OPPOSITION No B 3 066 603

Robert Seidl, Am Halbenstein 11, 6912 Hörbranz, Austria (opponent), represented by Patentanwaltskanzlei Dr. Riebling, Rennerle 10, 88131 Lindau, Germany (professional representative)

a g a i n s t

Alef One, 78 Avenue Marceau, 75008 Paris, France (applicant), represented by Legabrand, 41, rue Papety, 13007 Marseille, France (professional representative).

On 20/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 603 is partially upheld, namely for the following contested goods:

Class 9: Micro-processors.

2. European Union trade mark application No 17 874 406 is rejected for all the above goods. 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 of European Union trade mark application No 17 874 406 ‘ALEF ONE’, namely against all the goods in Class 9. The opposition is based European Union trade mark registration No 14 229 843 for the word mark ‘ALEF’. 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

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

Class 9: Conductor rails; busbars for electric switch cabinets; busbars for vehicles, in particular for rail vehicles; contacts, electric; current transmission contacts; terminal blocks (electrical connecting -); electric connections for meter boxes; electric pin and socket connectors; electrical fuses; fuse holders; current connection and distribution terminals, all the aforesaid goods in the field of high current electrical connection appliances and/or high power electrical transmission.

The contested goods are the following:

Class 9: Television apparatus; radios; cameras; audio and video cassettes; videotapes; recording discs, compact discs (audio and video), magnetic discs, optical discs, laser discs; floppy discs; terminals for telecommunications; facsimile machines, portable or mobile facsimile machines; video telephones; multimedia terminals; video game cartridges; games software; telephone cards; smart cards, cards with microprocessors; magnetic cards; identity cards, magnetic; computer software; software for downloading images, sounds and data, software for downloading electronic messages, with or without attached files; radio telephones including subscriptions, ready for use; software for providing access to computer or data transmission networks, in particular to a world-wide communications network (such as the internet) or private or restricted access networks (such as an intranet); computer database servers (software); screens, namely telephone screens, computer screens, television screens; electronic publications (downloadable); electronic images (downloadable); electronic cards providing access to telecommunications networks; compact discs [read-only memory]; DVD-roms; data processing and computer apparatus; video cassette recorder; DVD players; telephone cards, bank cards, credit card; cinematographic apparatus; cinematographic films; animated cartoons; cleaning apparatus for sound recording discs; radio transmitters (telecommunication); sound recording strips; sound recording apparatus; sound recording carriers; tape recorders; micro-processors; modems; computers; recorded computer programs; radiotelephony sets; recorded computer programs; telephone answering machines; data processing apparatus; apparatus enabling the downloading, reading and recording of digital files (sound and audiovisual); sunglasses; spectacles (optics); television recorders; software for interactive television.

The degree of similarity between the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the Opposition Division will proceed with the analysis of the similarity of the goods taking into account the well-known facts, the parties’ arguments (if submitted) and the Office’s practice as reflected in the Guidelines for Examination in the Office.

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 Canon criteria).

The opponent’s goods include a variety of electrical and electronic components (e.g. electrical fuses, fuse holders and electric contacts) which can be generally described as devices or physical entities in an electronic system used to affect electrons or their associated fields. The main function of these goods is conducting, switching and controlling electricity. Moreover, some of these goods are related to specific fields (e.g. conductor rails; busbars for vehicles, in particular for rail vehicles; current connection and distribution terminals, all the aforesaid goods in the field of high current electrical connection appliances and/or high power electrical transmission).

The contested micro-processors are electrical circuit boards which mechanically support and electrically connect electronic components. They have a similar nature to some of the aforementioned opponent’s goods (e.g. electrical fuses) since they are, broadly speaking, electronic components. They may be produced by the same undertakings and target the same relevant public through the same distribution channels. Moreover, some of them may be complementary. Therefore, they are at least similar to a low degree.

The remaining goods include a variety of goods which can be included in the following categories: audio-visual and photographic devices (e.g. television apparatus, DVD players and cameras), data processing equipment and accessories (e.g. data processing and computer apparatus), communications equipment (e.g. terminals for telecommunications and radio transmitters), recorded content (e.g. games software and animated cartoons), data storage device and media (e.g. videotapes and DVD-roms) and optical devices and correctors (e.g. sunglasses and spectacles). According to the opponent, these goods should be found similar because they all belong to the field of electrical engineering, electronics and information technology, and have the same channels of distribution and manufacturers. However, no cogent line of reasoning or further evidence have been put forward to support this argument. None of the contested goods coincide in any sufficiently relevant points of contact when comparing them to the goods of the earlier mark, which are various types of specific electronic components. Not only do they differ in nature, purpose and methods of use but they are neither in competition nor complementary. Furthermore, the goods do not target the same relevant public since they satisfy different needs, they do not share the same distribution channels and are not usually manufactured by the same undertakings.

Moreover, the fact that some of the contested electric goods may me composed of some of the opponent’s electronic components is not sufficient to render them similar. A certain product can be composed of several components; however, it does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, are present. Such an exception is based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts, which is not the situation in this case. Therefore, even if some electronic components such as electric pin and socket connectors; electrical fuses may be used as a component part in the production of at least some of the contested goods, such as television apparatus; computers, they are unlikely to be sold as regular spare or replacement parts of such goods that target the same purchasing public. Furthermore, and in the absence of any evidence to the contrary, it is unlikely that the contested goods would be produced by the same undertakings as those producing the opponent’s goods, despite being electronic components/devices. Indeed, some of the contested goods normally target the producers of the opponent’s goods and not the general public. Consequently, the remaining services are dissimilar to the opponent’s goods.

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 at issue are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

ALEF	ALEF ONE
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 word element included in both signs, ‘ALEF’, will be perceived as a meaningless fanciful word by the majority of the public even if, as the applicant states, it may refer to the transliteration of the first letter of the Semitic abjads (‘א’) since, generally, the consumers in the relevant territory are not familiar with this alphabet/language. Therefore, it has an average degree of distinctiveness.

The word ‘ONE’ of the contested sign will be perceived throughout the European Union as ‘single, only, the numeral 1’ (information extracted from Collins English Dictionary on 10/11/2019 at https://www.collinsdictionary.com/dictionary/english/one_1) since it is a basic English word. This element has little distinguishing significance since it may either be seen as a number referring, for instance, to the specific product line or version (see further explanations in the global assessment below) or as an allusion to the quality of the relevant products. It is quite common to use an expression such as ‘number 1’ to refer to something of a high quality in a fashionable way and, therefore, it may convey certain positive connotations. Moreover, this element is placed at the end of the contested sign and consequently its impact within the overall impression will be lesser. 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 and aurally, the signs coincide in the letters and sound of the distinctive word ‘ALEF’, which constitutes the entire earlier mark and the first word of the contested sign. They differ only in the word and pronunciation of the second element of the contested sign, ‘ONE’, which has a lesser impact for the reasons explained above.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the element of the contested sign, ‘ONE’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, this difference will have a limited impact due to the little trade mark significance of the word ‘ONE’.

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 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 contested goods are partly similar (to at least a low degree) and partly dissimilar, and they target the professional public. The degree of attention ranges from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to at least an average degree and conceptually not similar. The contested sign entirely reproduces the (distinctive) earlier mark as its first element, to which consumers attach more importance. Therefore, the presence of the additional word ‘ONE’, which has little trade mark significance is clearly not sufficient to counterbalance the commonalities between the signs and exclude a likelihood of confusion.

Additionally, given the partial identity between the signs, it is likely that consumers will perceive the differing word ‘ONE’ of contested sign as a version of the earlier mark (e.g. according to a given product line). 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 by adding verbal or figurative elements, to denote a new product. Therefore, the likelihood that the public may associate the signs with each other is very real.

Moreover, 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 similarity between the signs is sufficient to outweigh the — at least — low degree of similarity between some of the goods.

Finally, 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).

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 European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to at least a low degree to those of the earlier trade mark.

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.

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

Riccardo RAPONI

Birgit FILTENBORG

Francesca CANGERI

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.