OPPOSITION No B 3 051 010

Eschenbach Optik GmbH, Schopenhauerstr. 10, 90409 Nürnberg, Germany (opponent), represented by Wolpert Rechtsanwälte, Kaiser-Friedrich-Promenade 87, 61348 Bad Homburg, Germany (professional representative)

a g a i n s t

Euromex Microscopen B.V., Papenkamp 20, 6836 BD Arnhem, Netherlands (applicant).

On 27/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 010 is upheld for all the contested goods.

2. European Union trade mark application No 17 652 702 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 of European Union trade mark application No 17 652 702 ‘Novex.com’ (word mark) in Class 9. The opposition is based on, inter alia, German trade mark registration No 30 335 619 ‘noves’ (word mark). The opponent invoked Article 8(1) (b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

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 German trade mark registration No 30 335 619.

a) The goods

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

Class 9: Scientific and optical apparatus and instruments and parts thereof as far as included in class 9; Magnifying glasses; Reading and vision aids

The contested goods are the following:

Class 9: Microscopes; Biological microscopes; LED Microscopes; Metallurgical microscopes; Toolmakers' microscopes; Microscope objectives; Microscopes for medical use; Digital cameras.

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.

The contested Microscopes; biological microscopes; LED Microscopes; metallurgical microscopes; toolmakers' microscopes; microscope objectives; microscopes for medical use are included in the broad category of, or overlap with, the opponent’s Scientific and optical apparatus and instruments and parts thereof as far as included in class 9. Therefore, they are identical.

The contested Digital cameras are at least similar to the earlier optical apparatus and instruments and parts thereof as far as included in class 9 because they can coincide in producers, in distribution channels and end users. They can also be complementary in nature.

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 found to be identical or 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 specialised nature of the goods purchased (for instance, the degree of attention in relation to sophisticated high-end microscopes would be high) .

c) The signs

Noves	Novex.com
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs are word marks. In the case of word marks, the word itself is protected; therefore the use of upper or lower case character is irrelevant.

The earlier mark ‘noves’ has no meaning for the relevant public in question and, therefore, its distinctiveness is average.

The element ‘Novex’ of the contested sign has no meaning in relation to the relevant goods and its inherent distinctiveness is also normal.

The element ‘.COM’ is widely known and used throughout the relevant territory as the top-level domain originally corresponding to commercial sites on the internet. It will therefore not be perceived as an indicator of the commercial origin of the goods at issue. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

It must be pointed out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, signs coincide in their first four letters ‘NOVE*’, that form the beginning of both signs. They differ in their final letters ’s’, of the earlier mark and ‘x’ of the first element of the contested sign. Consequently, the identical beginning of the signs is of particular importance. Also, the similar length of ‘noves’ and ‘Novex’ and the fact that the differences between these elements concern their final letter mean that this difference loses weight. The contested sign includes the additional non-distinctive word ‘.com’, which therefore is of very limited influence.

It is concluded that the signs are visually similar to an at least above-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘NO –VE*, present identically in both signs. The pronunciation differs only in the sound of the last letter of the marks, ‘S’ and ‘X’, whereby these letters could also sound quite similar. The element ‘.com’ of the contested sign might even not be pronounced given it is not considered as an indicator of commercial origin. But even if it was pronounced it would be of very limited influence.

Since the aural differences between the signs are confined to the final parts of the earlier mark and the contested sign, that may even not be clearly aurally distinguished, the signs are considered aurally similar to an at least above-average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘.com’ might evoke a concept, this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional distinctive 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.

d) Distinctiveness of the earlier mark

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

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

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

e) Global assessment, other arguments and conclusion

The goods are partially identical and partially similar.

The marks are visually and aurally similar to an at least above average degree, while a conceptual comparison is not possible, and thus, it does not influence the assessment of the similarity of the signs. 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.

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).

The signs at issue are similar in so far as they share the identical beginning ‘NOVE*’. They differ only in their last letters of the respective elements. The element ‘.com’ in the contested sign cannot counteract the similarities between the signs given its non-distinctiveness.

In consequence, the differences between the signs, are insufficient to counteract the similarities arising from the coincidence in ‘NOVE*’. It must be recalled that according to well-established case-law of the Courts, a trade mark must offer a guarantee that all the goods/services bearing it have originated under the control of a single undertaking, which is responsible for their quality. Accordingly, the risk that the public might believe that the goods in question come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the German public, even on the part of the public paying a high degree of attention.

As the earlier German trade mark registration No 30 335 619 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

The Opposition Division could not take into account any arguments of the applicant, as none were submitted.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Tobias KLEE

Karin KLÜPFEL

Peter QUAY

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.