OPPOSITION No B 2 866 401

CAME S.p.A., Via Martiri Della Libertà, 15 Frazione Dosson, 31030 Casier (TV), Italy (opponent), represented by Barzanò & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Rosemount Inc., 6021 Innovation Blvd., 55379 Shakopee, United States of America (applicant), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 München, Germany (professional representative)

On 19/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 866 401 is upheld for all the contested goods.

2. European Union trade mark application No 16 068 017 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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/or 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 of European Union trade mark application No 16 068 017 for the word mark ‘CAM’. The opposition is based on European Union trade mark registration No 8 776 429 for the word mark ‘CAME’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 21/03/2018, the applicant filed a limitation request by adding a specification at the end of the list of goods in Class 9 to exclude products related to certain goods. The application was limited accordingly, the opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the goods in Class 9 in their limited specification as detailed further below.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 8 776 429 for the word mark ‘CAME’.

Following this request, on 29/08/2017 the Office gave the opponent until 03/11/2017 to submit evidence of use of the earlier trade mark. On 31/10/2017, within this time limit, the opponent submitted evidence of use.

However, the Opposition Division notes that whereas the earlier European Union trade mark No 8 776 429 was registered on 29/09/2011 and, although the filing date of the contested application is 21/11/2016, its date of priority is 07/06/2016. Consequently, the earlier mark had not been registered for at least five years at the relevant date, namely at the priority date of the contested trade mark.

It follows that the applicant’s request for proof of use was in fact inadmissible and must therefore be rejected.

As a result, the evidence of use of the earlier mark submitted by the opponent should not be taken into consideration in the present proceedings and will therefore be fully disregarded. As a consequence, European Union trade mark registration No 8 776 429 will be considered to cover all the goods for which it has been registered and on which the opposition is based.

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 9: Electric control, connection and distribution panels, signal lanterns, flashing lights (luminous signals), transmitters and receivers, antennas, photocells, home automation systems, door and window openers and closers, electric and electronic; security devices, access control devices, parking control equipment, electronic; all aforesaid products excluding products related to the field of cars.

Following the limitation mentioned in the preliminary remark above, the contested goods are the following:

Class 9: Monitors, sensors, and software for assets in electrical power distribution, transmission and generation systems; wireless sensor systems for smart grid applications consisting primarily of electronic interrogation and metering devices, namely, radio frequency transceivers and associated sensors, along with digital displays for communicating data, and sensor modules for sensing temperature, humidity, partial discharge and other measurands associated with the monitoring and protection of assets used in the transmission and distribution of electric power including switchgear, transformers and ring main units; all aforesaid products excluding products related to home automation systems, door and window openers and closers, security devices, access control devices, parking control equipment.

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

Electrical power generation, transmission and distribution systems concern the generation of electrical power at power stations and its transmission and distribution to individual consumers.

Consequently, the contested monitors, sensors, and software for assets in electrical power distribution, transmission and generation systems consist of monitors, sensors and software being assets in the activities concerned with the industrial sector referred to above and effectively gather performance data which enables power to be efficiently monitored and distributed.

The opponent’s electric control, connection and distribution panels principally consist of goods such as electric switchboards that direct electricity from one or more sources of supply to several smaller regions of usage and may thus be part of the final stage of electrical distribution systems to individual consumers.

Therefore, the contested monitors, sensors, and software for assets in electrical power distribution, transmission and generation systems [all aforesaid products excluding products related to home automation systems, door and window openers and closers, security devices, access control devices, parking control equipment] are similar to the opponent’s electric control, connection and distribution panels since, even if they have a different nature, they can target the same relevant public (professionals in the field of electrical power generation, transmission and distribution), share the same distribution channels and be produced by the same undertakings.

The contested wireless sensor systems for smart grid applications consisting primarily of electronic interrogation and metering devices, namely, radio frequency transceivers and associated sensors, along with digital displays for communicating data, and sensor modules for sensing temperature, humidity, partial discharge and other measurands associated with the monitoring and protection of assets used in the transmission and distribution of electric power including switchgear, transformers and ring main units [all aforesaid products excluding products related to home automation systems, door and window openers and closers, security devices, access control devices, parking control equipment] effectively consist of wireless sensor systems for smart grid applications used in the transmission and distribution of electric power and thus concern wireless sensor systems for electrical grids which are interconnected networks for delivering electricity from producers to consumers that consist of electricity generating stations, transmission lines (from the generation sources to demand centres) and distribution lines that connect individual customers. Therefore, these contested goods are also similar to the opponent’s electric control, connection and distribution panels for the same reasons as those outlined above.

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 opponent’s goods found to be similar to the contested goods can be directed at the general public and at professionals. However, as can be seen from the considerations concerning the contested goods made above, they are directed at a professional public only. Therefore, the relevant public for assessing the likelihood of confusion will be the professional public only.

Taking into account the specialised nature of the goods concerned and that they are not likely to be purchased on a regular basis, the degree of attention will be rather high.

3. The signs

CAME	CAM
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 applicant argues that while ‘CAME’ is the simple past tense of the English verb ‘to come’, ‘CAM’ is an abbreviation of the English word ‘camera’ and that the signs in dispute will therefore be perceived as conceptually different, at least by the English-speaking public.

However, 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In this respect, both the earlier mark ‘CAME’ and the contested sign ‘CAM’ will be perceived as consisting of fanciful words without any meaning by part of the non-English-speaking public in the relevant territory, such as that in Spain and Italy.

Therefore, the Opposition Division will first examine the opposition in relation to this part of the public for which ‘CAME’ and ‘CAM’ have no meaning and, therefore, have a normal degree of distinctiveness.

Visually, both signs are word marks without any particular stylisation and the contested sign is fully contained at the beginning of the earlier mark. Therefore, the only difference between the signs is the additional letter ‘E’ at the end of the earlier mark.

The applicant argues that in relation to short signs, consumers will not pay more attention to the beginning of the signs but will rather perceive them immediately in their entirety. In this respect, even if it may be true that the beginning of the signs may not be more important than their central parts, or their endings, both in relation to short signs (such as the contested sign) and in relation to relatively short signs (such as the earlier mark), the fact remains that the signs share the same three letters ‘CAM’ in an identical order and position and are only differentiated by one additional letter (‘E’) at the end of the earlier mark.

Therefore, the signs are still visually highly similar overall (see by analogy 29/01/2013, T-283/11, nfon, EU:T:2013:41, § 48 and 25/10/2006, T-13/05, Oda, EU:T:2006:335, § 52).

Aurally, the signs coincide in the sound of the same letters ‛CAM’ in an identical position and order but differ in the sound of the additional letter ‛E’ at the end of the earlier mark.

Even if the earlier mark will be pronounced as two syllables, ‛CA‑ME’, whereas the contested sign will be pronounced as one syllable, ‛CAM’, as argued by the applicant, this does not have a significant impact on the rhythm and intonation of the signs, in particular since the sound of the additional letter ‛E’ will not be accentuated by the part of the public under analysis and will therefore only produce an additional short, soft sound.

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

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods have been found similar and the degree of attention of the relevant public is rather high.

The earlier mark has a normal degree of distinctiveness and the signs are visually highly similar and aurally similar to at least an average degree. Furthermore, there is no conceptual difference between the signs for the part of the public under analysis that could help consumers to more easily distinguish between them.

Considering all the above, bearing in mind the principle of interdependence and imperfect recollection as outlined above, and the considerable overall similarities between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public under analysis in the relevant territory, even if a higher degree of attention will be displayed by consumers (who will still need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). 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.

The applicant refers to previous decisions of the Office to support its arguments that there is no likelihood of confusion between the signs in dispute, namely decision of 10/05/2011, B 1 715 484, ‘CLUB/CLU', decision of 03/09/2009, B 1 129 602, ‘HAL/HALO' and decision of 17/02/2009, B 1 195 942, ‘TEBA/TEB'. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. However, even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In this respect, the Opposition Division notes that in the case of ‘CLUB/CLU', there was a conceptual difference between the signs that was considered to distinguish those marks so as to counteract to a large extent their visual and aural similarities, which is not the case in the present proceedings for the part of the public under analysis.

As regards the cases of ‘HAL/HALO' and ‘TEBA/TEB', those signs were found to be aurally similar only to a low degree in view of their particular letter combinations which, however, is not the case in the present proceedings in view of the specific letter combinations in the case at hand for the reasons outlined above in section c) of this decision. As a result, the circumstances and considerations made in the cases referred to by the opponent are different from the circumstances and considerations relevant to the case at hand. Furthermore, apart from the three relatively old first instance cases referred to by the applicant, there are numerous much more recent decisions, both by the Boards of Appeal and by the Opposition Division, coming to a different conclusion, in line with the findings made above, such as 09/07/2018, R 0151/2018-5, ‘Vgo(fig)/VGOD(fig)', 29/06/2018, B 2 944 851, ‘IMA/imas(fig)', 05/06/2018 and B 2 315 730, ‘RANI/ran(fig)', including decisions to this effect by the General Court, for example 21/01/2016, T-75/15, ‘RODI(fig)/ROD(fig)'. Consequently, the previous cases cited by the applicant are not of such a nature as to alter the outcome reached above.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 776 429. It follows that the contested trade mark must be rejected for all the contested goods.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vanessa PAGE

Sam GYLLING

Justyna GBYL

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.