OPPOSITION No B 3 035 931

ENI S.p.A., Piazzale Enrico Mattei, 1, 00144 Roma, Italy (opponent), represented by Barzano' & Zanardo Milano S.p.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

AB "Modus Energy", Ozo g. 10 A,08200 Vilnius, Lithuania (applicant).

On 03/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 931 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 494 022 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 494 022 for the figurative mark . The opposition is based on European Union trade mark registration No 15 200 587 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.

1. The goods and services

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

Class 4: Industrial oils and greases; Lubricants; Dust absorbing wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 42: Services relating to the auditing of energy consumption and of the efficiency of operation of appliances and the safety checking of appliances and pipework; Advisory and inspection services, all relating to electricity; Consultancy relating to energy; Energy monitoring and surveys; Consultancy in the field of energy-saving.

The contested goods and services are the following:

Class 4: Electrical energy from renewable sources.

Class 9: Solar energy collectors for electricity generation; Electric power units; Solar panels for the production of electricity.

Class 39: Distribution and transmission of electricity.

Class 40: Production of electrical power from renewable sources.

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 4

The contested Electrical energy from renewable sources is similar to the opponent’s Fuels (including motor spirit) as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are in competition.

Contested goods in Class 9

The contested Solar energy collectors for electricity generation; Electric power units; Solar panels for the production of electricity are similar to the opponent’s Consultancy relating to energy in Class 42 as they usually coincide in providers and relevant public. Furthermore, their distribution channels are also the same.

Contested services in Class 39

The contested Distribution and transmission of electricity is similar to the opponent’s Consultancy relating to energy in Class 42 as they are likely to be rendered by the same professional companies in this field through the same distribution channels. Also, the relevant public coincides.

Contested services in Class 40

The contested Production of electrical power from renewable sources is similar to the opponent’s Consultancy relating to energy in Class 42 as it is likely they are all rendered by the same undertakings. Therefore, these services can coincide in distribution channels and be directed to the same end users.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be similar are directed at the public at large and 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, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of one verbal element ‘GENIUS’ written in stylised capitalised typeface with the first letter, ‘G’, and the last two, ‘US’, in black and the remaining letters in yellow. The first letter, ‘G’, in underlined with a grey oval-like shape. This word is depicted below a thin horizontal line.

The contested sign is a figurative mark consisting of two verbal elements, ‘GREEN GENIUS’, written in green rather standard, except for the last letter ‘N’ of ‘GREEN’, upper case script one below the other. All the elements of the sign are depicted against a grey squared background.

As regards the figurative elements of the signs (stylisation, colours, the squared background), it is considered that despite displaying some level of fancifulness as regards in particular the first letter ‘G’ of the earlier mark and the stylisation of the last letter ‘N’ of GREEN’ in the contested sign, they will be perceived by consumers essentially as decorative elements in the signs. Therefore, the figurative elements of the signs will have a limited impact on the public as an indicator of a commercial origin.

The English or German word ‘GENIUS’ (meaning ‘a person who is exceptionally intelligent’) included in both signs will be understood by the substantial part of the public in the relevant territory. Apart from those who speak the aforementioned languages, it has to be noted that it is very close to many relevant language variations (e.g. Czech and Slovak: ‘GÉNIUS’, French ‘(homme de) génie’, Polish ‘geniusz’, Spanish and Italian ‘genio’, Romanian ‘geniu’, Portuguese ‘gênio’, Dutch ‘genie’, Swedish ‘geni’, etc.).

Therefore, its distinctive character in relation to the goods and services at issue is average, because it refers to a person with e.g. special abilities, and not to artefacts like solar energy collectors or the services provided. Clearly, it is not descriptive in any way of the goods and services in question.

The word ‘GREEN’ will be recognised in the contested sign despite the stylisation of the letter ‘N’. This word is a basic English word that the relevant public will be familiar with as referring to the colour and meaning ‘designed to protect the environment or to limit damage to the environment’. Therefore, this word will be perceived as weak in relation to the goods and services in question.

The signs at issue have no elements that could be considered clearly more dominant (visually eye catching) than other elements.

Visually and aurally, the signs coincide in ‘GENIUS’, which constitutes the only verbal element of the earlier mark and the most distinctive word element of the contested sign. The signs differ in the first verbal element of the contested sign, ‘GREEN’, considered to be weak and in the figurative elements of both signs, which have limited impact on the assessment of likelihood of confusion.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, as explained above, the figurative elements of the signs will be perceived by the public as merely decorative elements.

Even though the signs differ in their beginnings, where the consumers’ attention is focused, since the verbal element of the earlier mark is fully included in the contested sign as an independent element and it is preceded by the word ‘GREEN’ that will be perceived as weak, the signs are considered visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks at issue are conceptually similar to at least an average degree to the extent that they both refer to the notion of ‘GENIUS’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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.

5. Global assessment, other arguments and conclusion

The goods and services are similar. The marks are visually, aurally and conceptually similar to at least an average degree. The distinctiveness of the earlier mark is deemed to be normal. The public’s degree of attentiveness is considered to vary from average to high.

In the present case, the word ‘GENIUS’ is both the single word constituting the earlier mark and the second of the two words (the first being ‘GREEN’ of weak distinctive character) composing the contested sign. The word ‘GENIUS’ constitutes an independent and distinctive element within the contested sign.

The Opposition Division notes that the applicant refers to the earlier decision No B 2 900 622, however in that case the opposition was rejected given the dissimilarity of the services and the Opposition Division did not undertake the assessment of the signs at all.

Overall, the Opposition Division considers that the differences between the signs are not capable of distinguishing the marks sufficiently from one another, in particular since it is common for the same mark to be configured in various ways according to the type of product or services which it designates. It is also common for a single manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various goods/services from one another. In the present case, the consumer faced with the contested sign might be led to recognize it as a sub-brand of the earlier mark on account of the same relevant verbal element ‘GENIUS’.

As a consequence, it is reasonable to assume that consumers would believe that the goods and services in question come from the same undertaking or, as the case may be, from economically-linked undertakings. This is in particular so as the average consumer will only rarely have the opportunity to compare the signs side-by-side but must instead rely on its imperfect memory. 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 200 587. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.