OPPOSITION No B 3 090 109

TeCo Holding B.V., De Tweeling 28, 5215 MC Den Bosch, the Netherlands (opponent), represented by Algemeen Octrooi- en Merkenbureau B.V., Professor Dr. Dorgelolaan 30, 5613 AM Eindhoven, the Netherlands (professional representative)

a g a i n s t

Sanjeevv Bhatia, PO Box 118688 #405A, Diamond Business Center 1 Arjan, 118688 Dubai, United Arab Emirates (applicant), represented by Marks & US, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 109 is upheld for all the contested goods.

2. European Union trade mark application No 18 032 111 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 of European Union trade mark application No 18 032 111 for the figurative mark . The opposition is based on European Union trade mark registration No 17 578 261 for the word mark ‘NEDIS’. 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, inter alia, the following:

Class 9: Measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; measuring detecting and monitoring instruments, indicators and controllers; controllers (regulators); scales (analog and digital), electric kitchen scales, cooking thermometers and cooking timers.

The contested goods are the following:

Class 9: Controllers (regulators); thermostats; remote control apparatus; power regulating apparatus; fuel regulating apparatus; time regulating apparatus; electric regulating apparatus; heat regulating apparatus; apparatus and instruments for regulating electricity; apparatus and instruments for regulating the distribution of electricity; heat regulating apparatus; electro-dynamic apparatus for the remote control of signals; electric installations for the remote control of industrial operations.

Controllers (regulators) and apparatus and instruments for regulating electricity are identically contained in both lists of goods.

The contested thermostats are included in the broad category of, or overlap with, the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested remote control apparatus; fuel regulating apparatus and heat regulating apparatus (listed twice) are included in the broad category of, or overlap with, the opponent’s controllers (regulators). Therefore, they are identical.

The contested power regulating apparatus are included in the broad category of, or overlap with, the opponent’s apparatus and instruments for regulating electricity. Therefore, they are identical.

The contested time regulating apparatus includes, as a broader category, or overlaps with, the opponent’s cooking timers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested electric regulating apparatus and electro-dynamic apparatus for the remote control of signals overlap with the opponent’s controllers (regulators). Therefore, they are identical.

The contested apparatus and instruments for regulating the distribution of electricity overlap with the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested electric installations for the remote control of industrial operations overlap with the opponent’s measuring detecting and monitoring instruments, indicators and controllers. Therefore, they are identical.

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 found to be identical are directed at the public at large, for example some remote control apparatus, and at business customers with specific professional knowledge or expertise, for example electric installations for remote control of industrial operations.

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

NEDIS
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 earlier mark has no meaning for the relevant public and no arguments to the contrary were submitted by the parties. It is, therefore, distinctive.

The element ‘NETIX’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘CONTROLS’ of the contested sign will be understood as a form of ‘control’ or ‘a button, switch, lever or the like by means of which an operator can regulate the action or performance of a device, machine, vehicle, etc., or some aspect of its operation’ (information extracted from Oxford English Dictionary on 13/05/2020 at https://www.oed.com/view/Entry/40562?rskey=vuqR4L&result=1#eid) by the relevant public because it is very close to the equivalent word in most of the official European Union languages, for example ‘Kontrolle’ in German, ‘controllo’ in Italian, ‘kontrole’ in Latvian, ‘kontrola’ in Slovenian or ‘контрол’ (/kontrol/) in Bulgarian. Bearing in mind that the relevant goods are various controls and regulating devices and systems, this element is non-distinctive for these goods and most likely will be disregarded by the users.

The figurative device will be perceived by part of the relevant public as a stylized ‘X’, while for another part of the public it will be a decorative element or a logo. In any case, 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. This is because 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, in the present case, account should be taken of the fact that although not fully disregarding the figurative device, consumers may to a great extent focus on the verbal elements of the sign when aurally referring to them.

The element ‘NETIX’ of the contested sign is considered dominant due to the size of the characters and the bold typeface.

It should be further noted that 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.

As stated by the applicant, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. According to the Office practice, signs with three or less than three letters/numbers are considered as short signs. In the case at hand, the distinctive elements of the signs consist of five letters each, and, therefore, they cannot qualify as ‘short signs’ or even as ‘relatively short signs’ and the arguments of the applicant in this regard must be put aside.

Visually, the signs coincide in the letters ‘NE*I*’, placed in the same positions in both signs. They differ in the letters ‘D’ and ‘S’, present only in the earlier mark, and the letters ‘T’ and ‘X’, the terms ‘CONTROLS’, as well as in the figurative element, present only in the contested sign.

Therefore, considering the distinctiveness, dominance and impact of the various components of the signs explained above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NE*I’, present identically in both signs. The pronunciation of the ending of the signs is identical too, /s/, as ‘X’ of the contested sign will be pronounced as /ks/. Furthermore, the letters ‘D’ and ‘T’ are pronounced in a similar way in a number of languages, the difference being that /d/ is voiced and /t/ is voiceless. The pronunciation further differs in the sound /k/, in the sounds of the letters of the second verbal element of the contested sign and, for part of the public, in the sound of the stylized ‘X’. However, bearing in mind that ‘CONTROLS’ is non-distinctive, it is highly likely that it will not be pronounced at all.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the second verbal element and of the figurative element as the letter ‘X’ (for part of the public) of the contested sign 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, taking into account that the word ‘CONTROLS’ has been considered to be non-distinctive and secondary, the impact of the conceptual perception of the contested sign will be limited.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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-51/95, Sabèl, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods are identical to the opponent’s goods. They are directed at the public at large and at business customers with specific professional knowledge or expertise whose degree of attention may vary from average to high.

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually not similar, although the impact of the conceptual perception of the contested sign will be limited.

The degree of distinctiveness of the earlier mark is normal.

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). Therefore, it could not be ruled out that even consumers with a high degree of attentiveness may overlook or mispronounce the differing letters and confuse the signs.

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 this case, it is considered that the identity of the goods herein involved, together with the similarities between the signs, are clearly enough to counteract their dissimilarities, and to lead consumers to confusion as regards the commercial origin of those identical goods.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings.

• 12/05/2011, B 1 686 867; 08/06/2011, B 462 102: the signs were found visually dissimilar due to the stylization of the contested sign.

02/05/2011, Opposition B 1 711 103: the compared signs coincide in only two letters and their positions.

18/02/2005, B 493 884: the signs which were compared are a five-letter sign versus a four-letter sign.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Furthermore, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. Finally, account is taken of the fact that these decisions were taken in or before 2011 and the Office practice on short signs has changed since then. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

• 15/04/2011, B 1 658 429: the compared signs coincide in a weak component only. The remaining coinciding letters are placed in different positions; moreover, they form a basic English term in the earlier mark.

09/09/2011, B 1706 624: the contested sign has a meaning that would be understood throughout the whole relevant territory.

In the case at hand, the distinctive and dominant elements of the signs are meaningless and the identical letters coincide in their positions too.

• 20/06/2005, R  670/2004, ARIANE / ASIANE: the Board found the compared goods are relatively lowly similar. In the case at hand the compared goods were found identical and the principle of interdependence was applied.

As long as the following judgments of the Court of Justice of the European Union, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323; 16/07/1998, C‑210/96, Gut Springenheide, EU:C:1998:369 and 12/02/2004, C‑218/01, Perwoll, EU:C:2004:88, and decisions of the Boards of Appeal of the EUIPO, 12/09/2001, R 964/2000-3, ABACOR / ACCUCOR and 27/07/2001, R 540/1999-2, GRI / GRY, are concerned, it should be noted that the average consumer’s level of attention has been duly taken into account in section b) as well as in section e) of this decision.

The applicant further refers to the following judgments of the General court:

• 27/09/2012, T-39/10, Pucci, EU:T:2012:502: the compared signs differ due to the longer earlier marks and their stylization. Furthermore, the signs would be perceived as names/surnames. In the case at hand the signs involved are not names and the stylization of the contested sign is rather standard.

• 03/03/2004, T-355/02, Zirh, EU:T:2004:62: the signs involved are an earlier figurative mark with a short verbal element which is a basic English term and a four-letter contested verbal sign, which are not comparable with the signs in this specific case.

• 13/10/2009, T-146/08, Redrock, EU:T:2009:398: the goods were found not be bought on a daily basis. The applicant further claims that its products are aimed at professionals in the field of controllers and regulations. These products are expensive, and are not to be bought by impulse. However, it should be noted that some of the applicants goods, such as remote controls and time regulating apparatus, are broad categories that include remote controls for TV or air conditioners or kitchen timers for example, which are aimed at the general public and are not expensive. In this regard it should be also noted that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods (as applied for, as registered, or as resulting from the proof of use submitted). Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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 European Union trade mark registration No 17 578 261. It follows that the contested trade mark must be rejected for all the contested 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 applicant is the losing party, he 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

Valeria ANCHINI

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

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.