OPPOSITION No B 3 051 153

Faro Technologies, Inc., 125 Technology Park, 32746-6204 Lake Mary, United States of America (opponent), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft mbB, Bavariaring 11, 80336 München, Germany (professional representative)

a g a i n s t

Greenlux SP. Z O.O., Powodowo 52, 64200 Wolsztyn, Poland (applicant), represented by Biuro Doradztwa Technicznego I Usług, Patentowych Plik S.C., Ul. Grażyńskiego 15a/42, 40-126 Katowice, Poland (professional representative)

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 153 is partially upheld, namely for the following contested goods:

Class 9: Monitoring apparatus; distance measuring apparatus; electrical control apparatus; electric installations for the remote control of industrial operations; industrial automation apparatus comprising controllers for heating, ventilating, air conditioning and lighting apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; measuring instruments and indicators; circuit-breakers; and sockets; plug-in connectors; branches; electrical power extension cords; electric cords; electric cables; batteries; chargers for electric batteries; solar batteries; telerupters; data processing equipment; programs for computers.

2. European Union trade mark application No 17 308 511 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 308 511 . The opposition is based on the following earlier rights:

• European Union trade mark registration No 373 936 for the word mark ‘FARO’.

• European Union trade mark registration No 373 860 for the word mark ‘FAROARM’.

• European Union trade mark registration No 4 450 821 for the word mark ‘FARO LASER SCANARM’.

• European Union trade mark registration No 2 477 982 for the word mark ‘FARO CONTROL STATION’.

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights.

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 373 936 for the word mark ‘FARO’.

1. The goods

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

Class 9: Measuring equipment and related computer software for medical and industrial applications; portable articulated measurement arm capable of scanning and measuring 3-dimensional surfaces, edges, spheres and points used in the fields of industrial design, reverse engineering, production and quality control; and computer aided design (cad) software for use in connection with articulated measurement arm and other industrial measuring equipment.

The contested goods are the following:

Class 9: Signalling, alarm and monitoring apparatus; alarm bells; alarm bells, electric; light, smoke, moisture, gas, temperature, infrared and microwave analysers, detectors and sensors; distance measuring apparatus; cam cameras; intercom systems; video intercoms; electrical control and signalling apparatus; theft prevention installations; electric installations for the remote control of industrial operations; home and industrial automation apparatus comprising controllers for heating, ventilating, air conditioning and lighting apparatus; electronic access control systems; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; measuring instruments and indicators; protection, lightning protection, security and voltage protection apparatus; circuit-breakers; and sockets; plug-in connectors; branches; electrical power extension cords; electric cords; electric cables; cable trays; fuse holders; radiation tubes; ducts [electricity]; cable channels (electric -); junction boxes; batteries; chargers for electric batteries; solar batteries; telerupters; time switches, automatic; transmitters of electronic signals; ballasts and electrical and power fixtures for luminaires; light-emitting diodes (leds); data processing equipment; programs for computers.

Class 11: Electrical apparatus for lighting; lighting installations; incandescent light bulbs; lamps; light modules; luminaires; fixtures and parts for lamps and light bulbs; flashlights torches; electrically powered fans for ventilation purposes; ventilation [air-conditioning] apparatus for heating.

Class 17: Insulating tapes; couplings (non-metallic -) for flexible pipes.

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

The contested monitoring apparatus; distance measuring apparatus; measuring instruments and indicators are identical to the opponent’s measuring equipment for medical and industrial applications since they overlap.

The contested programs for computers consists of software. As such, these goods constitute a broad category that covers the opponent’s computer software for medical and industrial applications (related to measuring equipment) and are therefore considered identical.

The contested data processing equipment is similar to the opponent’s computer software for medical and industrial applications (related to measuring equipment) since the latter are a specific type of software. Therefore, they are complementary, can coincide in distribution channels/points of sale, can be directed at the same consumers and can come from the same kind of undertakings.

The contested electric installations for the remote control of industrial operations; industrial automation apparatus comprising controllers for heating, ventilating, air conditioning and lighting apparatus are similar to at least a low degree to the opponent’s measuring equipment and related computer software for industrial applications since they can be used together, can coincide in distribution channels/points of sale, can be directed at the same consumers and can come from the same kind of undertakings.

The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity and the other contested goods falling in at least one of these categories (i.e. circuit-breakers; and sockets; plug-in connectors; branches; electrical power extension cords; electric cords; electric cables; batteries; chargers for electric batteries; solar batteries; telerupters) are similar to a low degree to the opponent’s measuring equipment for medical and industrial applications since they coincide in distribution channels, can be directed at the same consumers and can come from the same kind of undertakings.

The contested electrical control apparatus are similar to a low degree to the opponent’s measuring equipment for medical and industrial applications since they can be directed at the same consumers, can originate from the same kind of undertakings and can coincide in distribution channels/points of sale.

Remaining contested goods in Class 9 and all contested goods in Classes 11 and 17

These goods are dissimilar to all the opponent’s goods, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to come from the same kind of undertakings.

The opponent has made vague arguments about the similarity between these contested goods and the opponent’s goods. However, it has not submitted any detailed arguments or evidence in this regard that could counteract the findings set out in the previous paragraph.

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 contested goods target the general and professional public and the opponent’s goods exclusively target a professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

In this case, the degree of attention paid by the professional public in relation to the goods considered identical or similar is likely to be higher than average, due to the specialised nature of those goods and the technical knowledge required in order to be able to use them properly.

3. The signs

FARO
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.

The word ‘FARO’ is the Italian and Spanish word for ‘lighthouse’ but will be meaningless to consumers with no knowledge of Italian or Spanish in the relevant territory. The differing word ‘Form’ is a basic English word meaning, inter alia, ‘shape’. It is likely to be understood by Italian- and Spanish-speaking consumers, either because they are professionals (see section b) above) that may have sufficient knowledge of English to understand this basic word, or it is so similar in spelling to its Italian and Spanish equivalent ‘forma’ that the same concept will be brought to mind.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public, for whom the signs bear conceptual similarities (i.e. in relation to ‘Faro’) that may not occur to other consumers.

Bearing in mind the relevant goods, it is considered that both ‘FARO’ and ‘FORM’ are distinctive to an average degree. The contested sign has no element that is more dominant (visually eye-catching) than others.

The applicant argues that the contested sign is ‘a figurative trade mark, with an imaginative, strongly stressed distinguishing feature in the form of the letter ‘F’ being an initial (ligature)’. However, the Opposition Division notes that the first letter of the contested sign is only slightly stylised (i.e. a part of the letter is missing and another part of it is depicted in red), and the sign perceived as a whole is written in a rather standard typeface. The slight stylisation of the letter ‘F’ is of minor visual impact.

Since the public reads from left to right and from top to bottom, the part placed at the left/top of the sign (the initial part) is the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in ‘FARO’ (and its sound) and differ in the word ‘FORM’. The earlier mark is therefore visually and aurally entirely contained in the contested sign, in which it is the element of greater impact, and the differing word ‘FORM’ has less weight, for the reasons explained above. The signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with ‘lighthouse’ (the element of greater weight, ‘FARO’) and differ in the concept of ‘shape’ (the element of lesser weight, ‘FORM’), therefore, the signs are conceptually similar to a high degree.

4. Distinctiveness of the earlier mark

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not submit any evidence in order to prove this claim.

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.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar (to varying degrees), and partly dissimilar. They are directed at a professional public, who will pay a higher than average degree of attention.

The signs are visually and aurally similar to an average degree, and conceptually highly similar. The differences lie in the slight stylisation of the letter ‘F’ and the word ‘Form’, both in the contested sign. As explained above, ‘Form’ has less impact than the coinciding element ‘Faro’.

The earlier mark is distinctive to an average degree and is entirely contained in the contested sign, where it is the first element to be read and uttered.

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).

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 covered are from the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘FARO’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested sign, which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment on 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘FARO’ marks, and moreover, that it uses such a family in the same fields as those covered by the contested trade mark. The opponent has not submitted any evidence in this regard. It has only provided a list of trade mark registrations containing the word ‘FARO’ on which the opposition is based. However, this is clearly insufficient to form a ‘family of marks’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking parts of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 373 936. 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. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade mark.

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

The opponent has also based its opposition on the trade marks listed on pages 1 and 2 of this decision. Some of those marks cover the same or a narrower scope of goods than those covered by the earlier mark herein analysed, or even totally dissimilar goods (i.e. printed documentation in Class 16 of EUTM No 2 477 982, which are clearly different from the contested goods since they differ in nature, purpose, method of use, distribution channels and points of sale, are not complementary or in competition, are not directed at the same consumers and are not likely to come from the same kind of undertakings). Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected, and no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. 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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

María del Carmen SUCH SANCHEZ

Sylvie ALBRECHT

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.