OPPOSITION No B 3 087 624

Espa 2025, S.L., Carretera de Mieres, s/n, 17820 Banyoles, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Psidac AB, Bodarnevägen 37, 82532 Iggesund, Sweden (applicant).

On 30/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 624 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 031 200 ‘GasLite’ (word). The opposition is based on (i) European Union trade mark registration No 2 608 081 ‘GASLI TECNICS’ (word), (ii) European Union trade mark registration No 2 807 147 (figurative) and (iii) Spanish trade mark registration No 822 767 (figurative). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested proof of use of the earlier European Union trade mark registration No 2 807 147. However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 2 608 081.

a) The goods

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

Class 9: Manometers, thermometers, barometers and apparatus for controlling gases and liquids.

The contested goods are the following:

Class 9: Safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers.

The applicant makes reference to the opponent’s website and states that there are no similar products to those of the applicant. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and the case‑law cited therein). Therefore, the argument raised by the applicant is irrelevant.

Some of the contested goods are identical (e.g. the contested measuring instruments include, as a broader category, the opponent’s thermometers) or similar (e.g. the contested safety and protection devices are similar to a low degree to the opponent’s apparatus for controlling gas and liquids) 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 price, sophistication, or terms and conditions of the goods purchased.

c) The signs

GASLI TECNICS	GasLite
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).

Both signs are words marks. However, in the case of the contested sign, the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’) and this aspect must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration. The perception of the relevant public, who will not fail to notice the use of irregular capitalization, also cannot be disregarded.

Irregular capitalization may have an impact on how the public perceives the sign, and consequently, on the assessment of similarity. The impact of irregular capitalisation on the comparison of signs is assessed on a case-by-case basis.

In this regard, the presence of an upper‑case letter ‘L’ in the middle of the contested sign will lead the relevant public to perceive two components, namely ‘Gas’ and ‘Lite’, which are meaningful English words.

The component ‘Gas’ refers to a substance like air that is neither liquid nor solid and burns easily. The same word exists as such or has a similar equivalent word at least in a substantial part of the relevant territory (e.g. ‘Gas’ in German, ‘gas’ in Italian and Spanish, ‘gás’ in Portuguese, ‘gaz’ in French, Polish and Romanian, ‘gaas’ in Estonian, ‘gáz’ in Hungarian, газ [gaz] in Bulgarian, etc.). Since the goods in question are safety, security, protection and signalling devices; measuring, detecting and monitoring instruments, indicators and controllers, the component ‘Gas’ could be linked to them in the sense that those devices, inter alia, detect, measure or monitor the presence of gas. Therefore, the component ‘Gas’ is weak for this part of the relevant public. To the extent there are relevant parts of the public that will see ‘GAS’ as meaningless, the element is distinctive for them.

The component ‘Lite’ is an English adjective that means ‘light’ (i.e. ‘denoting a more restrained or less extreme version of a thing’, according to Collins English dictionary). Therefore, at least the English‑speaking part of the relevant public will see this component as alluding to some characteristics of the goods in question and, therefore, it is weak. The remaining part of the relevant public for which this component is meaningless, it is distinctive.

The element ‘GASLI’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘TECNICS’ of the earlier mark will be associated by the relevant public to the concepts of ‘technics/technology’, as this word has very similar equivalent words in the languages of the relevant territory. Since the meanings linked to this element have direct connotations in relation to the characteristics of the goods in question, being measuring devices and apparatus for controlling gases or liquids, this element is weak.

As the signs are word marks, there is no dominant element because, by definition, word marks are written in standard typeface, this contrary to the opponent’s argument that the dominant element of the earlier mark is ‘GASLI’.

Visually, the signs coincide in the string of letters ‘GASLI*’, which is the first element of the earlier mark and the beginning of the contested sign. The signs differ in the remaining letters of the contested sign, ‘*TE’, and in the second element of the earlier mark, ‘TECNICS’.

Nevertheless, as explained above, the contested sign will be clearly perceived as composed of two components, namely ‘Gas’ and ‘Lite’. In this sense, account is taken of the fact that the first verbal element of the earlier mark, ‘GASLI’, will be perceived as a unique term, that the relevant public has no reasons to break down into elements, including, inter alia, to ‘GAS’ and ‘LI’. Moreover, the word is considerably short – five letters only, and this will further make the public focus on the word as a whole and not look for sub-elements in it (12/07/2019, T‑792/19, MANDO, EU:T:2019:533, § 63 and the case-law cited).

Furthermore, even if the last two letters of the contested sign, ‘*TE’, are the first two letters of the second element of the earlier mark, it is not considered likely that this coincidence is noticed at all by consumers.

It is acknowledged that when confronted with a sign, consumers do not proceed into a detailed analysis dissecting possible components, counting letters or similar.

Therefore, taking into account the above considerations, the signs are visually similar to a low degree.

Aurally, for a part of the public, the signs coincide in the sound of the letters ‘GASLI*’, which is the first element of the earlier mark and the beginning of the contested sign. Again, the final letters ‘TE’ in the earlier mark and the first letters ‘TE’ of the second word in the contested sign will be pronounced as the same sounds by a part of the public. However, the earlier sign will be pronounced as composed of the two words ‘GASLI’ and ‘TECNICS’, while the contested sign - of the two words ‘GAS’ and ‘LITE’, where a pause would mark the separate elements. Hence, it is considered that the signs have quite different rhythms and intonations.

Therefore, even for the public that will pronounce the string of letters G A S L I T E with identical sounds, on account of the different structure and rhythm, the signs are aurally similar to a low degree only. The similarities for those who pronounce these letters with differing sounds, due to the different word configuration they are part of, are even more remote.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

In particular, a part of the relevant public will perceive the meaning of the element ‘TECNICS’ of the earlier mark as explained above, whereas the contested sign has no meaning. For this part of the relevant public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the relevant public that will perceive the meaning of the element ‘TECNICS’ of the earlier mark, as explained above, and the meaning(s) of the component(s) ‘Gas’ and/or ‘Lite’ of the contested sign, as the signs will be associated with dissimilar meanings, the signs are conceptually not similar.

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 claimed that there is a risk to suffer reputational damages due to the use of the contested goods, which could cause a dilution of the earlier mark’s reputation and value. This argument can be interpreted as a claim of enhanced distinctiveness. However, the opponent did not file any evidence in order to prove such a claim.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

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 which 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).

In the present case, the goods have been assumed to be identical. They target the public at large and business customers with a degree of attention that varies from average to high.

The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a low degree, as they have different structures, lengths, rhythms and intonations. The opponent claims that the element ‘GASLI’ of the earlier mark is totally included in the contested sign. Indeed, although the signs coincide in their beginnings, the coinciding letters constitute a sole word element in the earlier mark, whereas they belong to separate components perceived in the contested sign, namely ‘Gas’ and ‘Lite’. Furthermore, the element ‘GASLI’ is meaningless for the entire relevant public, whereas a significant part of the relevant public will understand the meaning of ‘Gas’ (and even the meaning of ‘Lite’, for instance, the English‑speaking part of the public). In addition, the signs are conceptually not similar, as explained above in section c) of the present decision.

The opponent also claims that the letters ‘*TE’ at the end of the contested sign coincide with the first letters of the second element in the earlier mark, ‘TECNICS’. However, these coincidences can only be determined after a closer examination between the signs.

The average consumer showing an average level of attention is not prone to closer inspection of the composition of the signs and/or the signs’ elements. Assuming the contrary does not reflect the market reality and the cognitive process of perception and does not comport with the principles developed by the Courts regarding the objective evaluation of similarity between signs from the perspective of the average consumer, who normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). The same conclusion can be reached as regards professionals and even where a high degree of attention is paid in respect of some of the goods in question.

The Opposition Division considers there are no reasons that will prompt the consumers to dissect ‘GASLI’ in the earlier mark, so that a coinciding component ‘GAS’ is seen. On the contrary, the public would perceive it as a fanciful indivisible unit. For the same reasons, it is not likely that the coincidence in the last two letters of ‘GASLI’ and the first two letters of ‘LITE’, nor of the first two letters of the element ‘TECNICS’ of the earlier mark and the two letters at the end of the contested sign’s ‘LITE’. In order to notice these coincidences, the consumer should imply efforts that are not normally made when perceiving a sign, comparing them side by side – something that again is not the market reality.

In conclusion, even though all letters of the contested mark are reproduced in the earlier one, this by itself is not sufficient for the consumers to actually identifying this coincidence (12/11/2009, T‑438/07, SpagO , EU:T:2009:434, § 35). On the contrary, since the coinciding letters are structured in different verbal elements, the coincidence is likely to remain hidden.

The opponent refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs, mainly because of the different structures of the signs, as explained above.

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

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

 European Union trade mark registration No 2 807 147 (figurative), for goods in Class 9;

 Spanish trade mark registration No 822 767 (figurative), for goods in Class 9.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain some figurative elements, which are not present in the contested sign and the same verbal element ‘GASLI’, analysed above. Therefore, the outcome cannot be different on the basis of these earlier rights; no likelihood of confusion exists with respect to them.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Marta GARCÍA COLLADO

Teodora TSENOVA‑PETROVA

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.