OPPOSITION No B 3 025 999

Wuxi Suntech Power Co., Ltd., 12 Xinhua Road, New District, 214028 Wuxi, Jiangsu Province, People’s Republic of China (opponent), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative)

a g a i n s t

Soltec Energías Renovables S.L., C/ Gabriel Campillo Contreras s/n, Polígono Industrial La Serreta, 30500 Molina de Segura (Murcia), Spain (applicant), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas SL, Parque científico de la Universidad Miguel Hernández de Elche, Avda de la Universidad s/n, Edific Quórum IV 03202 Elche (Alicante), Spain (professional representative).

On 11/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 999 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 and services of European Union trade mark application No 17 288 911 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 121 286 for the figurative mark . 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.

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 9 121 286 for the figurative mark , as, taken overall (inter alia coverage in terms of territory and applicability) this constitutes the best-case scenario for the opponent.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, 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; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; photovoltaic solar modules for integration into roofing, walls, and other structures of buildings.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 37: Building construction; repair services; installation and maintenance of photovoltaic solar power generating systems.

The contested goods and services are the following:

Class 7: Generators of electricity; current generators; solar power generators; power installations [generators]; robots [machines]; universal joints [cardan joints]; power transmission couplings for machines; power transmission parts [other than for land vehicles].

Class 9: Solar panel arrays; solar panels; portable solar panels for generating electricity; solar modules; couplings, electric; electronic docking stations.

Class 37: Installation and maintenance of photovoltaic installations.

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.

Dissimilar goods and services

The contested robots [machines]; universal joints [cardan joints]; power transmission couplings for machines; power transmission parts [other than for land vehicles] in Class 7 have no relevant points in common with the opponent’s goods and services.

Robots are ‘machine[s] capable of carrying out a complex series of actions automatically’ (information extracted from Oxford Dictionaries Online on 11/02/2019 at https://en.oxforddictionaries.com/definition/robot), while universal joints [cardan joints]; power transmission couplings for machines; power transmission parts [other than for land vehicles] are types of mechanical connections between two shafts for the purpose of transmitting power.

Although the contested goods are mechanical devices which may need electricity or computer control to run, this mere fact does not render these goods similar to electronic apparatus or, more specifically, to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data processing equipment and computers. Electricity and computers are only used as parts in the applicant’s products but are not used for the same purposes, whereas the opponent’s goods have no mechanical features (10/02/2012, R 2260/2010‑4, ATMVISION / ATM AUTORITAT DEL TRANSPORT METROPOLITÀ, § 19). The goods are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

The rest of the opponent’s goods and services in Classes 9, 11 and 37 are even more distant from the contested goods above than those already compared. None of them appears to have the same nature, purpose or method of use and none of them is in competition with another or complementary. The Opposition Division takes note that the opponent has not submitted any specific reasoning or evidence that would explain any purported similarity in this regard. Indeed, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Therefore, the contested robots [machines]; universal joints [cardan joints]; power transmission couplings for machines; power transmission parts [other than for land vehicles] in Class 7 are dissimilar to all the opponent’s goods and services.

Identical or similar goods and services

The rest of the contested goods and services in Classes 7, 9 and 37 are either identical or similar to goods and services on which the opposition is based (e.g. installation and maintenance of photovoltaic installations in Class 37, which is included in the opponent’s list of services in Class 37, and current generators in Class 7 and the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity in Class 9). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services except for those goods already found dissimilar above were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical target the public at large and also business customers with specific professional knowledge or expertise.

Taking into account the specialised nature of the goods and services in question, the relevant public’s degree of attention is considered to be higher than average.

3. The signs

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 consists of the verbal element ‘SUNTECH’, depicted in standard italic upper-case letters and preceded by a simple geometrical shape, which as such is banal and commonplace. The presence of a wavy line within it does not change the finding that this element as a whole is considered non-distinctive and its impact on the comparison, if any, is limited.

The contested sign is composed of the verbal elements ‘Soltec’ and ‘Trackers’ depicted in standard title-case letters. The second element, considerably smaller, is placed below the first one. The verbal elements are preceded by a figurative element that depicts a bird’s head against a round yellowish-orange shape resembling a sun. The figurative element, although featuring a round device that resembles a sun, does not convey a clear meaning as a whole in relation to the goods and services in question and is considered distinctive.

It is important to highlight that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40) and, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37). This is relevant in the present case as the contested sign’s figurative element is neither banal nor commonplace and in fact is visually fairly eye-catching.

As regards one-word elements, the relevant consumers will not mentally dissect them unless their components suggest a concrete meaning or resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard both the earlier mark and the first verbal element of the contested sign will be broken down, as explained below.

‘Sun’ is a basic English word (the star around which the Earth orbits) and ‘tech’ is a widespread abbreviation for ‘technology’ / ‘technical’, with identical or similar spellings in other languages of the relevant territory (e.g. ‘tech’ in Czech, Danish, French, German, Polish and Slovak, and ‘tec’ in Italian, Portuguese and Spanish). Therefore, it is reasonable to assume that both the English-speaking part of the public as well as the non-English-speaking part will understand their meanings. In this regard, both components will be of limited distinctiveness, if any, in relation to the goods and services assumed to be identical, as they will allude to their nature or characteristics (i.e. electronic and solar-related technologies).

The element ‘Soltec’ of the contested sign is likely to be broken down by the part of the public that understands ‘sol’ as the equivalent to ‘sun’, either because it forms part of their vocabularies or because it has close equivalents in their languages. This will be the case, for instance, for the Danish-, Italian-, Spanish- and Swedish-speaking parts of the public. However, the perception of the public in other Member States, such as Hungary, Finland and Lithuania, where this component has no such close equivalents in their national languages, is likely to be different. In this regard, it is considered that these latter parts of the public will not attach a particular meaning to it and will perceive the element as a whole and meaningless, and, therefore, distinctive. For the former parts of the public, both the components ‘sol’ and ‘tec’ will be considered of limited distinctiveness, as allusive to the nature or characteristics of the goods and services in question.

‘Trackers’ is the plural of an English word meaning, inter alia, ‘[a] device that follows and records the movements of someone or something’ (information extracted from Oxford Dictionaries Online on 11/02/2019 at https://en.oxforddictionaries.com/definition/tracker). Bearing in mind the relevant goods and services (related to, inter alia, solar trackers), this element will be of limited distinctiveness at least for the professional public in the relevant territory (as they will be aware of the meaning), and distinctive for the rest.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘S**TEC*’ present in the earlier mark and in the contested sign’s first verbal element. They differ in the second and third letters of these elements (‘UN’ versus ‘OL’) and in the last letter (‘H’) of the earlier mark. The signs also differ in the contested sign’s second verbal element (‘Trackers’), their structure and overall length (one verbal element versus two verbal elements), their figurative elements and the contested sign’s colours.

Therefore, the signs are similar to a low degree.

Aurally, the signs’ pronunciation coincides in the sound of the letters ‘S**TE**’ present in the earlier mark and in the contested sign’s first verbal element. The pronunciation of the final letters ‘-CH’ (earlier mark) and ‘-C’ (contested sign) may either be the same (/k/) or different (e.g. /tʃ/ and /k/ respectively) depending on the language of the relevant territory’s countries (it will be the same in languages such as Danish, English, French, German and Italian, and different in those such as Czech, Lithuanian, Portuguese, Slovak, Spanish and Swedish). If the second element of the contested sign, ‘Trackers’, is also pronounced, the pronunciation of the signs will also differ in this element, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the relevant public that dissects both ‘SUNTECH’ and ‘Soltec’, the signs will have similar meanings, but given the limited distinctive character of these components in relation to the relevant goods and services, the degree of this similarity is nevertheless low. For the rest of the public (that associates the earlier mark with a concept and perceives in the contested sign either only the concepts in the figurative element — bird and sun — or also the meaning of ‘Trackers’), the signs are conceptually similar to at most a low degree.

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.

According to the opponent, the earlier trade mark enjoys ‘a high degree of recognition among the circles of trade’. Although there is no mention of the relevant goods or services or to the territorial scope of the claimed enhanced distinctiveness, this claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

Enclosure A. An excerpt from Wikipedia, dated 15/05/2018 and last edited on 22/04/2018, about the opponent’s company (Suntech Power Holdings Co., Ltd.), identifying it as a ‘producer of solar panels’ and containing corporate information such as history, global operations, revenues and awards. One of the opponent’s marks, namely , is reproduced in the excerpt submitted.

Having examined the material mentioned above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The printout offers information about the opponent’s company rather than about the earlier mark. In addition, since Wikipedia is a collective online encyclopaedia, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously, the information taken from its articles lacks legal certainty (10/02/2010, T‑344/07, Homezone, EU:T:2010:35, § 46; 03/03/2016, T‑778/14, COYOTE UGLY / COYOTE UGLY, EU:T:2016:122, § 37-38). The opponent could have easily provided further evidence, such as invoices, price lists, samples of products, and advertisements. The Wikipedia excerpt alone does not provide the Opposition Division with sufficient information for admitting the opponent’s claim on enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for the relevant goods and services, namely electronic apparatus and solar-related products and services in Classes 9, 11 and 37.

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 registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 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).

In the present case, the goods and services have been found either dissimilar or have been assumed to be identical. The latter target the public at large as well as business customers with specific professional knowledge or expertise, both with a higher-than-average degree of attention given the specialised nature of the relevant goods and services.

As indicated above in sections c) and d) of this decision, the earlier mark, given the nature of its verbal element, has a below-average degree of distinctive character in relation to the relevant goods and services from the perspective of the public in the relevant territory.

In that respect, signs that have limited intrinsic distinctive character in relation to the goods and services they cover should not be protected beyond what is compatible with the possibility for all to use signs that are necessary to describe the services that are legitimately traded by competitors. A company is certainly free to choose a mark with limited distinctive character, including trade marks with descriptive words, and use it in the market. However, in so doing, it also has to accept that competitors are equally entitled to use trade marks with similar or identical components (including in any language of the relevant territory) (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230; 06/05/2003, C‑104/01, Libertel, EU:C:2003:244; 23/05/2012, R 1790/2011‑5, 4REFUEL (FIG. MARK)/REFUEL).

The signs have been found visually and aurally similar to a low degree and conceptually similar to at most a low degree, on account of the public’s perception and the degree of distinctiveness of the relevant elements.

The evaluation of likelihood of confusion implies some interdependence between the relevant factors, which means that 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). However, the differences found between the signs are sufficiently significant for the Opposition Division to conclude that the relevant public, who will display a higher-than-average degree of attention, will safely distinguish between the two marks, and will not consider that the goods and services assumed to be identical originate from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that part of the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 12 643 698 for the figurative mark .

• European Union trade mark registration No 9 362 997 for the word mark ‘Suntech TruPower’.

• European Union trade mark registration No 6 897 862 for the figurative mark .

• German trade mark registration No 30 357 354 for the figurative mark .

• French trade mark registration No 3 917 070 for the word mark ‘SUNTECH’.

• United Kingdom trade mark registration No 2 619 064 for the word mark ‘SUNTECH’.

• Benelux trade mark registration No 973 194 for the word mark ‘SUNTECH’.

The remaining earlier rights invoked by the opponent (with the exception of the Benelux, French and UK word marks ‘SUNTECH’) are either identical to the earlier mark already compared or even less similar to the contested mark because they contain additional words (‘BE UNLIMITED’ in EUTM No 12 643 698, ‘TruPower’ in EUTM No 9 362 997) that are not in the contested sign.

With regard to the word marks ‘SUNTECH’, French trade mark registration No 3 917 070, United Kingdom trade mark registration No 2 619 064, and Benelux trade mark registration No 973 194, the result of a comparison of them with the contested sign would not be any different from that reached above, since they consist of the element ‘SUNTECH’, which is the only verbal element of the earlier mark compared above, and the most relevant element used in the comparison. The impact on the comparison of the additional element of the earlier mark analysed in section c) of this decision was, at most, minimal. Accordingly, the comparison of these other earlier marks with the contested sign would not lead to a differing conclusion on the degrees of similarity, since, as noted above, the visual and phonetic differences in this element will prevent consumers from being confused.

Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Vanessa PAGE

Alicia BLAYA ALGARRA

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.