment, this element is weak for these goods, as it refers to the colour most often used to represent water.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the element ‘BOSCH’. However, they differ in the element ‘BLUE’, which has no counterpart in the earlier mark and therefore the contested sign is longer. The earlier mark is wholly included in the beginning of the contested sign and it is its most distinctive element.

Considering what has been stated above about the impact of the coincidence in the first element and its distinctive character in both signs, the marks are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘BLUE’ of the contested sign, as explained above, the other sign has no meaning for the public. 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the earlier mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are identical or similar to varying degrees to the opponent’s goods and they target the general public, whose degree of attention is average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.

The marks under comparison are visually and aurally highly similar owing to the reproduction of the entire earlier mark as the first five letters of the most distinctive element in the contested sign.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign 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, for example by adding the element ‘blue’ to designate goods related to water (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division concludes that, as a whole, the signs have more similarities than differences because the latter result from a weak element in the contested sign.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application and there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 67 744. It follows that the contested trade mark must be rejected for all 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Irina SOTIROVA

Loreto URRACA LUQUE

Jessica LEWIS

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.