OPPOSITION No B 3 046 820

Sensus Spectrum LLC, 8601 Six Forks Road, Suite 700, 27615, Raleigh, United States of America (opponent), represented by Patentanwälte Dr. Keller Schwertfeger Partnerschaft mbB, Westring 17, 76829, Landau, Germany (professional representative)

a g a i n s t

Enersense International Oy, Konepajanranta 2, 28100 Pori, Finland (applicant), represented by Ruth Almaraz Palmero, Avenida de Aguilera 19-1ºB, 03007 Alicante

Spain (professional representative).

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 820 is partially upheld, namely for the following contested goods and services:

Class 9: Data processing equipment, computers; computer software; computer servers; mobile application software; measuring, detecting and monitoring instruments, indicators and controllers; safety, security, protection and signalling devices; computer software for resource management; computer programs, software and application software for project management; computer programs, software and application software for planning, controlling and developing business activities; computer programs, software and application software for client management, document management and invoicing; computer programs, software and application software for ware house records, logistics management and surveillance of employee working hours; downloadable computer software for the management of information; computer programs, software and application software for the management and supervision of subcontracting chains, employees and assets; computer programs, software and application software for computer-aided design or manufacturing (CAD/CAM).

Class 42: Science and technology services; design and development of computer hardware and software; design of operating system software; database design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; software as a service [SaaS]; cloud computing; server hosting; electronic data storage; platform as a Service [PaaS]; computer system integration services; providing temporary use of on-line non-downloadable software for the management of data; design and development of computer software for logistics, supply chain management and e-business portals; information technology [IT] consultancy; quality control; quality assurance consultancy; technical supervision and inspection; electronic storage services for archiving electronic data; advisory, consultancy and information services in relation to all of the above mentioned services.

2. European Union trade mark application No 17 441 007 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 441 007 for the word mark ‘E-SENSE’, namely against some of the goods and services in Classes 9, 35 and 42. The opposition is based on European Union trade mark registration No 13 293 824 for the word mark ‘SENSUS’ and German trade mark registration No 302 010 003 057 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 13 293 824 for the word mark ‘SENSUS’, which is not subject to proof of use.

a) The goods and services

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

Class 9: Water meters, heating meters, electricity meters, gasometers [measuring instruments] and liquid flow meters of all kinds and component parts thereof, included in class 09; electric and electronic apparatus and instruments for remote control, telecounting and telemetry, in particular instruments for reading, calculating, collecting and recording data relating to energy consumption; energy monitoring devices; apparatus for the transmission of data; data processing apparatus; computer databases, namely magnetic cards, including encoded magnetic cards; optical cards, including encoded optical cards; smart cards; computers; software, in particular for data capture, data transmission and data analysis in supply networks; electric apparatus and instruments, namely measuring, signalling and checking apparatus; measuring, controlling and regulating apparatus for non-electrical measurement variables and components therefor, for heating and water supply systems and components therefor, all included in class 9; testing and adjustment devices as measurement devices; Workshop equipment and testing devices as measurement devices.

Class 11: Apparatus for providing heat and water, included in class 11.

Class 35: Reading of meters and calculation of consumption costs.

Class 37: Installation, maintenance and repair of water meters, heating meters, electricity meters, gas meters and liquid flow meters of all kinds, components therefor and electronic components therefor.

Class 42: Testing (quality control), verifying and certifying of consumption meters.

The contested goods and services are the following:

Class 9: Data processing equipment, computers; computer software; computer servers; mobile application software; measuring, detecting and monitoring instruments, indicators and controllers; safety, security, protection and signalling devices; computer software for resource management; computer programs, software and application software for project management; computer programs, software and application software for planning, controlling and developing business activities; computer programs, software and application software for client management, document management and invoicing; computer programs, software and application software for ware house records, logistics management and surveillance of employee working hours; downloadable computer software for the management of information; computer programs, software and application software for the management and supervision of subcontracting chains, employees and assets; computer programs, software and application software for computer-aided design or manufacturing (CAD/CAM).

Class 35: Invoicing.

Class 42: Science and technology services; design and development of computer hardware and software; design of operating system software; database design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; software as a service [SaaS];cloud computing; server hosting; electronic data storage; platform as a service [PaaS];computer system integration services; providing temporary use of on-line non-downloadable software for the management of data; design and development of computer software for logistics, supply chain management and e-business portals; information technology [IT] consultancy; quality control; quality assurance consultancy; technical supervision and inspection; electronic storage services for archiving electronic data; advisory, consultancy and information services in relation to all of the above mentioned services.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 opponent’s list of goods to show the relationship of individual goods and services 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

Computers are identically contained in both lists of goods.

The contested data processing equipment includes, as a broader category, or overlaps with, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested computer software; computer servers; mobile application software; computer software for resource management; computer programs, software and application software for project management; computer programs, software and application software for planning, controlling and developing business activities; computer programs, software and application software for client management, document management and invoicing; computer programs, software and application software for ware house records, logistics management and surveillance of employee working hours; downloadable computer software for the management of information; computer programs, software and application software for the management and supervision of subcontracting chains, employees and assets; computer programs, software and application software for computer-aided design or manufacturing (CAD/CAM) are either included or include, as broader categories, or overlap with the opponent’s software, in particular for data capture, data transmission and data analysis in supply networks. Therefore, they are identical.

The contested measuring, detecting and monitoring instruments, indicators and controllers; signalling devices cover a wide range of devices which measure, detect or capture signals and permit the user to measure and/or control aspects of operations. As such, they are at least similar to the opponent’s measuring, signalling and checking apparatus. These goods have the same or a closely connected purpose and they may coincide in their producers and distribution channels. Additionally, they target the same public.

Likewise, the contested safety, security, protection devices are considered at least similar to the opponent’s apparatus for the transmission of data as they may coincide in producer, relevant public and distribution channels.

Contested services in Class 35

The contested invoicing are business services consisting in the act or practice of presenting a customer with an invoice. They are usually rendered by specialist companies to others. As such, they are not sufficiently related to the opponent’s goods and services in Classes 9, 11, 35, 37 and 42. The natures, intended purposes and methods of use of the goods and services under comparison are different. They are not in competition. Also, these goods and services are usually not produced by the same kind of undertakings. Furthermore, contrary to the opponent’s submission, they are not complementary because there is no close connection between them, 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 or provision of those services 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). Therefore, the goods and services are dissimilar.

Contested services in Class 42

Quality control is identically contained in both lists of services (including synonyms).

The contested quality assurance consultancy; technical supervision and inspection are closely linked to the opponent’s testing (quality control), verifying and certifying of consumption meters. The services under comparison may, for example, be part of the same process of certifying the functioning of consumption meters. They may be offered by the same specialists and may target the same public through the same channels to satisfy similar needs. Therefore, these services are at least similar.

The applicant’s science and technology services cover a broad category of services of a technical nature carried out by engineers or technical experts, who draw up reports and projects after process analysis, and are based on a number of techniques. As a consequence, they may have certain points in common with the opponent’s testing (quality control), verifying and certifying services in the same class. Although the latter services concern a very specific ambit, the applicant’s services are actually broad and not limited to a specific sector. Therefore the services under comparison may have a similar nature or purpose and be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.

The contested services

design and development of computer hardware and software; design of operating system software; database design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; software as a service [SaaS];cloud computing; server hosting; electronic data storage; platform as a service [PaaS];computer system integration services; providing temporary use of on-line non-downloadable software for the management of data; design and development of computer software for logistics, supply chain management and e-business portals; information technology [IT] consultancy; electronic storage services for archiving electronic data

all relate to various kinds of assistance to the consumer by the provision of either IT infrastructures or software or both as well as maintenance, support and monitoring thereof. As such, they are similar to the opponent’s software, in particular for data capture, data transmission and data analysis in supply networks in Class 9 as these goods may form an important part of the contested services. Furthermore, they may be rendered by the same undertakings and may be complementary in that the opponent’s goods are important for the rendering of the contested services which may lead consumers to believe they originate from the same undertakings. Finally they may also target the same consumers and be rendered through the same distribution channels, for example online.

Finally insofar as the rest of the contested services

advisory, consultancy and information services in relation to all of the above mentioned services

are interrelated with, and cannot be clearly separated from, the abovementioned contested technical, scientific and IT related services, the same considerations apply also to those. Therefore, these contested services are similar to the opponent’s goods and services in Classes 9 and 42.

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 goods and services found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. Since some of the goods and services can be relatively expensive and may be of particular technical importance for the consumer (e.g. design and development of computer hardware and software in Class 42), the level of attention may vary from average to high, depending on the price and sophistication of the goods and services at hand.

c) The signs

SENSUS	E-SENSE
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 contested sign is a word mark composed of two elements, namely the single letter ‘E’ and ‘SENSE’ separated by a hyphen. The prefix ‘E-’ used to mean ‘electronic’ is common and subject to widespread use (29/11/2016, T-617/15, eSMOKINGWORLD (fig.), EU:T:2016:679; § 20; 14/12/2017, R 1429/2017-4, E+ (fig.), § 12; 14/12/2017, R 1428/2017-4, E (fig.), § 12; 25/04/2017, R 1122/2016-5, ESTICK, § 49; 09/11/2016, R 1157/2016-5, e-Pedal, § 18; 20/09/2016, R 2599/2015-1, eDC Cl@ss, § 12; 19/09/2016, R 1177/2016-4, eSuspension, § 11; 03/05/2016, R 1148/2015-5, eshift, § 18). Therefore, it will be understood in relation to the goods and services at issue as referring to the concept of ‘electronic’, or to the fact that an action can be performed electronically through the internet or the web. In consequence, it is non-distinctive in relation to the goods services at issue.

For the English-speaking part of the public, the element ‘SENSE’ of the contested sign is meaningful, as it refers to ‘the meaning of a more or less extended sequence of written or spoken words (as a sentence, passage, book, etc.). Also: any of the various meanings of such a sequence of words’ (information extracted from Oxford English Dictionary on 19/11/2019 at https://www.oed.com/view/Entry/175954? ). This element is distinctive, since its meaning is not directly related to the relevant goods and services in a clear way that could impair its distinctiveness. For the non-English-speaking part of the public, the element ‘SENSE’ has no meaning and it is, therefore, distinctive.

The earlier mark is a word mark consisting of the verbal element ‘SENSUS’. As such, it has not got any straightforward and clear meaning for the great majority of the relevant public and is , therefore, distinctive (for this part of the public).

Yet, part of the relevant public may perceive a meaning in the term ‘SENSUS’. For example the English speaking public may see it as a misspelling of the word ‘CENSUS’ (which is pronounced identically) meaning ‘an official enumeration of the population of a country or district, with various statistics relating to them’ (information extracted from Oxford English Dictionary on 19/11/2019 at https://www.oed.com/view/Entry/29623?rskey=lkUGu9&result=1&isAdvanced=false#eid). If perceived in this way, this element is distinctive because it is not related to the relevant goods and services.

Therefore, considering that the signs might suggest a different semantic content for the English-speaking part of the public, the Opposition Division finds it appropriate to focus the comparison on the Bulgarian- and Latvian-speaking part of the public for which the verbal elements ‘SENSUS’ and ‘SENSE’ are meaningless. Indeed, for this part of the public the likelihood of confusion might be higher.

Visually, the signs coincide in the string of letters ‘SENS’ of the sole element of the earlier mark and of the second verbal element of the contested one. They differ in the endings of these verbal elements (‘-US’ vs ‘E’) and in the additional ‘E-’ placed at the beginning of the contested sign, which however is non distinctive and has therefore a limited differentiating impact on the comparison.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SENS’, present identically in both signs and located in the initial part of the only element of the earlier mark and of the second verbal element of the contested sign respectively. However the pronunciation differs in the sound of the letters ‛-US’ and ‘-E’ located at the end of the respective signs and in the component ‘E-’ at the beginning of the contested sign, which is however non-distinctive. Therefore, the relevant public will not pay as much attention to this element as to the other more distinctive element.

In the light of the above, the signs are visually similar to an average degree

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Although the letter ‘E-’ in the contested sign will evoke a concept, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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.

1. 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 goods and 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.

2. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In the present case, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The relevant public is both the public at large and the professional public and their degree of attention varies from average to high. The earlier mark has a normal degree of distinctive character.

The signs are visually and phonetically similar to an average degree on account of their verbal elements ‘SENSUS’ and ‘SENSE’ i.e. the only element of the earlier mark and the more distinctive element of the contested sign respectively. Moreover, in view of the focus used, the marks under comparison lack any concepts that could help consumers to differentiate between them.

Contrary to the applicant’s submission, the difference which arises from the additional letter ‘E-’ located at the beginning of the contested sign has a marginal impact on the global impression created by the signs. While it is true that consumers generally tend to focus on the beginning of a sign, since they read from left to right, that argument cannot hold in all cases (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70), especially when the initial element is clearly non-distinctive as explained above in section c) of this decision.

Account should also be 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/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), for example denoting a digital or on-line version of the products and services at issue.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and Latvian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 293 824 for the word mark ‘SENSUS’. 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 sign must be rejected for the goods and 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 goods cannot be successful.

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

• German trade mark registration No 302 010 003 057 for the figurative mark .

The Opposition Division notes that proof of use was requested by the applicant in relation to this earlier right. However, for reasons of procedural economy the Opposition Division will continue the examination of likelihood of confusion on the premise that the opponent proved use for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it is a figurative mark containing slight stylization which is not present in the contested trade mark. Moreover, it covers the same scope of the goods and services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

Keeva DOHERTY

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.