OPPOSITION No B 3 087 765

Alperia Smart Mobility S.r.l., Via Dodiciville 8, 39100 Bolzano, Italy (opponent), represented by Bruno Telchini, Via Cassa di Risparmio 3, 39100 Bolzano, Italy (professional representative)

a g a i n s t

Neogy, 11 avenue Henri Becquerel Parc d’Activité Kennedy, 33700 Merignac, France (applicant), represented by Ipside, 7-9 Allées Haussmann, 33300 Bordeaux, France (professional representative).

On 17/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 765 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 022 903 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 and services of European Union trade mark application No 18 022 903 for the word mark ‘NEOGY’. The opposition is based on Italian trade mark registration No 2 018 000 030 141 for the figurative mark . The opponent invoked Articles 8(1)(a) and (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.

a) The goods and services

The goods and services on which the opposition is, inter alia, based are the following:

Class 9: Charging stations for electric vehicles; encoded smart cards; computer programs and software for image processing used for cellular phones; electronic navigational, tracking and positioning apparatus and instruments; vehicle tracking devices; global positioning system [GPS] tracking and location devices; computer software; application software; software for computer telephony; computer software for wireless network communications; software for diagnostics and troubleshooting; electronic circuit boards; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Class 37: Vehicle battery charging; recharging services for electric vehicles; recharging of batteries and accumulators; installation of electrical apparatus or generators; installation of lighting apparatus; installation of communication equipment; electric appliance installation and repair; installation of machinery for generating electricity; installation of apparatus for generating power; installation of electric and electronic equipment in automobiles; installation of electric light and power systems; installation, maintenance and repair of electronic monitoring apparatus; installation, maintenance and repair of apparatus for supplying electricity; installation, maintenance and repair of apparatus for generating electricity; installation, construction, maintenance, servicing and repair of energy and power generating apparatus, equipment and installations.

Class 40: Rental of electricity generators; consultancy services relating to the generation of electrical energy; production of energy; consultancy in the field of energy generation; production of electrical energy from renewable sources.

The contested goods and services are the following:

Class 9: Batteries; battery cells; power distribution panels; solar panels; electrical energy converters; electric control devices for energy management; photovoltaic apparatus for converting solar radiation to electrical energy; machines and apparatus for energy distribution and control; photovoltaic modules; photovoltaic inverters; photovoltaic solar modules; accumulators for photovoltaic power; photovoltaic apparatus and installations for generating solar electricity; photovoltaic apparatus for converting solar radiation to electrical energy; solar modules; solar panel arrays; apparatus and instruments for exchanging, storing, transmission and collection of data in the energy field; computer software (recorded programs), and in particular software for managing home automation equipment; recorded computer programs; apparatus and instruments for analysing, conducting, switching, transforming, accumulating, regulating, monitoring or controlling the distribution of energy (fuel); apparatus and instruments for measuring and checking (supervision); electric monitoring apparatus for power supply networks; installations for switching electricity; accumulators, electric; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electricity saving device; measuring, signalling, checking (inspecting) and life-saving apparatus and instruments in the field of the distribution of electricity and energy; data processing apparatus, computers, computer peripheral devices, computer software; solar installations; photovoltaic installations; energy storage devices and installations; apparatus and installations for the processing and conditioning of energy.

Class 11: Electric candelabras; lighting fittings.

Class 40: Energy generation; production of energy from tidal, wind and solar energy; renting equipment for producing energy; technical consultancy relating to the production of solar energy; information relating to the treatment of biomass and energy production installations; consulting services relating to energy production; rental of installations for the production and distribution of energy.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 electric monitoring apparatus for power supply networks are included in the broad category of the opponent’s measuring, checking [supervision] apparatus and instruments. Therefore, they are identical.

The contested apparatus and instruments for measuring and checking (supervision); measuring, signalling, checking (inspecting) and life-saving apparatus and instruments in the field of the distribution of electricity and energy are identically contained in the list of the opponent’s goods or included in the broad category of the opponent’s measuring, signalling, checking [supervision], life-saving apparatus and instruments. Therefore, they are identical.

Computer software is identically contained in both lists of goods.

The contested computer software (recorded programs), and in particular software for managing home automation equipment; recorded computer programs are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested batteries; battery cells; power distribution panels; solar panels; electrical energy converters; electric control devices for energy management; photovoltaic apparatus for converting solar radiation to electrical energy; machines and apparatus for energy distribution and control; photovoltaic modules; photovoltaic inverters; photovoltaic solar modules; accumulators for photovoltaic power; photovoltaic apparatus and installations for generating solar electricity; photovoltaic apparatus for converting solar radiation to electrical energy; solar modules; solar panel arrays; installations for switching electricity; accumulators, electric; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electricity saving device; solar installations; photovoltaic installations; energy storage devices and installations; apparatus and installations for the processing and conditioning of energy are either identical or at least similar to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Some of the contested goods are identically contained in the list of the opponent’s goods, or they are included in a broad category of the opponent’s goods, for example the contested batteries are included in the opponent’s apparatus and instruments for accumulating electricity, and are therefore identical. If not identical, the contested goods are at least similar to each of the opponent’s broad categories, as all the goods coincide in distribution channels and target the same relevant public. Some also have the same nature and purpose, and are produced by the same undertakings. Others might be complementary.

The contested apparatus and instruments for exchanging, storing, transmission and collection of data in the energy field; data processing apparatus, computers; computer peripheral devices are apparatus and devices that need software in order to function properly since software consists of programs or other operating information needed in order for instructions to be received and actions performed. These goods are therefore at least similar to a low degree to the opponent’s computer software, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested apparatus and instruments for analysing, conducting, switching, transforming, accumulating, regulating, monitoring or controlling the distribution of energy (fuel) are at least similar to a low degree to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. These goods might have the same purpose, and they share the same distribution channels and target the same relevant public.

Contested goods in Class 11

The contested electric candelabras; lighting fittings are at least similar to a low degree to the opponent’s installation of lighting apparatus in Class 37.

The goods to which the opponent’s services in Class 37 relate are identical to the contested goods in Class 11. The services of installation of lighting apparatus in Class 37 ensure the proper functioning of the electric apparatus and electric light systems, including the contested electric candelabras and light fittings, in Class 11 and there is a complementarity between them (02/03/2018, R 1506/2017‑5, LEDKON (fig.) / LEDsON et al., § 33). Indeed, the key role of the services is to install these products or systems and ready for operation. To fulfil these objectives, the company rendering the service has to be well aware of how the products operate, and have readily available all the compatible materials needed for their operation. They are provided through the same distribution channels and target the same public. They also often share the same origin, since the companies that manufacture the goods also install them.

Contested services in Class 40

The contested energy generation; production of energy from tidal, wind and solar energy are synonymous to, or included in, the broad category of the opponent’s production of energy. Therefore, they are identical.

The contested technical consultancy relating to the production of solar energy; information relating to the treatment of biomass and energy production installations; consulting services relating to energy production are identical to at least one of the following services of the opponent: consultancy services relating to the generation of electrical energy; consultancy in the field of energy generation. The reason for finding identity between them is that either they are synonymous, or the contested services are covered by the broad category of the opponent’s services.

The contested renting equipment for producing energy; rental of installations for the production and distribution of energy are at least similar to the opponent’s rental of electricity generators. These services have the same nature, are offered by the same undertakings, through the same distribution channels and target the same relevant public.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large and at a professional public with specific knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. For example, the degree of attention for batteries in Class 9 will be average, while technical consultancy relating to the production of solar energy in Class 40 is a more infrequent sophisticated service, which will imply a high degree of attention.

c) The signs

	NEOGY
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 signs coincide fully in their sole verbal element ‘NEOGY’, which appears to have no meaning, and neither parties has adduced anything that would allow a different conclusion. It has a normal degree of distinctiveness. The only differentiating elements reside in the typeface of the earlier mark (although it is very close to standard upper-case letters) and the slight stylisation of the letter ‘O’ (formed by a discontinuous line), which are, however, of a decorative nature.

It follows that the signs are visually highly similar and aurally identical. The conceptual comparison remains neutral.

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 and services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and a professional public, and the degree of attention varies 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 goods are partly identical and partly similar (to varying degrees).

The signs are visually similar to a high degree and aurally identical. The conceptual comparison remains neutral.

There is a likelihood of confusion, even taking into account a high degree of attention, because the differences between the signs are confined to elements that will be perceived as decorative, namely the typeface and slight stylisation of the letter ‘O’ in the earlier mark. According to the interdependence principle mentioned above, the overall high degree of similarity between the signs counterbalances the low similarity between some of the goods and services, therefore, there is also a likelihood of confusion with respect to those goods and services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

Chantal VAN RIEL

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.