DECISION

of the Second Board of Appeal

of 18 November 2020

In case R 142/2020-2

Enersense International Oy
Konepajanranta 2 28100 Pori Finland	Applicant / Appellant

represented by Ruth Almaraz Palmero, Avenida de Aguilera, 19-1ºB, 03007, Alicante, Spain

v

Sensus Spectrum LLC
8601 Six Forks Road, Suite 700 Raleigh, North Carolina 27615 United States of America	Opponent / Defendant

represented by Patentanwälte Dr. Keller Schwertfeger Partnerschaft mbB, Westring 17, 76829, Landau, Germany

APPEAL relating to Opposition Proceedings No B 3 046 820 (European Union trade mark application No 17 441 007)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), S. Martin (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 8 November 2017, Enersense International Oy (‘the applicant’) sought to register the word mark

E-SENSE

for the following list of goods and services as limited on 13 November 2017:

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; Platform service for managing project information related to industrial construction; 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);   Access control systems (Electric -);

Class 35 - Advertising; Business management; Business administration; Office functions; Marketing; Advertising, marketing and promotional services, including providing of advertising space, time and media; Human resource and recruitment services, including personnel services, personnel hiring, employment services, employment outplacement services, evaluation and testing of personnel for recruitment purposes, psychological testing of personnel for recruitment purposes, interviewing services [for personnel recruitment], evaluation of personnel requirements, personnel selection [for others], maintenance of personnel records [for others], preparing duty rosters; Outsourcing services [business assistance]; payroll calculation; payroll list preparation; invoicing; Accountancy, book keeping and auditing; Administrative data processing; Data management services; Administrative processing of purchase orders; Business analysis, research and information services; Collection and systematization of business data; Collection, compilation and systematization of data relating to personnel and employment applicants; Procurement services for others [purchasing goods and services for other businesses]; Procurement of contracts [for others]; Arranging of competitions, exhibitions, events and fairs relating to employment and human resource services; Advisory, consultancy and information services in relation to all of the above mentioned services;

Class 38 - Telecommunications; Electronic messaging; On-line communication services; Electronic network communications; Access to content, websites and portals; Providing access to electronic database; Providing access to application software for use on mobile telephones and other mobile devices; Provision of communications between computers; Mobile telephone communication services; Providing internet chat rooms; Electronic bulletin board services [telecommunications services]; Broadcasting services; Digital transmission services; Digital communications services; Transmission of messages over electronic media; Advisory, consultancy and information services in relation to all of the above mentioned services;

Class 42 - Science and technology services; Design and development of computer hardware and software; Design of operating system software; Database design; Research and development of new products for others; 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; Energy auditing; 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; Technical advice relating to safety; Quality control; Quality assurance consultancy; Technical supervision and inspection; Digitization of documents; Digital asset management; Electronic storage services for archiving electronic data; Advisory, consultancy and information services in relation to all of the above mentioned services.

2. The application was published on 28 November 2017.

3. On 27 February 2018, Sensus Spectrum LLC (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods and services, namely:

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.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

1. EUTM registration No 13 293 824 for the word mark

SENSUS

filed on 24 September 2014 and [subsequently] registered on 7 January 2019 for the following goods and services:

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.

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

filed on 19 January 2010 and registered on 20 May 2010 for the following goods and services:

Class 9 - Water meters, calorimeters, electricity meters, gas meters and liquid flow meters of all types and their components, included in Class 9; electrical and electronic apparatus and instruments for telecontrol, telecounting and telemetering, especially apparatus for reading, billing, collecting and registration of energy consumption data; energy monitoring equipment; data transmission equipment; data processing equipment; data storage devices, namely magnetic cards, also coded; optical cards, also coded; smart cards; computers; software, especially for data acquisition, data transmission and data analysis in energy supply networks; electrical apparatus and instruments, namely measuring, signalling and control apparatus; measuring, control and regulating equipment for non-electrical quantities and their components in heat and water supply systems and their components, as far as included in Class 9; testing and adjusting apparatus as measuring instruments; workshop and testing equipment as measuring instruments;

Class 11 - Apparatus for heating and water supply, as far as included in Class 11;

Class 35 - Reading of measuring instruments and calculation of consumption costs;

Class 37 - Installation, maintenance and repair of water meters, calorimeters, electricity meters, gas meters and liquid flow meters of all types, of their elements and electronic components;

Class 42 - Testing (quality control), verification and certification of consumption meters.

6. At the request of the applicant, the opponent had to provide proof of use for its German trade mark registration No 302 010 003 057. On 22 February 2019, the opponent submitted evidence for proof of use.

7. By decision of 27 November 2019 (‘the contested decision’), the Opposition Division partially upheld the opposition and refused the contested EUTM application for the following 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.

It gave, in particular, the following grounds for its decision:

• The Opposition Division based its decision on the earlier EUTM registration which was not subject to proof of use.

• The contested goods in Class 9 have been found partially identical or similar to the earlier goods, The contested services in Class 35, i.e. ‘invoicing’ have been found dissimilar to the earlier goods and services. The contested services in Class 42 have been found identical or similar to the earlier goods and services.

• 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. The level of attention may vary from average to high, depending on the price and sophistication of the goods and services at hand.

• The Opposition Division focused the comparison of the signs on the Bulgarian and Latvian-speaking part of the public for which the verbal elements ‘SENSUS’ and ‘SENSE’ are meaningless.

• The earlier word mark ‘SENSUS’ is distinctive for the relevant public of the European Union as it has no straightforward meaning,

• The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

• The distinctiveness of the earlier mark must be seen as normal.

• 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 for the goods found to be identical or similar, on the basis of the opponent’s European Union trade mark registration No 13 293 824 for the word mark ‘SENSUS’..

8. On 20 January 2020, the applicant filed an appeal against the contested decision, requesting that the decision be partially set aside, namely in so far as the opposition was upheld for the Classes 9 and 42. The statement of grounds of the appeal was received on 18 March 2020.

9. In its response received on 18 June 2020 , the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• The applicant considers that genuine use of the earlier German trade mark has not been proved and that the opposition has to be refused in accordance with Article 47(2) of EUTMR.

• Due to the different beginnings of the signs under comparison, in particular the letter ‘E’ of the contested sign which has no counterpart in the earlier right and the different endings, namely ‘SE’ of the contested sign versus ‘US’ of the earlier right, the signs are visually and aurally (very) different. Conceptually, the signs cannot be compared, as correctly stated in the contested decision.

• The earlier goods and services refer to monitoring or measuring devices whereas the goods and services of the applicant are related to computers or software.

• Even if all goods and services were identical, there can be no likelihood of confusion due to the dissimilarity of the signs,

11. The arguments raised in response may be summarised as follows:

• As the opposition was upheld on the basis of the opponent’s EUTM registration, there is no need to discuss whether the evidence submitted for the earlier German trade mark is sufficient to prove genuine use. However, if this question should be relevant, the numerous documents submitted by the opponent are sufficient in relation to place, time, extent and nature to prove genuine use.

• The assessment on the similarity of the signs in the contested decision is not only to be confirmed, but in the opponent’s view, the signs are visually and aurally similar to a high degree.

• Contrary to the findings of the Opposition Division the signs are conceptually similar because they have the same origin, i.e. the word ‘SENSUS’ in Latin. The meanings are the same.

• The assessment on the similarity/identity of the goods and services is to be confirmed.

Reasons

12. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Scope of the appeal

13. The appeal is limited to the rejection of the application in relation to the goods in Classes 9 and 42.

Preliminary remark

14. The applicant submits that the opposition should be rejected since the opponent did not prove the genuine use of its earlier German trade mark registration.

15. However, as rightly submitted by the opponent, the contested decision is based on EUTM registration No 13 293 824 for the word mark ‘SENSUS’ which was not subject to proof of use and not on the German trade mark registration.

The relevant public and its level of attention

16. The earlier mark is a EUTM. The relevant public resides in one of the countries of the European Union.

17. The goods and services are addressed to the general public and to the professional public. Given the nature of the goods and services in question, the level of attention will range between average and high.

Comparison of the goods and services

18. The applicant has not put forward any argument relating to the issue of the comparison of the goods and services. Having reviewed the reasoning of the Opposition Division in this regard, the Board does not see any reason justifying departing from the conclusions reached in the contested decision, i.e.:

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’. They are identical.

• 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’.

• 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

• ‘Invoicing’ is considered dissimilar to all the opponents goods and services.

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.

• 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.

Comparison of the marks

19. The signs to be compared are:

    SENSUS	E-SENSE
    Earlier mark	Contested sign

20. Visually, both marks are composed of six letters. They coincide in the string of letters ‘SENS’. 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.

21. The prefix ‘E’ is commonly used in several languages of the Member States of the Union as meaning ‘electronic, internet-related’. Although the abbreviation is derived from English, it is used and understood throughout the European Union (29/11/2016, T‑617/15, eSMOKINGWORLD (fig.), EU:T:2016:679; 29/09/2009, T-81/08, E-Ship, EU:T:2009:128, § 34; 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; 10/05/2016, R 2527/2015-4, eguard, § 18; 19/02/2016, R 235/2015-1 and R 279/2015-1, E -Consent, § 35; 03/11/2014, R 1188/2014-2, econnet (figs.), § 20; 14/11/2012, R 543/2012-5, Renaissance, § 12; 21/02/2011, R 1344/2010-2, IFT, § 16-17; ).

22. The Court confirmed that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (29/01/2020, T-239/19, Encanto, EU:T:2020:12, § 27; 25/03/2009, T‑402/07, Arcol II, EU:T:2009:85, § 83). In the present case as already mentioned above the marks in dispute coincide in the string of letters ‘SENS’

23. The Board acknowledges that consumers normally attach more importance to the first part of words. However, that consideration cannot apply in every case (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52; 12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 32). In the present case, taking into account the overall impression, the signs are visually similar to an average degree.

24. Phonetically, 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.

25. However, the initial letter ‘E’ is non-distinctive or has only a very limited distinctive character as outlined above. As a result the relevant public, which is familiar with that non-distinctive or weakly distinctive element, will pay more attention to the pronunciation of the next element namely ‘SENSE’ (15/10/2020, T‑2/20, BIOPLAST / BIOPLAK; EU:T:2020:493, § 55).

26. The signs are aurally similar to an average degree.

27. Conceptually, neither of the signs has a meaning as a whole for the relevant consumer in the relevant territory. Contrary to the claims of the opponent who contends that both signs originate from the Latin ‘SENSUS’ and thus have the same meaning, this meaning may be captured only by a part of the relevant public who studied Latin at school or at university. A significant part of the relevant public in the European Union will not, however, associate the term ‘SENSUS’ with any semantic meaning (12/03/2008, T-341/06, , Garum, EU:T:2008:70).

28. Although the letter ‘E-’ in the contested sign will evoke a concept, it is not sufficient to establish any relevant conceptual difference, as this element is non-distinctive and cannot indicate commercial origin (29/03/2017, T-387/15, J and Joy, EU:T:2017:233, § 80). The attention of the relevant public will be attracted to the additional fanciful verbal element, which has no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Distinctive character of the earlier mark

29. 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.

Overall assessment of the likelihood of confusion

30. The signs coincide in four out of six letters. The descriptive and at least weakly distinctive component ‘E’ placed at the beginning of the contested sign is not sufficient to outweigh the overall average similarity between the signs.

31. The level of attention of the relevant public is higher than average. Although it is true that an increase in the level of attention will reduce the likelihood of confusion between the signs at issue, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48 and the case-law cited).

32. Taking into account the identity or similarity between the conflicting goods, the average degree of visual and aural similarity between the signs and the normal degree of inherent distinctive character of the earlier mark, there exists a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

33. Therefore, the contested decision is confirmed, and the appeal is dismissed.

Costs

34. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the appeal proceedings.

35. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

36. As to the opposition proceedings, the Opposition Division ordered each party to bear its own costs. This decision remains unaffected. The total amount for both proceedings is therefore EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs incurred by the opponent in the appeal proceedings amounting to EUR 550

Signed S. Stürmann

Signed S. Martin

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema