OPPOSITION No B 3 048 720

Vattenfall AB, 169 92 Stockholm, Sweden (opponent), represented by Groth & Co. K.B., Avda. de Aguilera, 19-1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

Petrol Slovenska energetska družba, d.d, Ljubljana, Dunajska c 50, 1527 Ljubljana

Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 720 is partially upheld, namely for the following contested services:

Class 37: Reservation of installations (terminals) for charging batteries for electric vehicles and for charging motor vehicle batteries.

Class 42: Consultancy in the field of energy-saving; professional consultancy relating to the conservation, storage and use of energy; technical advice in connection with energy-saving measures; engineering services in the field of energy technology; technological consulting services in the field of alternative energy generation; conducting research and technical project studies relating to the use of energy; creation and development of renewable energy systems; consultancy relating to the efficient use of power, energy, fuel, electricity and gas; design relating to the efficient use of power, energy, fuel, electricity and gas; energy management for others; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; pressure testing; storage of information on electronic voicemail.

2. European Union trade mark application No 17 304 411 is rejected for all the above services. It may proceed for the remaining (goods and) services. evaluation of wool (quality-).

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 304 411 ‘ONECHARGE’ (word mark), namely against all the services in Classes 37 and 42. The opposition is based on European Union trade mark registration No 16 054 249 ‘InCharge’ (word 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.

a) The services

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

Class 37: Charging stations for electric vehicles.

Class 42: Scientific and technological services and research and design relating thereto in the field of electric vehicles and charging thereof

The contested services are the following:

Class  37: Reservation of installations (terminals) for charging batteries for electric vehicles and for charging motor vehicle batteries.

Class 42: Consultancy in the field of energy-saving; professional consultancy relating to the conservation, storage and use of energy; Technical advice in connection with energy-saving measures; Engineering services in the field of energy technology; Technological consulting services in the field of alternative energy generation; conducting research and technical project studies relating to the use of energy; creation and development of renewable energy systems; Consultancy relating to the efficient use of power, energy, fuel, electricity and gas; Design relating to the efficient use of power, energy, fuel, electricity and gas; Energy management for others; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Pressure testing; Storage of information on electronic voicemail; evaluation of wool (quality-)rgy; Technical advice in connection with energy-saving measures; Engineering services in the field of energy technology; Technological consulting services in the field of alternative energy generation; conducting research and technical project studies relating to the use of energy; creation and development of renewable energy systems; Consultancy relating to the efficient use of power, energy, fuel, electricity and gas; Design relating to the efficient use of power, energy, fuel, electricity and gas; Energy management for others; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Pressure testing; Storage of information on electronic voicemail; evaluation of wool (quality-).

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 services in Class 37

The contested reservation of installations (terminals) for charging batteries for electric vehicles and for charging motor vehicle batteries are identical to the opponent’s charging stations for electric vehicles, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

Contested services in Class 42

The contested consultancy in the field of energy-saving; professional consultancy relating to the conservation, storage and use of energy; technical advice in connection with energy-saving measures; engineering services in the field of energy technology; technological consulting services in the field of alternative energy generation; conducting research and technical project studies relating to the use of energy; creation and development of renewable energy systems; consultancy relating to the efficient use of power, energy, fuel, electricity and gas; design relating to the efficient use of power, energy, fuel, electricity and gas; energy management for others; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; pressure testing; storage of information on electronic voicemail are all at least similar to the opponent’s scientific and technological services and research and design relating thereto in the field of electric vehicles and charging thereof, in nature and also because they may coincide in providers and relevant public.

However, although the contested evaluation of wool (quality-) services are of a scientific and technological nature, they share no other relevant points. They have a different specific purpose and method of evaluation and are not in competition or complementary. Consumers will not perceive them as having the same origin. They are dissimilar.

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, the services found to be identical or similar are directed mainly at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services purchased.

c) The signs

InCharge	ONECHARGE
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 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.

Neither ‘InCharge’ in the earlier mark nor ‘ONECHARGE’ in the contested sign evokes or suggests any meaning for a part of the public, such as the Bulgarian, Estonian, Latvian and Lithuanian- speaking consumers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian, Latvian, Lithuanian and Estonian-speaking part of the public, where the signs are meaningless and, therefore, distinctive.

The signs under comparison are both word marks in which the word as such is protected and not its written form. Therefore it is irrelevant whether such marks are depicted in upper or lower case letters, or a mixture thereof (as in the earlier mark).

Visually and aurally, the signs coincide in ‘*n/*charge’. They differ in their first letter (i/o), and in the third letter of the contested sign (‘e’), which has no counterpart in the earlier mark.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public under analysis as detailed above 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.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services 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

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.

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) and that 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 services are identical, similar or dissimilar and they target mainly business customers whose degree of attention may vary from average to high. The signs are highly similar from a visual and aural perspective given that they coincide in the majority of their letters placed in the same order. The earlier mark has a normal level of distinctiveness.

In those circumstances, 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public such as the Bulgarian, Latvian, Lithuanian and Estonian-speaking part of the public for which the signs do not evoke any meaning. 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 parties´ submissions and references to previous decisions of the Office, which are relevant to the English language, fall to be disregarded.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 054 249, and the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.