OPPOSITION No B 3 054 564

AtlasBX Co. Ltd., #40-42, Daehwa-dong, Daeduck-Ku, Daejon, Republic Of Korea (opponent), represented by Hgf Limited, Delta House, 50 West Nile Street, G1 2NP Glasgow, United Kingdom (professional representative)

a g a i n s t

Atlas Solar Power Limited, Rm A 20/F Kiu Fu Comm Bldg 300 Lockhart Rd, null, Wan Chai, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011, Bilbao (Vizcaya), Spain (professional representative).

On 25/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 564 is partially upheld, namely for the following contested goods:

Class 9: Photovoltaic cells; solar batteries; solar panels for the production of electricity; inverters.

2. European Union trade mark application No 17 868 401 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 17 868 401 for the word mark ‘atlasolar’. The opposition is based on, inter alia, Maltese trade mark registration No 30 190 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 Maltese trade mark registration No 30 190.

1. The goods

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

Class 9: Automotive batteries for vehicles.

The contested goods are the following:

Class 6: Roofing of metal, incorporating photovoltaic cells; props of metal.

Class 9: Photovoltaic cells; solar batteries; solar panels for the production of electricity; inverters.

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 photovoltaic cells; solar batteries; solar panels for the production of electricity; inverters are apparatus for generating, accumulating and controlling electricity, belonging to the sector of photovoltaic solar power. This technology can have various incorporations or uses as, inter alia, an alternative energy source for vehicles, which may be powered completely or significantly by solar energy (e.g. solar cars). It is obvious that these goods are closely related to the opponent’s automotive batteries for vehicles since they — at least — may be produced by the same undertakings (specialising in batteries, power supply and solar systems), be distributed by the same channels, and target the same relevant public. Moreover, some can also coincide in nature (e.g. solar batteries) and/or be complementary (e.g. solar panels for the production of electricity, which can be intended for vehicles). Based on this conclusion, none of the contested goods can be considered dissimilar.

It follows, therefore, that all the contested goods in this class are at least similar to a low degree.

Contested goods in Class 6

However, the contested roofing of metal, incorporating photovoltaic cells; props of metal, which are in essence building materials, have nothing in common with the opponent’s automotive batteries for vehicles in Class 9. The mere fact that, for instance, roofing of metal incorporates photovoltaic cells — the latter somewhat related to the opponent’s batteries for vehicles (in the sense that both are apparatus for generating and accumulating electricity) — is not enough to find similarity with the opponent’s goods. Firstly, because the opponent’s batteries are limited to, or intended for, use only in vehicles, while the contested goods are building materials. Secondly, because even if they were general batteries without specification (e.g. not for vehicles but also to be used in constructions/buildings), these goods would simply be ancillary components of the finished goods (i.e. roofing of metal including this feature), targeting their manufacturers and not the final relevant public (those purchasing building materials). The goods under comparison clearly have different natures and purposes and are neither complementary to nor in competition with each other. Furthermore, they do not originate from the same undertakings and normally have different distribution channels. Therefore, they are dissimilar.

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 found to be at least similar to a low degree target mainly business customers with specific professional knowledge or expertise (working in this field or incorporating that technology in their products, for instance, car manufacturers) but some can also be directed at the public at large (e.g. the opponent’s automotive batteries for vehicles and the contested solar batteries, which can be purchased by the general public). The level of attention varies from average to high due to the specialised nature, price and, for the public at large at least, infrequent purchase of the goods.

3. The signs

	atlasolar
Earlier trade mark	Contested sign

The relevant territory is Malta which official languages are Maltese and English.

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 consists of the verbal elements ‘ATLAS’ and ‘BATTERY’, with the first being clearly dominant and the latter of secondary importance due to its (considerably smaller) size, position and, as will be seen below, descriptive character.

The contested sign consists of the verbal element ‘atlasolar’ which will be easily dissected into the words ‘atlas’ and solar’ (despite the fact that they share the final and initial letter ‘s’), inasmuch as both components convey a clear meaning for the relevant public (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Moreover, the fact that it is depicted in lower case (and not upper case like the earlier mark) is immaterial since in the case of word marks is the word as such that is protected and not its written form.

The coinciding word ‘ATLAS’ will evoke the same associations in Maltese and English, inter alia, ‘a Titan compelled to support the sky on his shoulders as punishment for rebelling against Zeus’ (in Greek mythology), ‘collection of maps, usually in book form’ or ‘the mountain range in the Maghreb separating the Mediterranean and Atlantic coastlines from the Sahara Dessert’. As in any case ‘ATLAS’ has no meaning for the relevant goods, its distinctiveness is average.

The additional word of the earlier mark, ‘BATTERY’, (‘batteriji’ in Maltese), will be obviously understood as ‘a device that produces electricity to provide power for radios, cars, etc’. Bearing in mind that the opponent’s goods are batteries for vehicles, this word is clearly descriptive and, therefore, non-distinctive.

The additional word of the contested sign ‘solar’ (‘solari’ in Maltese) will be perceived as ‘something relating to the sun or denoting energy derived from the sun’s rays’. Given that the contested goods may belong to the photovoltaic solar power sector (e.g. solar batteries), this word is also clearly descriptive and, therefore, non-distinctive.

The earlier mark contains figurative elements of a rather decorative nature (e.g. typeface and the oval behind the letter ‘L’), as can be seen in the depictions above, which do not detract consumers’ attention from the verbal elements to which more importance will be given (with the exception of the non-distinctive word ‘BATTERIES’). Moreover, 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 since the public will more easily refer to the signs in question by their verbal elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

In view of the foregoing, it is deemed that the coinciding element ‘ATLAS’ is the most important element of the signs due to its intrinsic distinctiveness, (first) position and, in the case of the earlier mark, dominant character. The differences reside in non‑distinctive or secondary elements and aspects.

Visually and aurally, the signs coincide in the distinctive word ‘ATLAS’. However, they differ in the signs’ (non-distinctive) word elements ‘BATTERY’ and ‘solar’ (which shares its first letter with the final letter of ‘atlas’.

Visually, the signs also differ in the earlier mark’s figurative aspects (the impact of which is lesser, as noted above) and their structure, namely in that the contested sign constitutes a single word while the earlier mark has two identifiable words.

Therefore, the signs are visually and aurally, at least, similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will trigger the semantic associations of the distinctive word ‘ATLAS’ and the additional words, ‘BATTERY’ and ‘solar’, are non-distinctive (and cannot indicate the commercial origin), the signs are conceptually identical.

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.

According to the opponent, the earlier mark has been extensively used, forms part of a family of marks, and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly at least similar to a low degree and partly dissimilar. They target both the public at large and the professional public. The level of attention may vary from average to high. However, account is taken of the fact that even consumers who pay a higher 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 distinctiveness of the earlier mark per se is average.

The signs are visually and aurally, at least, similar to an average degree and conceptually identical inasmuch as the most important element of the earlier mark ‘ATLAS’ is entirely included at the beginning of the contested sign, being its only distinctive component. The differences between the marks are confined to non-distinctive or secondary elements and aspects, namely the words ‘battery’ and ‘solar’ and the earlier mark’s figurative elements.

Moreover, the concept of 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 undertaking or economically linked undertakings. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, it is very likely that the relevant public will perceive the contested sign as a sub-brand or variation of the earlier mark, configured in a different way (e.g. according to the specific goods that it designates) and associate them with the house brand ‘ATLAS’, perceiving this as the badge of origin of both signs.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the high similarity between the signs is sufficient to outweigh the low similarity that may exist for some of the goods (those found to be — as a whole — at least similar to a low degree).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Maltese trade mark registration No 30 190.

It follows from the above that the contested trade mark must be rejected for all the goods for which similarity has been found. The rest of the contested goods 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on another 36 earlier national trade marks belonging to the territories of Benelux, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Malta, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, and the United Kingdom. All the information as regards these marks such as their registration numbers, depiction and the goods covered by them (which is not reproduced here due to its length) can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

What is important to note is that these marks are registered for the same goods as the one that has been compared, namely, batteries for vehicles. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade mark has a reputation for its (37) national registrations for and in the territories of Benelux, Czechia, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Malta, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, and the United Kingdom.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 05/03/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the relevant territories prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 9: Automotive batteries for vehicles.

The opposition is directed against the following goods:

Class 6: Roofing of metal, incorporating photovoltaic cells; props of metal.

Class 9: Photovoltaic cells; solar batteries; solar panels for the production of electricity; inverters.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 19/12/2018 (within the time limit for substantiation), the opponent submitted the following evidence to support its claim:

• Annex 6: extracts from the opponent’s website www.atlasbx.co.za (dated 05/12/2018), giving information about the company’s history (founded in 1944), field of activity (battery industry), international character and achievements.

• Annex 7: an extract from each of the websites www.tyrepress.com and www.everybodywiki.com (dated in 2017 and September 2018, respectively), reflecting information about the opponent’s company. The first article reports that the company ‘AtlasBX’ is the sixth largest battery manufacturer in the world and that it produces more than 9.5 million batteries per year under various brands (not only ‘AtlasBX’ but also others such as ‘Hankook’ ‘Alphaline’ ‘Aurora’, Koba’). This company (based in Korea) exports products to more than 130 countries around the world. The second article refers to an award given by General Motors in 2016 (‘Supplier of the Year’) and states that the company supplies their products to automobile manufacturers such as (the North American) General Motors, Tesla and (the Japanese) Nissan.

• Annex 8: extract from the opponent’s website showing a map and indicating the global distribution of the sales. According to this graphic, the exports to Europe represent 16% of their total sales.

• Annex 9: extract from the opponent’s website (printed on 05/12/2018), showing regional office contact information including a specific team for Europe.

• Annex 10: extracts from the opponent’s website referring to the presence of ‘AtlasBx’ in ‘Automechanika Frankfurt’ (the world’s leading trade fair for the automotive industry) in 2010, 2012 and 2016.

• Annex 11: catalogues from the opponent (dated 2017), giving information about the range of battery products, their characteristics and technical specifications. As the opponent states, there is a section for batteries for European vehicles.

Having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Despite showing some use of the earlier marks or at least a certain business activity in the European market by the opponent ‘AtlasBx’ (as a company or group and not necessarily in relation to the trade marks in question), the documents provide no information on the extent of use of the earlier marks to infer the market share or sales volumes of the opponent’s goods. Nor does the evidence provide indications of the degree of recognition of the trade mark by the relevant public. Other sorts of evidence would assist here. For example, the opponent could have filed a survey on the mark’s recognition or an array of supporting documentation such as declarations made by independent parties attesting as to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards (won within the territory), invoices and other commercial documents, audits and inspections, etc.

Some evidence refers to general figures or information (annexes 6, 7 and 8), inter alia, that the opponent owns ‘the sixth largest battery manufacturer in the world’, that it produces ‘more than 9.5 million batteries per year’ and that the European market represents 16% of its sales. However, this information does not relate directly to the earlier marks but to the opponent’s activity. For instance, as indicated in the evidence, within these figures the sale of batteries under other brands (e.g. ‘Hankook’, ‘Alphaline’, ‘Aurora’ or Koba’) is included. Secondly, the figures are not supported by any solid or objective evidence (e.g. invoices) allowing them to be linked to specific territories within the European Union (the earlier marks are registered at national level), to infer a minimum extent of use in the relevant territories, or to put its activity into context with its competitors and allow for an analysis of the market. It also indicates that the company supplies their products to prestigious automobile manufacturers such as General Motors, Tesla and Nissan. However, this information cannot be associated with the relevant territories. Quite the opposite, these companies are originally from, or have their main manufacturing plants, outside the European Union.

As regards annex 9 (the attendance in trade fairs), this is not a valuable indicator of recognition but rather a normal activity for any company in the market in order to show its products, meet with industry partners and customers and expand its market. Therefore, this piece of evidence and also the following annex 10 (catalogues with specific batteries for European cars) only shows its presence (or attempt at entering) in the European market.

The Court has concluded that reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned for the goods or services covered by that trade mark (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34). The opponent was under the obligation to demonstrate the awareness of the trade marks, the intensity of use or the size of the investment made by the undertaking in promoting the mark. All these factors have to be taken into account in order to determine whether or not the mark concerned enjoys a reputation from the standpoint of the consumers targeted by the opponent.

Just as the finding of genuine use of a mark cannot be based on probabilities or suppositions but must be demonstrated by solid and objective evidence (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22, 12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47), by analogy the same criteria must apply with respect to evidence of purported reputation, for which the threshold is higher.

As a result, the evidence does not demonstrate the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected. Consequently it is not necessary to enter into the remaining conditions.

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

Irena LYUDMILOVA LECHEVA

Birgit FILTENBORG

Andrea VALISA

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.