OPPOSITION No B 2 899 071

SFL technologies GmbH, Innovationspark 2, 8152 Stallhofen, Austria (opponent), represented by Wirnsberger & Lerchbaum Patentanwälte OG, Mühlgasse 3, 8700 Leoben, Austria (professional representative).

a g a i n s t

Eli Electric Vehicles Co. Ltd., Lüyouyuan Konggang C Qu, Shunyi, 101301 Beijing, People´s Republic of China (applicant), represented by Katarzyna Binder-Sony, ul. Poznańska 23/6, 00-685 Warszawa, Poland (professional representative).

On 29/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 981 036 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 321 424 for the figurative mark . The opposition is based on European Union trade mark registration No 15 640 113 for the word mark ‘ELI’. The opponent invoked Article 8(1)(a) and (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.

a) The goods and services

The goods and services on which the opposition is based are, following the decision in opposition proceedings B 2 784 083, which has become final, the following:

Class 9: Apparatus and instruments for conducting, switching, transforming electricity.

Class 12: Caissons [vehicles].

Class 37: Building construction; vehicle fueling services; service stations (vehicle -) [refuelling and maintenance]; rental of vehicle maintenance equipment; vehicle refuelling.

The contested goods are the following:

Class 12: Electric vehicles, namely, NEV's (neighborhood electric vehicles); Land vehicles, namely, low-speed electric vehicles; Electrically-powered motor vehicles.

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

As a further remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested goods have no relevant point in common with any of the opponent´s goods and services in Classes 9, 12 and 37. The contested goods in Class 12 are all electric vehicles. Although the opponent´s goods in Class 9 are used to, for example, transfer electrical energy or currents, and it is true that automobiles (in particular electric automobiles) are composed of various electronics, such goods are not used for transforming energy but rather for the functionality of, for example, brakes and gearing systems. In addition, electric automobiles are powered by batteries, not by electric energy transferred from an external source. Consequently, the contested goods differ in nature, purpose, method of use, and they are neither complementary nor in competition. Therefore, they are dissimilar.

The contested goods are also dissimilar to the opponent´s goods in Class 12. The opponent´s caissons [vehicles], according to the Nice Classification and contrary to the claims of the opponent, who has used a different interpretation in German, are ‘a chest or wagon for holding or conveying ammunition’ (Oxford Dictionaries). Consequently, the purpose of such goods is different to those of the applicant’s electric vehicles. Moreover, these goods differ in methods of use; they are not in competition and are not complementary to each other. Moreover, they are not produced by the same manufacturers.

Finally, as far as the comparison between the contested goods and the opponent’s services in Class 37 is concerned, although automobiles need refuelling in order to function properly, they differ in nature, purpose and method of use to these services of the opponent. These goods and services are neither in competition and are not provided and manufactured by the same companies. The same applies to the rest of the opponent´s services in this Class. Therefore, they are all dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

Inés GARCÍA LLEDÓ

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.