OPPOSITION No B 3 058 026

Iper Montebello S.p.A., Via Ponchielli 7, 20129 Milano, Italy (opponent), represented by Bugnion S.p.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

WATT and VOLT ΑΝΩΝΥΜΗ ΕΤΑΙΡΕΙΑ ΕΚΜΕΤΑΛΛΕΥΣΗΣ ΕΝΑΛΛΑΚΤΙΚΩΝ ΜΟΡΦΩΝ ΕΝΕΡΓΕΙΑΣ, ΛΕΩΦΟΡΟΣ ΚΗΦΙΣΙΑΣ 217^Α, 15124 ΜΑΡΟΥΣΙ, Greece (applicant), represented by Themos Stravolaimos, 37 Armatolon & Klefton Str, 11471 Athens, Greece (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 026 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 895 016 for the figurative mark . . The opposition is based on Italian trade mark registration No 2 016 000 014 971 for the word mark ‘VOLT & WATT’. 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 9: Electrical and electronic equipment, in particular: voltmeters, ammeters, galvanometers, electrical capacity meters, electrical and electromechanical switches, electric cables, electric windings, electrical switches, capacitors, electrical conductors, electrical connections, alternators, current rectifiers, antennas, lightning rods , batteries, packs of batteries, batteries, accumulators, rechargeable batteries, solar batteries, battery chargers, buzzers, buzzers, electrically operated bells, welding apparatus and accessories, fuses, magnets, electrical sockets, "power strip" sockets, socket adapters electric, extensions.

Class 11: Lighting, heating, steam generating, cooking, refrigerating, drying, ventilating apparatus; bulbs, in particular arc or luminescence or gas discharge.

The contested goods and services are the following:

• 9Charging stations for electric vehicles.

• 39Supply of electricity; Electricity distribution; Public utility services in the nature of electricity distribution; Distribution of gas; Gas supplying [distribution]; Public utility services in the nature of natural gas distribution.

• 9Charging stations for electric vehicles.

• 39Supply of electricity; Electricity distribution; Public utility services in the nature of electricity distribution; Distribution of gas; Gas supplying [distribution]; Public utility services in the nature of natural gas distribution.

• 9Charging stations for electric vehicles.

• 39Supply of electricity; Electricity distribution; Public utility services in the nature of electricity distribution; Distribution of gas; Gas supplying [distribution]; Public utility services in the nature of natural gas distribution.

Class 11: Charging stations for electric vehicles.

Class 39: Supply of electricity; electricity distribution; public utility services in the nature of electricity distribution; distribution of gas; gas supplying [distribution]; public utility services in the nature of natural gas distribution.

Some of the contested goods and services are identical or similar to the goods on which the opposition is based, for example the contested charging stations for electric vehicles in Class 9 overlap with, or are at least highly similar to, the opponent’s broad category of battery chargers in the same Class. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to the goods of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are partly directed at the public at large and partly at business customers with specific professional knowledge or expertise, e.g. in the field of electricity or in the field of welding (e.g. voltmeters or welding apparatus and accessories, in Class 9).

The degree of attention may vary from average to high, depending, inter alia, on the specialised nature of the goods, the frequency of purchase and their price, or the terms and conditions of the goods and services purchased.

3. The signs

VOLT & WATT
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 word mark, consisting of the terms ‘VOLT & WATT’.

The coinciding term ‘VOLT’ is immediately understood by the relevant public as the derived unit for electric potential, electric potential difference (voltage), and electromotive force. ‘Volt’ is a part of the international system of units (SI). As such ‘VOLT’ is commonly used; it is thus devoid of distinctiveness in relation to all the goods and services at issue, which all relate to electricity or creating electricity.

The same goes for the coinciding term ‘WATT’, a unit of power, defined in the international system of units (SI) as a derived unit of 1 joule per second and commonly used to quantify the rate of energy transfer. Therefore, this term per se is likewise non-distinctive in relation to the goods and services under comparison.

The remaining element of the earlier mark, the ampersand (‘&’) is not particularly distinctive either, representing the mere conjunction, with the meaning of ‘and’, of the preceding and following terms, ‘VOLT’ and ‘WATT’ (cf. e.g. 31/08/2015, R 3271/2014-2, HILL & VALLEY (FIG.) / HILL VALLEY, § 69).

Nonetheless, when assessing the distinctiveness of the earlier mark as a whole, account must be taken of the fact that in accordance with the judgment of the Court C-196/11P, F1-LIVE, when assessing likelihood of confusion ‘the validity of earlier registered marks may not be called into question’. Therefore, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of an EUTM is based (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40 and 47). It is therefore considered that, as a whole, the earlier mark reaches the minimum degree of inherent distinctiveness.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It will be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The contested sign is a figurative mark, containing the same terms (but in reversed order), ‘WATT’ and ‘VOLT’ depicted in a grey bold font, in the middle of which is depicted a plus sign (‘+’) in orange; the terms are preceded by a figurative device in grey and orange colour, containing the stylised letters ‘w’ and ‘v’ against the background of an orange circle. This figurative device could also be seen as the acronym ‘WV’ (referring to WATT and VOLT) in a stylised representation. Underneath the verbal component ‘WATT + VOLT’ are depicted, albeit in a minor size, the verbal elements, ‘PEYMA’ and ‘AEPIO’ in grey, divided by an orange vertical line.

For the sake of completeness, it is mentioned that the contested sign includes the registered trade mark symbol, ®. However, this is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. In addition, it is depicted in such a small size that it is barely perceptible. Consequently, it will not be taken into consideration for the purposes of comparison.

The distinctiveness of the terms ‘WATT’ and ‘VOLT’ in the contested sign is as above; the symbol ‘+’, present in the contested sign, will be most likely associated with the mathematical sign for addition or augmentation corresponding to the term ‘plus’, and may be perceived in relation to the goods in question as an augmenting element in that it generally indicates an additional value or quantity). In other words, it conveys an indefinite positive message of ‘something more’ (cf., per analogy, 03/03/2010, T-321/07, EU:T:2010:64, A+, § 41-42; 12/12/2014, T-591/13, News+, EU:T:2014:1074, § 29). Furthermore, this symbol is frequently used in the course of trade. Therefore, its inherent distinctiveness is deemed to be low.

The verbal elements ‘PEYMA’ and ‘AEPIO’ are both meaningless in the territory of interest; however, although thus of normal distinctiveness, they are depicted in a small size (as well as below ‘WATT’ and ‘VOLT’), so that they are less visually eye-catching than the remaining elements (the figurative device containing ‘WV’ and the verbal component ‘WATT + VOLT’) that are clearly the co-dominant elements in the contested application.

As regards the figurative device containing the letters ‘WV’, it is not devoid of distinctiveness, whether it will be immediately perceived as a stylised (and normally distinctive) acronym ‘WV’ or as an abstract figurative device, as detailed above. However, if perceived as in the first scenario, namely as the stylised acronym, this will have more impact than the remaining figurative aspects: this is because 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. The reason for this is that 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). Therefore, either the acronym will have more impact than the remaining figurative elements, or it will be seen as a figurative device itself and thus of less impact than the verbal, distinctive, elements, as well.

Visually, the signs coincide in the non-distinctive terms ‘VOLT’ and ‘WATT’ (albeit placed in the reverse order) and in that there is one character placed between them (‘&’ and ‘+’), as a conjunction. However, they differ in this respective middle element (conjunction) element, albeit of low distinctiveness, as seen above. In addition, the signs differ in the contested sign’s additional verbal elements ‘PEYMA’ and ‘AEPIO’ , that are of normal distinctiveness (albeit less visually eye-catching) and, where perceived, the acronym ‘WV’, as well as in the additional figurative aspects of the contested sign (albeit of less impact as seen above). Considering that the marks in substance coincide in non-distinctive elements (in addition placed in a different order) and taking into account their different additional verbal and figurative elements – which are not devoid of distinctiveness -, the signs are visually only similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the (non-distinctive terms) ‛ VOLT’ and ‘WATT’, present in both signs albeit in a different order. Furthermore, the signs differ in the sound of the pronunciation of ‘&’ (and, in Italian pronounced as ‘e’) and ‘+’ (plus, in Italian ‘più’), even if of reduced distinctiveness (as seen above), as well as, if as such perceived (and then of normal distinctiveness), in the pronunciation of the acronym ‘WV’ and of the additional terms ‘`PEYMA’ and ‘AEPIO’ (of normal distinctiveness, although less visually eye-catching, as detailed above).

Therefore, the signs are, at most, aurally similar to a very low degree.

Conceptually, although the coinciding words VOLT’ and ‘WATT’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as these terms are non-distinctive per se and cannot, as such, indicate the commercial origin of any of the goods and services covered by the signs. The symbols of ‘&’ and ‘+’ are of reduced distinctiveness, but both may refer to a (very weak but) similar concept of a conjunction or addition: to this extent the signs can be held conceptually similar to a very low degree, at most. To the extent that all the contested sign’s remaining additional elements will not be associated with any meaning, however, the signs do not have any conceptual similarities.

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 enjoys any enhanced distinctiveness by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as very low for all the goods and services in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous factors and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

As has been concluded above, the contested goods and services are assumed to be identical to the goods of the earlier mark. The goods and services are partly directed at the public at large and partly at professionals, with a degree of attention that will vary from average to high. Furthermore, the earlier mark is considered to enjoy a very low (the minimal) degree of distinctiveness. Additionally, the marks in dispute have been found visually similar only to a low degree and aurally similar to, at best, a very low degree only. Conceptually, the signs are similar to, at most, a very low degree only, and this to the mere extent that their symbols (‘&’ versus ‘+’) of moreover very reduced distinctiveness, may refer to a similar concept; as for their remaining elements, on the other hand, the signs do not have any conceptual similarities.

A finding that an earlier trade mark has a very low (minimal) degree of distinctiveness may have a different impact on the likelihood of confusion. In general, this finding is an argument against likelihood of confusion. It must however be balanced with the other factors, like the degree of similarity of the signs and the goods or services, as well as the level of attention and sophistication of the relevant public.

While it is acknowledged that the two terms of the earlier word mark (in which they are connected by an ampersand, which is of reduced distinctiveness) are comprised in the contested sign (although in a reverse order, and connected by the plus symbol) in which they are also co-dominant, however, these terms as such are non-distinctive, per se. The distinctiveness of the earlier mark is minimal and only protected as a whole, limited to the particular form and representation in which, and the additional elements with which, it is depicted.

The conflicting signs show relevant visual and aural differences on account of the different elements, which are in any event not devoid of distinctiveness (some of normal distinctiveness and one of them co-dominant) in the contested sign, as explained above. Consumers, even average consumers, who are reasonably well-informed and reasonably observant and circumspect are deemed to be aware that ‘watt’ and ‘volt’ are commonly used and directly descriptive of a characteristic of the goods/services at issue. Consequently, they would not be surprised to see these elements in trade marks of various economic operators other than the opponent. Therefore, and given the purely descriptive functions of ‘WATT’ and ‘VOLT’ within the signs, as well as in the absence of any enhanced distinctiveness attributable to the earlier mark, there is no likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, even if the marks were used for identical goods and services.

It is indeed settled case law that if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (see in this context, for example, the decisions of the Boards of Appeal of 18/03/2002, R 0814/2001-3, ‘ALL-DAY AQUA / Krüger All Days’, § 50 and of 14/05/2001, R 0257/2000-4, ‘ e plus / PLUS’, § 22). Such differences decrease the likelihood of confusion between the conflicting trade marks.

Even assuming identity of the goods and services, considering the total lack of distinctiveness of the coinciding terms, as well as the minimal distinctiveness of the earlier mark, the overall degree of similarity between the signs is considered very low due to the differences resulting from additional and more, or fully, distinctive elements, as detailed above, in the signs under comparison, that will be perceived visually, phonetically and (albeit to a minor extent) conceptually and which have to be given more importance in the overall assessment (per analogy, see e.g. 13/05/2015, T-102/14, POST /TPG POST, ECLI:EU:T:2015:279, § 61 and 68).

In light of all the foregoing, there is no likelihood of confusion on the part of the average public with an average degree of attention, even in the most advantageous scenario for the opponent (where the figurative device will not be seen as a stylised acronym, ‘WV’ but a mere abstract figurative device, with less impact) and not even assuming the identity of the goods/services. Therefore, the opposition must be rejected. This finding is equally applicable to the other less advantageous scenarios for the opponent’s case as well as for the remaining parts of the public that is professional and/or that has a higher degree of attention so that it is even less prone to confusion and a likelihood of confusion, including a likelihood of association, is even less probable to exist.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI

Edith VAN DEN EEDE

Justyna GBYL

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.