OPPOSITION Nо B 3 037 267

inMusic Brands, Inc., 200 Scenic View Drive, 02864 Cumberland Rhode Island, United States of America (opponent), represented by Mishcon De Reya Llp, Africa House 70 Kingsway, London WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

Ion Systems Innovation (Hong Kong) Co., Ltd, Rm 2009, 20/f Hang Bong Comm Ctr 28 Shanghai St, Jordan, Kowloon Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Boris Burow, Seminarstraße 10, 76133 Karlsruhe, Germany (professional representative).

On 26/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 267 is upheld for all the contested goods (i.e. all the goods covered by the mark in Classes 9 and 11).

2. European Union trade mark application No 17 212 101 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

On 08/02/2018, the opponent filed an opposition against some of the goods of European Union trade mark application No 17 212 101 (figurative mark), namely against all the goods in Classes 9 and 11.

The opposition is based on the following earlier rights:

1. European Union trade mark registration No 17 027 459, ‘ION’ (word mark), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

2. German trade mark registration No 30 675 947, ‘ION’ (word mark), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

3. German trade mark registration No 30 675 948, (figurative) in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

4. United Kingdom trade mark registration No 00 024 413 09A, ‘ION’ (word mark), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

5. United Kingdom trade mark registration No 00 024 413 10A, (figurative) in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

6. Non-registered trade mark ‘ION’ (word mark) claimed to exist in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Europe, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. The opponent invoked Article 8(4) in relation to this earlier right.

On 01/02/2020, the United Kingdom withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking.

As the opposition no longer has a valid basis in relation to the earlier rights registered in the United Kingdom (numbers 4 and 5 in the list above) or protected in that territory (numbers 1 and 6), the opposition must be dismissed as far as it is based on them. The opposition will therefore proceed based only on the earlier German and European Union trade mark registrations and the non-registered mark. As regards the territories covered by the earlier non-registered mark and European Union trade mark, the territory of the United Kingdom is excluded from the territories where protection is claimed to exist.

The opposition will now proceed with the examination of Article 8(1)(b) EUTMR invoked in relation to European Union trade mark registration No 17 027 459, ‘ION’ (word mark).

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 027 459, ‘ION’ (word mark).

a) The goods

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

Class 9: Scientific, nautical, surveying, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images, excluding apparatus related to cameras; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; microphones; receivers; transmitters; audio amplifiers; car amplifiers; radio receivers and tuners; equalizers; audio cassettes; megaphones; horn speakers; speakers; audio mixing apparatus; electronic apparatus for audio and video mixing; electric and electronic musical effects equipment; batteries; video cassette recorders and players, excluding cameras; compact disc players and recorders; record players; radios; digital versatile disc players and recorders; mini disc players and recorders; secure digital players and recorders, excluding cameras; video disc players; digital audio tape recorders and players; analogue and digital recorders, excluding cameras and video cameras; electrical components; cassettes; audio tapes; video tapes; electrical instruments for monitoring and recording sound; apparatus for testing electrical instruments; amplifiers; tuners; audio-visual receivers; fuses; electrical apparatus for the transmission of audio signals; electrical apparatus for transmitting sound; apparatus for processing, recording and/or transmitting audio signals; apparatus for use in audio-visual communication not related to cameras; computer hardware; computer peripherals; computer software for audio production; computerised equipment for programming musical instruments; computerised equipment for the regulation of synthesizers for the creation of electronical music; synchronical signal generators for musical instruments; loudspeakers; music-composition software; sound mixers; electrical apparatus for mixing sounds; audio mixers; echo machines; central control desks; computer interface boards; sound amplifiers; graphic equalizers; sound effectors; sound controllers; sound generators; sound sequencers; earphones; headphones; analogical and digital apparatus for listening to music; circuit breakers; connectors (electrical); electric cables; electrical conduits; electric junction boxes; outlet sockets; plugs (electrical); cables for electrical or optical signal transmission; prerecorded CDs and DVDs featuring sound and music libraries for use in composing music; guitar effects processors; sound effects processors for audio production; audio electronic equipment for professional and consumer use, including hard disk recorders, monitors, speakers, amplifiers, mixers, digital processors, signal processors, optical interfaces, vocal and instrumental effects processors, computer ports for editing, managing and mixing audio; digital sound reverberation effects units; touch pads; professional audio electronic products, namely, headphone consoles, amplifiers, equalizers, analyzers, filters, signal delays, mixers and power supplies; audio and MIDI interfaces for use in recording multi-track audio to computer; digital music (downloadable) provided from a computer database or the internet; digital processors: signal processors; guitar amplifiers; guitar cables; guitar pedals; speaker enclosures; audio speakers; wireless indoor and outdoor speakers; vocal and instrumental effects processors, computer ports for editing, managing and mixing audio; related accessories, namely, power cords; and digital sound reverberation effects units; apparatus, instruments and cables for electricity, none of the aforementioned goods relating to cameras; scientific and laboratory devices for treatment using electricity; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; recorded content; safety, security and signalling devices; scientific research and laboratory apparatus, educational apparatus and simulators; signal processors and signal generators for use in electrical musical instruments; musical computer systems; computers for use with musical systems; master keyboard controllers; control boards for musical computers and display units for musical computers; drum pad controllers; turntables; disc jockey controllers; computer software for music production; booster units; computer software for controlling audio speakers; computer software for controlling audio effects and manipulating sound; audio and video electronic equipment for professional and consumer use, namely, soundboards and karaoke machines; computer software for controlling audio playback and lighting effects; interfaces for connecting hardware to lighting elements to lighting controls; computer software for controlling, synchronizing and editing lighting and lighting effects; digital audio peripherals and interfaces, namely, digital-audio processors, digital-audio converters, audio-digital converters, digital-audio format converters, microphone pre-amplifiers, sound mixers, pre-amplifiers, and audio sound cards; audio processing equipment, namely, limiters and compressors; power amplifiers; power transformers for amplification; computer software to control and improve audio equipment sound quality; sound crossovers; drum controllers; effects pedals; pedalboards; and parts and fittings of all the aforesaid goods, included in the class; none of the aforementioned being goods related to cameras, video cameras or related camera accessories; none of the aforesaid being or relating to public address amplifiers and public address systems.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; carrying cases specially adapted for DJ lighting gear; flashing strobe light apparatus; lighted disco balls; lighting apparatus for theatres, clubs and discotheques; theatrical stage lighting apparatus; burners, boilers and heaters; drying apparatus; drying installations; filters for industrial and household use; flues and installations for conveying exhaust gases; food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); industrial treatment installations; nuclear installations; personal heating and drying implements; refrigerating and freezing equipment; regulating and safety accessories for water and gas installations; sanitary installations, water supply and sanitation equipment; sun tanning appliances; fireplaces; industrial treatment installations namely gas cleaners and purifiers, industrial ovens and furnaces (not for food or beverages), chemical processing equipment, industrial installations for filtering liquids, installations for the collection of gases, installation for the collection of liquids, launders for trapping impurities in molten metal, biological reactors for clarifying industrial effluents, apparatus for dehydrating food waste; igniters; and parts and fittings of all of the aforesaid goods, included in the class; none of the aforementioned being goods related to cameras, video cameras or related camera accessories.

Class 15: Musical instruments; musical instruments and accessories therefor; keyboard instruments; electronic musical instruments, namely, synthesizers, pianos, organs and guitars; keyboards for musical instruments; drum percussions (musical instruments); computer controlled musical instruments; electronic automatically controlled rhythm machines; automatically controlled rhythm boxes for use with or incorporated into electronic musical instruments for providing rhythmic accompaniment; adaptors for keyboards of musical instruments, electronic musical sound effectors being attachments for use with electronic musical instruments; keyboards, synthesizers and rhythm arrangers, all being attachments for use with electronical musical instruments; carrying cases for musical instruments; stands (music); piano keyboards; music synthesizers; electronic drum and percussion machines; guitars; acoustic guitars; electric guitars; bass guitars; acoustic bass guitars; electric bass guitars; picks, strings, straps and cases, all for guitars; pedals for musical instruments; electronic wind instruments; electronic cymbals; drum machines; drum pads; drum modules; digital pianos; tuning apparatus for musical instruments; electronic musical instruments which incorporate MIDI (musical instruments digital interface) technology to combine a drum machine and a digital sequencer to provide pre-programmed playback of drum sounds stored in memory; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 9: Coils, electric; particle accelerators; reflecting discs for wear, for the prevention of traffic accidents; protection devices for personal use against accidents; clothing for protection against accidents, irradiation and fire; electric batteries for vehicles; battery jars; battery boxes; acidimeters for batteries; hydrometers; plates for batteries; whistle alarms; sound alarms; acoustic conduits; phonograph records; speaking tubes; actinometers; adding machines; aerometers; electro-dynamic apparatus for the remote control of railway points; magnets; electromagnetic coils; air analysis apparatus; alarms; alcoholmeters; alidades; food analysis apparatus; ignition (electric apparatus for remote -); batteries for lighting; altimeters; asbestos gloves for protection against accidents; asbestos clothing for protection against fire; ammeters; amplifiers; amplifying tubes; anemometers; calibrating rings; fire extinguishers; anodes; anode batteries; antennas; anti-glare glasses; anti-dazzle shades; anti-interference devices [electricity]; electricity transformers; apertometers [optics]; money counting and sorting machines; distribution boxes [electricity]; surveying instruments; surveying chains; electron tubes; juke boxes, musical; coin-operated mechanisms; counter-operated apparatus (mechanisms for -); calipers; comparators; fire alarms; tires (automatic indicators of low pressure in vehicle -); protective suits for aviators; alarm bells, electric; rods for water diviners; life-saving rafts; scales; meteorological balloons; demagnetizing apparatus for magnetic tapes; tape recorders; magnetic tapes; barometers; weighing machines; weighbridges; fire beaters; chargers for electric batteries; betatrons; ticket dispensers; speaker enclosures; terminals [electricity]; pressure indicator plugs for valves; galvanometers; push buttons for bells; branch boxes [electricity]; tone arms for record players; bubble levels; punched card machines for offices; sheaths for electric cables; frames for photographic transparencies; circular slide rules; slide-rules; calculators; slide calipers; jigs [measuring instruments]; capillary tubes; sound recording carriers; head protection; respiratory masks, other than for artificial respiration; solderers’ helmets; pince-nez chains; heat regulating apparatus; darkrooms [photography]; boiler control instruments; cinematographic film (apparatus for editing -); printed circuits; flashing lights [luminous signals]; signal bells; containers for microscope slides; collectors, electric; electric installations for the remote control of industrial operations; switchboxes [electricity]; commutators; marine compasses; accounting machines; waling glasses; pedometers; meters; metronomes; capacitors; electrical conductors; electricity conduits; circuit closers; connectors [electricity]; junction boxes [electricity]; switchboards; contacts, electric; franking (apparatus to check -); speed checking apparatus for vehicles; converters, electric; photocopiers (electrostatic, thermic); eyeglass cords; retorts; retorts’ stands; diving suits; switchgear [electric]; switches, electric; limiters [electricity]; plugs, sockets and other contacts [electric connections]; rectifiers; reducers [electricity]; dressmakers’ measures; crucibles [laboratory]; appliances for measuring the thickness of leather; cyclotrons; counterfeit [false] coin detectors; animated cartoons; laboratory trays; metal detectors for industrial or military purposes; sonars; detectors; diaphragms [acoustics]; centering apparatus for photographic transparencies; distance measuring apparatus; dictating machines; diffraction apparatus [microscopy]; loudspeakers; circuit breakers; record players; microscopes; distance recording apparatus; range finders; distribution boards [electricity]; distribution consoles [electricity]; compasses for measuring; measures; dynamometers; water level indicators; fire escapes; telephone receivers; fluorescent screens; workmen’s protective face-shields; racks (photographic -); electric loss indicators; electric cables; ducts [electricity]; electricity control panels; galvanic cells; connections for electric lines; electric couplings; relays, electric; glass covered with an electrical conductor; electrolysers; transmitters of electronic signals; transmitting sets [telecommunication]; cleaning apparatus for sound recording discs; sound recording strips; milage recorders for vehicles; mechanical signs; epidiascopes; test tubes; balancing apparatus; temperature controlling apparatus; ergometers; material testing instruments and machines; egg-candlers; gauges; petrol gauges; spark-guards; spectacle cases; testing apparatus not for medical purposes; refractometers; invoicing machines; fermentation (apparatus for -) [laboratory apparatus]; railway traffic safety appliances; electric wires; magnetic wires; plumb bobs; plumb lines; nets for protection against accidents; safety nets; safety tarpaulins; film cutting apparatus; filters for respiratory masks; chargers for electric batteries; high-frequency apparatus; frequency meters; fuses; radios; galena crystals [detectors]; galvanic batteries; gloves for protection against accidents; gloves for divers; gloves for protection against x-rays for industrial purposes; gas testing instruments; gasometers [measuring instruments]; levelling staffs [surveying instruments]; rulers [measuring instruments]; grids for batteries; clothing for protection against fire; holograms; hygrometers; identification threads for electric wires; identification sheaths for electric wires; life saving apparatus and equipment; fire hose nozzles; fire engines; fire pumps; gradient indicators; taximeters; quantity indicators; vacuum gauges; speed indicators; electrical inductors; armatures [electricity]; data processing apparatus; mirrors for inspecting work; intercommunication apparatus; inverters [electricity]; ionization apparatus not for the treatment of air or water; peepholes [magnifying lenses] for doors; hemline markers; furniture especially made for laboratories; lactodensimeters; lactometers; lamps (darkroom -) [photography]; optical lanterns; signal lanterns; lasers, not for medical purposes; letter scales; logs [measuring instruments]; sounding lines; luminous signs; neon signs; surveyors’ levels; manometers; protective masks; mathematical instruments; coin-operated mechanisms for television sets; megaphones; computer memory devices; carpenters’ rules; mercury levels; meteorological instruments; rules [measuring instruments]; micrometer screws for optical instruments; microphones; microtomes; time switches, automatic; breathing apparatus for underwater swimming; nautical apparatus and instruments; naval signalling apparatus; navigational instruments; batteries, electric; accumulators, electric; levels [instruments for determining the horizontal]; levelling instruments; spectacle frames; observation instruments; octants; ohmmeters; wavemeters; recorded computer programs; oscillographs; oxygen transvasing apparatus; ozonisers [ozonators]; micrometer gauges; signalling panels, luminous or mechanical; surge arresters; parking meters; astronomy (apparatus and instruments for -); apparatus for measuring the thickness of skins; acid hydrometers; weighing apparatus and instruments; salinometers; physics (apparatus and instruments for -); steering apparatus, automatic, for vehicles; spectacles [optics]; pipettes; plane tables [surveying instruments]; planimeters; ear plugs for divers; bells [warning devices]; weights; polarimeters; radiotelephony sets; radiotelegraphy sets; pressure measuring apparatus; pressure indicators; cathodic anti-corrosion apparatus; clothing for protection against fire; teeth protectors; pyrometers; radar apparatus; vehicle radios; protractors [measuring instruments]; X-rays producing apparatus and installations, not for medical purposes; X-ray tubes not for medical purposes; Protection devices against X-rays, not for medical purposes; telephones; refractors; spectroscopes; resistances, electric; thermometers, not for medical purposes; respirators for filtering air; breathing apparatus, except for artificial respiration; rheostats; scales (lever-) [steelyards]; signals, luminous or mechanical; saccharometers; probes for scientific purposes; satellites for scientific purposes; diaphragms for scientific apparatus; inductor coils; wire connectors [electricity]; electronic locks; sextants; signalling whistles; vehicle breakdown warning triangles; electro-dynamic apparatus for the remote control of signals; simulators for the steering and control of vehicles; sirens; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; sounding apparatus and machines; sounding leads; sound locating instruments; spherometers; needles for record players; sulfitometers; teletypewriters; tachometers; screw-tapping gauges; telegraphs [apparatus]; television apparatus; telegraph wires; remote control apparatus; masts for wireless aerials; teleprompters; telephone transmitters; telerupters; temperature indicating apparatus; time recording apparatus; theodolites; thermostats for vehicles; totalizators; revolution counters; speed regulators for record players; transmitters [telecommunication]; precision balances; marking gauges [joinery]; vacuum tubes [radio]; urinometers; variometers; verniers; videotapes; viscosimeters; theft prevention installations, electric; voltage regulators for vehicles; voting machines; voltmeters; record player needles (apparatus for changing -); stills for laboratory experiments; fuse wire; anticathodes; dog whistles; telescopic sights for firearms; burglar alarms; azimuth instruments; beacons, luminous; holders for electric coils; films, exposed; road signs, luminous or mechanical; life buoys; signaling buoys; buzzers; directional compasses; fog signals, non-explosive; cash registers; identity cards, magnetic; disks, magnetic; floppy discs; head cleaning tapes [recording]; computer keyboards; integrated circuits; semiconductors; integrated circuit chips; word processing apparatus; cathodes; life vests; lifebelts; chemistry apparatus and instruments; cinematographic film, exposed; electricity mains (materials for -) [wires, cables]; incubators for bacteria culture; solar batteries; copper wire, insulated; discharge tubes, electric, other than for lighting; cases fitted with dissecting instruments [microscopy]; distillation apparatus for scientific purposes; dosimeters; electric door bells; furnaces for laboratory use; optical fibers [fibres] [light conducting filaments]; telephone wires; x-ray films, exposed; horns for loudspeakers; bar code readers; jackets [bullet proof]; marker buoys; wafers (silicon slices); chromatography apparatus for laboratory use; chronographs [time recording apparatus]; discs (compact -) [audio-video]; compact discs [read-only memory]; computer operating programs, recorded; peripherals adapted for use with computers; recorded computer software; optical condensers; acoustic couplers; couplers [data processing equipment]; decompression chambers; plotters; divers’ masks; electronic pens; encoded magnetic cards; fire boats; interfaces for computers; juke boxes for computers; knee-pads for workers; regulators [dimmers] (light -), electric; magnetic data media; magnetic encoders; magnetic tape units for computers; microprocessors; modems; monitors [computer hardware]; monitors [computer programs]; mouse [computer peripheral]; optical character readers; printers for computers; central processing units; readers [data processing equipment]; safety restraints, other than for vehicle seats and sports equipment; smoke detectors; transistors [electronic]; X-ray photographs, other than for medical purposes; junction sleeves for electric cables; abacuses; electronic agendas; answering machines; cassette players; compact disc players; diagnostic apparatus, not for medical purposes; disk drives for computers; electrified rails for mounting spot lights; electronic pocket translators; electronic tags for goods; fire blankets; smart cards [integrated circuit cards]; measuring spoons; electronic notice boards; pocket calculators; shoes for protection against accidents, irradiation and fire; sprinkler systems for fire protection; starter cables for motors; sunglasses; clocks (time -) [time recording devices]; video cassettes; video game cartridges; video screens; sports glasses; nose clips for divers and swimmers; protective helmets for sports; electronic publications, downloadable; computer programs [downloadable software]; decorative magnets; mouse pads; personal stereos; wrist rests for use with computers; coaxial cables; fiber optic cables; covers for electric outlets; marine depth finders; electrified fences; games software; headphones; lighting ballasts; radio pagers; solenoid valves [electromagnetic switches]; voltage surge protectors; walkie-talkies; wind socks for indicating wind direction; light-emitting electronic pointers; mannequins (resuscitation -) [teaching apparatus]; stage lighting regulators; egg timers [sandglasses]; DNA chips; DVD players; Automated teller machines [ATM]; light (traffic- -) apparatus [signalling devices]; hands free kits for phones; asbestos screens for firemen; riding helmets; clothing especially made for laboratories; encoded identification bracelets, magnetic; transponders; downloadable ring tones for mobile phones; downloadable music files; downloadable image files; crash test dummies; laboratory centrifuges; printed circuit boards; USB flash drives; global positioning system [GPS] apparatus; portable media players; cell phone straps; light-emitting diodes [led]; triodes; step-up transformers; fire hose; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; cases adapted for mobile phones; scientific, nautical, weighing, signalling and life-saving apparatus and instruments; solar energy collectors for power generation; downloadable image files; encoded service cards and identity cards; computer screens; electric sensors; endoscopes, not for medical purposes; osmosis apparatus for scientific and teaching purposes; parabolic mirrors for concentrating light beams; solar modules for electricity generation; ultrasound apparatus, not for medical purposes; contactors (electricity); bags adapted for laptops.

Class 11: Watering installations, automatic; heat accumulators; acetylene burners; acetylene generators; acetylene flares; ventilation hoods; lighting installations for air vehicles; hot air ovens; air deodorising apparatus; air cooling apparatus; filters for air conditioning; air heating apparatus; driers (air -); air conditioning installations; air filtering installations; hot air apparatus; hot air bath fittings; friction lighters for igniting gas; gas lighters; igniters; light bulbs; light bulbs, electric; arc lamps; electric lamps; framework of metal for ovens; refrigerating cabinets; lights for vehicles; electric pressure cooking saucepans; anti-glare devices for automobiles [lamp fittings]; automobile headlamps; coolers for furnaces; bathtubs; bath linings; bath tubs for sitz baths; Turkish bath cabinets, portable; bath fittings; heaters for baths; bath plumbing fixtures; lamps; lanterns for lighting; lamp casings; incandescent burners; burners for lamps; bicycle lights; bidets; boilers, other than parts of machines; kilns; hydrants; radiator caps; electric torches; hot water boilers; baking ovens; anti-splash tap nozzles; roasting jacks; roasting spits; laboratory burners; flare stacks for use in oil refineries; burners; germicidal burners; coffee roasters; laundry room boilers; toilets, portable; air conditioning fans; coffee roasters; apparatus for heating; taps [cocks, spigots] [faucets (am.)] for pipes; heat regenerators; oven fittings made of fireclay; light bulbs for directional signals for vehicles; carbon for arc lamps; heating installations; loading apparatus for furnaces; flushing tanks; hot water heating installations; heating boilers; boiler pipes [tubes] for heating installations; air conditioners for vehicles; heating apparatus for solid, liquid or gaseous fuels; heaters for vehicles; heating apparatus, electric; central heating radiators; humidifiers for central heating radiators; heating elements; heaters for heating irons; footwarmers, electric or non-electric; footmuffs, electrically heated; plate warmers; immersion heaters; lamp glasses; lamp chimneys; chimney flues; chimney blowers; hair driers [dryers]; water distribution installations; drying installations; air conditioning apparatus; glue-heating appliances; distillation columns; fuel economisers; water-pipes for sanitary installations; water conduits installations; water closets; freezers; cooking utensils, electric; cookers; cooking apparatus and installations; bicycle lights; discharge tubes, electric, for lighting; defrosters for vehicles; disinfectant distributors for toilets; disinfectant apparatus; desalination plants; desiccating apparatus; light diffusers; beverage cooling apparatus; distillation apparatus; showers; sockets for electric lights; water purifying installations; water filtering apparatus; water cooling installations; fountains; pressure water tanks; water sterilizers; heat exchangers, other than parts of machines; lighting apparatus and installations; projector lamps; chandeliers; sewage purification installations; ceiling lights; radiators, electric; apparatus for the purification of gases; stoves; drying apparatus for fodder and forage; evaporators; stoves [heating apparatus]; filaments for electric lamps; filters [parts of household or industrial installations]; filters for drinking water; flaming torches; forges, portable; furnaces, other than for laboratory use; fittings, shaped, for ovens; fire bars; hearths; ash pits for furnaces; refrigerating apparatus and machines; cold storage rooms; refrigerating containers; curling lamps; fruit roasters; gas scrubbers [parts of gas installations]; gas burners; gas boilers; gas lamps; steam boilers, other than parts of machines; germicidal lamps for purifying air; ice machines and apparatus; ice boxes; lamp globes; hotplates; toasters; roasting devices; incinerators; ionization apparatus for the treatment of air or water; decorative water fountains; laboratory lamps; milk cooling installations; pasteurisers; oil lamps; ultraviolet ray lamps, not for medical purposes; safety lamps; lamp reflectors; Chinese lanterns; wash-hand basins [parts of sanitary installations]; cooling installations for liquids; luminous tubes for lighting; magnesium filaments for lighting; malt roasters; miners’ lamps; processing installations for fuel and nuclear moderating material; level controlling valves in tanks; lights, electric, for Christmas trees; luminous house numbers; oxyhydrogen burners; radiators [heating]; oil burners; vehicle headlamps; heating plates; searchlights; polymerisation installations; kitchen ranges; air valves for steam heating installations; water purifying apparatus and machines; air purifying apparatus and machines; refining towers for distillation; cooling installations and machines; cooking rings; water heaters [apparatus]; reflectors for vehicles; refrigerating appliances and installations; cooling appliances and installations; dampers [heating]; regulating accessories for water or gas apparatus and pipes; safety accessories for water or gas apparatus and pipes; taps [faucets]; washers for water taps; rotisseries; sanitary apparatus and installations; drying apparatus and installations; hand drying apparatus for washrooms; coils [parts of distilling, heating or cooling installations]; fans [parts of air-conditioning installations]; sterilisers; cooling installations for tobacco; tobacco roasters; lighting apparatus for vehicles; roasters; ash conveyor installations, automatic; steam generating installations; ventilation [air-conditioning] installations and apparatus; ventilation [air-conditioning] installations for vehicles; toilet bowls; toilet seats; lamp shades; lampshade holders; mixer taps for water pipes; regulating and safety accessories for gas pipes; regulating and safety accessories for water apparatus; steam accumulators; water softening apparatus and installations; ventilation hoods for laboratories; air sterilisers; distillation apparatus; alcohol burners; petrol burners; anti-glare devices for vehicles [lamp fittings]; heating apparatus for defrosting vehicle windows; brackets for gas burners; water supply installations; nuclear reactors; autoclaves, electric, for cooking; lamps for directional signals of automobiles; automobile lights; heaters, electric, for feeding bottles; waffle irons, electric; regulating and safety accessories for gas apparatus; coffee filters, electric; electric coffee percolators; electric coffeepots; standard lamps; flues for heating boilers; barbecues; electric deep fryers; fireplaces, domestic; heat pumps; solar thermal collectors [heating]; solar furnaces; tanning apparatus [sun beds]; flushing apparatus; feeding apparatus for heating boilers; refrigerators; deodorising apparatus, not for personal use; water intake apparatus; oil-scrubbing apparatus; fumigation apparatus, not for medical purposes; kiln furniture [supports]; pocket warmers; baths (spa -) [vessels]; chromatography apparatus for industrial purposes; heating filaments, electric; gas condensers, other than parts of machines; heating cushions [pads], electric, not for medical purposes; sauna bath installations; shower stalls; sinks; steam facial apparatus [saunas]; urinals [sanitary fixtures]; hot water bottles; electric kettles; bed warmers; blankets, electric, not for medical purposes; warming pans; aquarium filtration apparatus; aquarium heaters; aquarium lights; electrically heated carpets; dental ovens; electric yoghurt makers; expansion tanks for central heating installations; exhaust hoods for kitchens; fans (electric -) for personal use; laundry dryers, electric; microwave ovens; swimming pool chlorinating apparatus; valves (thermostatic -) [parts of heating installations]; whirlpool-jet apparatus; apparatus for dehydrating food waste; diving lights; drip irrigation emitters [irrigation fittings]; disposable sterilization pouches; chambers (clean -) [sanitary installations]; lava rocks for use in barbecue grills; watering machines for agricultural purposes; microwave ovens for industrial purposes; bread baking machines; refrigerated display cases; steamers (fabric -); bread-making machines; light-emitting diodes [led] lighting apparatus; hydromassage bath apparatus; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; shower heads; handle grips for showers; light-emitting diodes (LED lighting apparatus); osmosis apparatus; parabolic troughs for heat generation; solar modules for heat generation; sink units; bath tub and shower partitions; socks, electrically heated.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the lists of the opponent’s goods above (emphasis added in the list), indicates that the specific goods named 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’ used in the lists of the opponent’s goods above (emphasis added in the list) 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 preliminary 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.

Contested goods in Class 9

These contested goods, listed above, consist mainly of apparatus and instruments for scientific or research purposes, audio-visual and information technology equipment, and safety equipment (See Nice Classification’s Explanatory Notes at https://www.wipo.int/classifications/nice/nclpub/en/ and the taxonomy for the individual goods listed, found in TMClass search results at http://euipo.europa.eu/ec2/search). The contested goods in this class are partly identical to at least some of the opponent’s goods in Class 9. This is because the opponent’s goods include, are included in, or overlap with, the contested goods. For example, the contested electric batteries for vehicles; batteries for lighting; anode batteries; galvanic batteries; solar batteries include, are included in or at least overlap with the opponent’s batteries; none of the aforesaid being or relating to public address amplifiers and public address systems in Class 9.

The rest of the contested goods in Class 9 comprise, inter alia, various types of circuits, and goods used for protection or safety purposes, diving, or in relation to sound-related apparatus. The opponent’s goods in Class 9 are, for example, computer hardware, safety, security and signalling devices, apparatus for recording, transmission or reproduction of sound or images, excluding apparatus related to cameras.

These remaining contested goods are similar to at least a low degree to at least one of the opponent’s goods in the same class. They have at least a low degree of similarity because they coincide in one or more of the following characteristics: nature, purpose, method of use, distribution channels/points of sale. Some also coincide in the fact that they can be complementary or in competition, originate from the same kind of undertakings or target the same consumers. For example, the contested chargers for electric batteries, are similar to a high degree to the opponent’s batteries, none of the aforesaid being or relating to public address amplifiers and public address systems because they are complementary, coincide in distribution channels/points of sale, target the same consumers and originate from the same kind of undertakings. Furthermore, the contested smart cards [integrated circuit cards] are similar to the opponent’s computer hardware; none of the aforesaid being or relating to public address amplifiers and public address systems because they can target the same consumers, coincide in distribution channels, are complementary and can originate from the same kind of undertakings.

Contested goods in Class 11

These contested goods, listed above, are mainly environmental control apparatus and installations, in particular, for lighting, cooking, cooling and sanitising (See Nice Classification’s Explanatory Notes at https://www.wipo.int/classifications/nice/nclpub/en/ and the taxonomy for the individual goods listed, found in TMClass search results at http://euipo.europa.eu/ec2/search). The contested goods in Class 11 are partly identical to at least some of the opponent’s goods in Class 11, which comprise, inter alia, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, burners, boilers and heaters, lighting goods, and various types of industrial treatment installations. They are identical because the opponent’s goods include, are included in, or overlap with, the contested goods. For example, the contested drying installations are included in both lists (including synonyms, since the limitation none of the aforementioned being goods related to cameras, video cameras or related camera accessories of the opponent´s goods does not really affect the scope of these goods), the contested driers (Air -) is a synonym of the opponent’s drying installations; none of the aforementioned being goods related to cameras, video cameras or related camera accessories, and the contested chambers (clean -) [sanitary installations] are included in the opponent’s broad category of sanitary installations; none of the aforementioned being goods related to cameras, video cameras or related camera accessories.

The rest of the contested goods in Class 11 comprise, inter alia, various types of water installations for agricultural or decorative purposes, water sterilisers and filters. These are similar to at least a low degree to at least one of the opponent’s goods in Class 11, which consist, inter alia, of sanitary installations, water supply and sanitation equipment, industrial treatment installations and apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, as well as lighting and lighting reflectors. They have at least a low degree of similarity because they coincide in one or more of the following characteristics: nature, purpose, method of use, distribution channels/points of sale. Some also coincide in the fact that they can be complementary or in competition, originate from the same kind of undertakings or target the same consumers. For example, the contested swimming pool chlorinating apparatus are similar to at least a low degree to the opponent’s apparatus for heating; none of the aforementioned being goods related to cameras, video cameras or related camera accessories since the latter include apparatus for heating swimming pools. Therefore, these goods can coincide in distribution channels/points of sale, target the same consumers, and originate from the same kind of undertakings.

b) 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, all the contested goods, which have been found to be identical or similar to at least a low degree, are directed partly at the public at large (e.g. electronic publications, downloadable; mouse pads; bags adapted for laptops in Class 9 or toasters in Class 11), partly at both the public at large and professionals (e.g. microphones) and partly at only business customers with specific professional knowledge or expertise (e.g. acidimeters for batteries; parking meters in Class 9 or the distillation columns; polymerisation installations; chromatography apparatus for industrial purposes; acetylene generators in Class 11).

The degree of attention is considered to vary from average to higher than average. The degree of attention will be average for those goods in relation to which nothing in their nature, manner of purchase or average price requires that consumers are particularly attentive and observant when choosing them. This is the case, for instance, for the mouse pads in Class 9 or the toasters in Class 11. A higher-than-average degree of attention will be paid in relation to goods that are not frequently purchased and/or are of high prices and/or require technical knowledge to be used properly and/or entail risks for the user or can somehow be dangerous. This is the case, for instance, for the contested processing installations for fuel and nuclear moderating material in Class 11.

c) The signs

ION
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 common verbal element ‘ION’ is the English word used to refer to a particle, atom or molecule with a net electrical charge. In this regard, the opponent has given the following explanation:

[…] an ion which is defined as follows:

1. an atom or group of atoms that carries a positive or negative electric charge as a result of having lost or gained one or more electrons

2. a charged subatomic particle (such as a free electron).

The concept described by the opponent is likely to be understood by the majority of the public in the relevant territory, since the word either exists as such or the equivalent is spelled in a very similar way. The remaining part of the public will see it as meaningless. Whether attributed a concept or not, the element ‘ION’ is distinctive in relation to the relevant goods.

With regard to ‘SYSTEMS’, the opponent has given the following explanation:

Further, the word ‘SYSTEMS’ is descriptive of the Opposed Goods (by way of example, a wide range of the Opposed Goods will commonly be referred to as ‘systems’, e.g. ‘juke boxes for computers’, ‘sound reproduction apparatus’, and ‘lighting apparatus and installations’).

The contested sign’s verbal element ‘SYSTEMS’ is the plural form of the English word ‘system’, which is used to refer to a set of connected pieces of equipment or machine that work together. This word will be understood throughout the relevant territory, either because consumers are aware of the English concept (i.e. English-speaking consumers or consumers with sufficient English knowledge) or because the equivalent words in the respective languages are so similar in spelling to ‘SYSTEMS’ that the same concept will be attributed to this word when perceived (e.g. sistemi (transliterated from ‘системи’) in Bulgarian, sistemas in Spanish, etc.)

The verbal element ‘SYSTEMS’ has a low degree of distinctiveness in relation to part of the relevant goods (i.e. those in relation to which the word is allusive of their characteristics), and is non-distinctive in relation to another part of the goods (i.e. those in relation to which the term is clearly descriptive), because they either consist of apparatus, machines, devices, etc. that consist of various pieces that connect and need each other in order to work, or are individual products that could be part of a group of goods that somehow function together, combine or are/can be somehow related.

The contested sign contains a blue circular element that acts as the background and frame for the element ‘ION’. It is a banal shape with a merely decorative function, and is non-distinctive.

The contested mark has no element that is more dominant (eye-catching) than others.

As claimed by the opponent, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the blue circle has less weight for this reason too.

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. As stated by the opponent, the earlier mark is entirely contained in the contested sign, in which it is the element with greater visual impact, due to its position. In addition, the blue circle framing ‘ION’ will highlight it, and consumers will pay even more attention to this element.

Therefore, the coinciding element ‘ION’ is the only (or most) distinctive element of the contested sign, and the element of greater visual impact for the various reasons explained above.

The applicant has not made any reply in relation to any of the matters referred to above.

Visually, the signs coincide in ‘ION’. This element constitutes the entire earlier mark and the only (or most) distinctive element in the contested sign. It is also the element of greater visual impact in the contested sign.

The signs differ in the element ‘SYSTEMS’ and the blue circle, both of which have reduced impact in the contested sign, for the reasons explained above. The stylisation of the letters in the contested sign is restricted to the use of standard upper-case letters.

The signs are visually highly similar.

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 coinciding distinctive element ‘ION’, which constitutes the entire earlier mark and the first verbal element in the contested sign.

The marks differ aurally in the pronunciation of ‘SYSTEMS’, which has a low degree of distinctiveness, or none at all, depending on the specific goods.

Taking into account the weight attributed to all the above, the signs are aurally highly similar.

Conceptually, for the part of the public attributing the abovementioned meaning to ‘ION’ and taking into account the differing concept of ‘SYSTEMS’ (despite it having a low degree of distinctiveness, or none at all), the marks are conceptually similar to a high degree.

For the part of the public perceiving only the concept of ‘SYSTEMS’ in the contested mark, and considering ‘ION’ meaningless, 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.

d) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to at least a low degree. They partly target the public at large, partly both the public at large and professionals, and partly business customers with specific professional knowledge or expertise. The degree of attention varies between average and higher than average, for the reasons explained in section b) above.

The signs are visually and aurally highly similar. Depending on the consumer’s perception of the signs, they are conceptually similar to a high degree or not conceptually similar. The earlier mark has an average degree of distinctiveness.

The signs coincide in that the earlier mark is entirely contained in the contested sign, where it is the element of greater visual impact due to its position, being highlighted by the circle framing it, and being the only (or most) distinctive element.

Account is 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). 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 fact that the differing element ‘SYSTEMS’ has a low degree of distinctiveness, or none at all, depending on the specific goods it is used in relation to, may lead consumers to overlook it.

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 mark 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 (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49)

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). The coincidences between the marks are clearly sufficient to outweigh the low degree of similarity that may exist between some of the goods concerned.

Considering all the above, there is a likelihood of confusion on the part of the public, even if this public pays a higher degree of attention during the purchase of the goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 027 459, ‘ION’ (word mark).

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

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 17 027 459, ‘ION’ (word mark) leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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, 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

Manuela RUSEVA

María del Carmen SUCH SANCHEZ

Irena LYUDMILOVA LECHEVA

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.