OPPOSITION No B 3 067 652

Conrad Electronic SE, Klaus-Conrad-Str. 1, 92240, Hirschau, Germany (opponent), represented by Stippl Patentanwälte, Freiligrathstr. 7a, 90482 Nürnberg, Germany (professional representative)

a g a i n s t

Corahb Autodíly S.R.O., Tiskařská 599/12, Malešice, Stazap Business Park, C 1.14,108 00 Praha 10, Czech Republic (applicant), represented by Dušan Mičica, Sladkovského 410, 530 02 Pardubice, Czech Republic (professional representative).

On 12/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 652 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 of European Union trade mark application No 17 934 823, .The opposition is based on, inter alia, European Union trade mark registration No 446 088, VOLTCRAFT. 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 European Union trade mark registration No 446 088.

a) The goods

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

Class 7: Electric small-size motors and small electrically driven pumps.

Class 9: Electric, electronic and optoelectronic components, in particular resistors, potentiometers, adjustable and sliding regulators, capacitors, adjustable capacitors, dimmer resistors, coils and coil elements for electric and electronic circuit boards, ferrite and iron cores, diodes, transistors, thyristors and triacs, integrated circuit boards and switching circuits, temperature and light dependent resistors, photo and lamp diodes, photo transistors, rectifiers, dissipaters for electric, electronic and optoelectronic components, commutators, modulators, relays, transformers and transmitters, safety fuses, mounts and holders for electric and electronic or optoelectronic components, connectors, bushes and pin and socket connectors for electric and electronic commutators and equipment; electric and electronic components for solar technology and components for laser technology (included in Class 9); electric and electronic equipment and installations composed thereof, namely television sets, radio sets, tuners, electric amplifiers, mixing amplifiers, reverberation equipment, mixing desks, equalizers, phonograph players, phonograph changers and phonograph chassis; sound recording and reproduction apparatus, cassette recorders, tape recorders, microphones, head phones, loudspeaker boxes, loudspeaker chassis, loudspeakers, crossover networks, video apparatus, video recorders, video text equipment, CB radio sets (hand, mobile and fixed apparatus), amateur radio transmission and receiver sets, service radio transmission and receiver sets, radio amplifiers; model-making electronics, namely transmission and receiver sets for remote control and units thereof, switching and control circuits for models, electronic switching circuits for flashing lights for models, electronic noise generators; electronic amusement apparatus, including that adapted for use with television receivers, adjustable and non-adjustable mains apparatus, in particular including low voltage apparatus, charging apparatus for batteries, television sound transponders and adapters, electric and electronic alarm devices and installations and accessories therefor, namely optical and acoustic signal transmitters, acoustic sensors (ultrasound movement indicators), optical sensors and light barriers, electromechanical sensors (door and window contacts, vibration contacts for windows and doors), micro computers, assemblies and kits for all aforesaid apparatus, included in Class 9; radio and television aerials, room aerials, car aerials, amateur radio and CB radio aerials, including being mobile aerials and fixed aerials, electric and electronic aerial accessories, namely aerial amplifiers, aerial crossover networks, cables for aerials, level regulators and distributors for aerials, aerial sockets, moving loads for aerial lines, bushes, connectors and adapters for aerials, baluns for aerials, co-axial commutators and relays, mains apparatus for aerial amplifiers and rotors for aerials; mechanical aerial accessories, namely aerial masts, bearings for rotating aerials, mechanical fastening elements for aerials and aerial masts, in particular including fastening elements for fastening mobile aerials to automobiles, mast casings and mast holders for securing aerial amplifiers and crossover networks; electrical installation material, dimmer switches for electric room lighting, mains pin and socket connectors, in particular plugs and sockets, electric lines, wires and flex, batteries and accumulators, timer switches, intercom installations, consisting of external and internal speaker stations and, if required, including change-over switches, supply units, amplifiers and video apparatus; electric and electronic demonstration boxes, consisting of electric and electronic components and structural components; electronic desktop and pocket calculators and computers, PCs, printers, scanners, screens, hard disks, CD-ROM drives, floppy disk drives, keyboards, mice, computer cards, in particular graphics cards, memory cards, modems and computer installations composed thereof, computer pin and socket connectors; computer software, in particular computer programs stored on data carriers; electronic and mechanical voltage testers, electronic metal-detecting equipment, electric soldering irons and electric soldering stations, consisting of soldering irons and electric supply and control apparatus for soldering irons; telecommunications equipment, in particular telephones, telephone answering machines, fax machines, telex machines, modems, mobile phones, telephone accessories; electric, electronic and electromechanical measuring devices, in particular built-in measuring instruments, and multiple measuring devices, digital-display multiple measuring devices, oscillographs, ondoscopes, frequency counters.

Class 11: Ventilators and fans, lamps and lamp sockets, low voltage neon-glow lamps and filament lamps.

The contested goods are the following:

Class 9 : Apparatus, instruments and cables for electricity.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and 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.

c) The signs

VOLTCRAFT
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 Opposition Division will first examine the opposition in relation to the German-speaking part of the public that understands the English word ‘FORCE’. This is the most advantageous scenario for the opponent, since the elements ‘CRAFT’ and ‘FORCE’ will have a conceptual link. Furthermore, the opponent requested this focus.

The earlier mark is a word mark and therefore only the word as such is protected. Consequently, it does not have dominant elements.

The contested sign is a figurative mark consisting of the verbal element ‘VOLTFORCE’ depicted in standard blue upper-case letters. At the beginning of the sign, there is a figurative element consisting of a blue outline in the shape of a trapezium, inside of which is an orange element resembling a flash with a fist at the end. This figurative element is considered sufficiently fanciful to be of an average degree of distinctiveness in relation to all the goods in question. The contested sign has no element that could be considered clearly more dominant than other elements.

The common element ‘VOLT’ will be understood as a unit used to measure the force of an electric current (information extracted from Duden on 28/11/2019 from https://www.duden.de/suchen/dudenonline/volt). This element is commonly used in relation to the relevant goods, which are related to apparatus for electricity, and is therefore non-distinctive.

The verbal element ‘FORCE’ of the contested sign is an English word and will be understood by the relevant public as a powerful effect or influence. The element ‘CRAFT’ of the earlier mark will be associated with the German word ‘KRAFT’ as they are aurally identical. ‘KRAFT’ is the German equivalent of the English word ‘FORCE’. These elements are laudatory regarding the result of the use of the relevant goods, as they indicate strong electrical conduction and potent functioning. ‘FORCE’ is an English word and ‘CRAFT’ is misspelled; therefore, the relationship with the goods is not immediate and clear but requires a degree of mental effort. Therefore, these elements are weak but cannot be considered non-distinctive.

Visually and aurally, the signs coincide in the first and non-distinctive element ‘VOLT’ and differ in their endings ‘CRAFT’ and ‘FORCE’, which have a higher degree of distinctiveness. Visually, they also differ in the contested sign’s use of blue lettering in the verbal element and its figurative element. Therefore, visually and aurally the signs are, at most, similar to a low degree, as their only coincidence is in the non-distinctive element ‘VOLT’.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the second and weak elements ‘CRAFT’ and ‘FORCE’ will be associated with the meaning explained above. However, as the word ‘FORCE’ is in English and ‘CRAFT’ will be considered a misspelling by the relevant German consumer, this association is not immediately clear. Therefore, the signs are conceptually similar at most to a low degree. The element ‘VOLT’, included in both signs, is non-distinctive and therefore does not have an impact on the conceptual assessment.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) Global assessment, other arguments and conclusion

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 or economically linked undertakings.

The signs are visually and aurally at most similar to a low degree, as they only coincide in the common non-distinctive element ‘VOLT’. Although a conceptual connection between ‘CRAFT’ and ‘FORCE’ cannot be excluded for the German part of the public that speaks English, this association is weak, for the reasons explained in section c) of the present decision. Furthermore, these elements are weak.

Moreover, the signs differ in the figurative element present in the beginning of the contested sign.

On the whole, the differences between the signs’ more distinctive elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common elements are non-distinctive for the relevant public.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the German-speaking public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion applies equally to the remaining relevant public, as they will either understand only ‘CRAFT’, only ‘FORCE’, or neither. For this public the signs will coincide only in the non-distinctive element ‘VOLT’ and there will be no conceptual connection between ‘CRAFT’ and ‘FORCE’. Therefore, for this part of the public the signs are even farther apart in the consumer’s mind.

The opponent has also based its opposition on the following earlier trade marks:

 German trade mark registration No 1 037 154 for the word mark VOLTCRAFT.

 European trade mark registration No 3 248 325 for the figurative mark

Since these marks are identical or contain the same verbal element (with additional figurative elements of a purely decorative nature) as the one that has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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 , 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

Justyna GBYL

Irena LYUDMILOVA LECHEVA

Maria SLAVOVA

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.