OPPOSITION No B 3 090 386

Bael Ingenieria, S.L., C/ Astronomía, 1 Torre 5, Planta 7, Módulo 5, 41015 Sevilla, Spain (opponent), represented by Fernández-Palacios Abogados, S.L.P., Plaza de la Magdalena, 9 - 4º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Dael Beheer B.V., Aartsdijkweg 81, 2676 LE Maasdijk, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL, Breda, Netherlands (professional representative).

On 30/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 386 is partially upheld, namely for the following contested goods and services:

Class 9: All the contested goods in this class.

Class 37: All the contested services in this class, except for electrical installation, repair, renovation or maintenance of electrotechnical products, installations and components; installation of charging point networks; consultancy in relation to heating and cooling apparatus; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

Class 38: All the contested services in this class.

Class 42: All the contested services in this class.

2. European Union trade mark application No 18 047 514 is rejected for the goods and services as reflected in point 1 of this dictum. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 047 514 DAEL (word mark). The opposition is based on Spanish trade mark registration No 3 677 546 (figurative mark). 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.

a) The goods and services

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

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, control (inspection), rescue and teaching apparatus and instruments; apparatus and instruments for conduction, distribution, transformation, accumulation, regulation or control of electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic record holders, acoustic discs; compact discs, DVDs and other digital recording media; mechanisms for prepaid devices; cash registers, calculating machines, data processing equipment, computers; software; fire extinguishers.

Class 35: Business management; commercial administration; services of a commercial information agency, of advice for the organization and direction of business; market research services, information search in computer files, business research; data compilation and systematization services in central computer; project development services for business management assistance; online advertising services of a computer network; communications transcription and word processing services; commercial business valuation services; sales promotion services for third parties and retail services and through worldwide telematic networks of computer and machinery programs.

Class 38: Telecommunications; access services to a global computer network, electronic advertisements and communications through fiber optic networks; communications services via computer, radio, telephone, telegraphic and telecommunications connections to a global computer network; information services in the field of telecommunications and electronic messaging; computer-assisted message and image transmission services; mobile radiotelephony, satellite transmission and teleconferencing services.

Class 42: Scientific and technological services, as well as research and design services in these fields; industrial analysis and research services; design and development of computer equipment and software; Engineering services; scientific and technological services as well as research and analysis services for the implementation of computer systems; advisory services relating to construction and development of construction plans; consultation services in the field of computers and conversion of data or documents in physical support to electronic support; web page creation and maintenance services for third parties; computer and computer systems and software design services; engineering expert services; research services on mechanics, geology, chemistry and technical engineering; technical project studies and materials testing services; quality control services.

The contested goods and services are the following:

Class 9: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspection, life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Computers and computer peripherals; Electrotechnical installations; Illuminometers; Illumination regulators; Security systems, Security cameras; Invader sensors; Burglar alarms; Intrusion detection software; Electrical and electronic burglar alarms; Fire alarms; Fire hose nozzles; Fire hose; Fire extinguishing apparatus; Cameras; Digital cameras; Infrared cameras; Access control devices; Access control systems (Electric -); Network software; Network and WiFi installations; Network controlling apparatus; Network controlling apparatus; Solar panels; Electrical cabling; Computer software for closed-circuit camera systems (CCTV); X-ray detecting apparatus; Metal detecting systems; Radiation detection gateways; Simulation apparatus; Earthing apparatus, Including EMC apparatus.

Class 37: Electrical installation, repair, renovation or maintenance of electrotechnical products, installations and components; Installation of charging point networks; Installation, repair, renovation or maintenance of camera systems, security systems, network software and control apparatus; Installation, repair, renovation or maintenance of energy supply installations, meters, including smart meters, and solar panels; Consultancy in relation to heating and cooling apparatus; Installation of telecommunications networks and telephone systems; Building, repair and installation in relation to mobile transmission installations; Planning and consultancy relating to building and construction of buildings and structures, Including for constructing telecommunications and computer networks; Supervision and monitoring of construction work, In particular for constructing telecommunications and computer networks; Building construction, repair and installation services in relation to railway buildings, installations and train protection; Electrical contractor services; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the internet.

Class 38: Telecommunications; Value added network [communication] services; Transfer, distribution, transmission and sending of data, images and sound; Providing access to and providing optionally wireless electronic networks and online data transmission, data exchange and data communication facilities, including for collecting, monitoring, analysing and providing insight into data; Services in the field of data communications and data transmission; Providing and rental of communications and telecommunications devices, including communications and telecommunications apparatus, instruments, installations and systems; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.

Class 42: Scientific and technological services and research and design services relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Conducting of network system inspections; Conducting of measurements and simulations for gaining an insight into energy consumption; Conducting of measurements at mobile transmission installations; Design of critical installations for train protection; Cloud computing; Platform as a Service [PaaS]; Infrastructure as a Service [IaaS]; Software as a service (SaaS); Hosting of Access Control as a Service (ACaaS) servers and software; Design, development and updating of computer systems, computer networks and computers; Automation services; IT and ICT specialists; Consultancy and information regarding the aforesaid services; Including the aforesaid services provided via electronic networks, including the Internet.

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 terms ‘in particular’, ‘such as’ and ‘including’, used in the applicant’s list of goods and services, indicate 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

Fire extinguishing apparatus; computers; scientific, navigation, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, detecting, testing, inspection, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity are either identically contained in both lists of goods or with synonymous wording.

The contested research and audiovisual apparatus and instruments are included in, or overlap with, the broad category of the opponent’s scientific and cinematographic apparatus and instruments. Therefore, they are considered identical.

The contested blank digital or analogue recording and storage media includes, as a broader category the opponent’s compact discs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for recording, transmitting or reproducing sound, images or data includes, as a broader category the opponent’s apparatus for recording, transmission or reproduction of sound or images. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for processing sound, images or data are included in the broad category of, or overlap with, the opponent’s data processing equipment. Therefore, they are identical.

The contested computer software for closed-circuit camera systems (CCTV); intrusion detection software; network software; computer software are included in the broad category of the opponent’s software. Therefore, they are identical.Therefore, they are identical.

The contested recorded and downloadable media includes, as a broader category, or overlaps with, the opponent’s software. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested illumination regulators; earthing apparatus, including EMC apparatus; electrotechnical installations are included in the broad category of the opponent’s apparatus and instruments for conduction, distribution, transformation, accumulation, regulation or control of electricity. Therefore, they are identical.

The contested cameras; digital cameras; infrared cameras are included in the broad category of, or overlap with, the opponent’s photographic and cinematographic apparatus and instruments. Therefore, they are identical.

The contested illuminometers; invader sensors; radiation detection gateways are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested access control systems (electric -); access control devices; network controlling apparatus (listed twice in the contested goods); x-ray detecting apparatus; metal detecting systems are included in the broad category of the opponent’s control (inspection) apparatus and instruments. Therefore, they are identical.

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

The contested electrical cabling overlaps with the opponent’s apparatus and instruments for conduction of electricity insofar as the contested goods conduct electricity. Therefore, they are identical.

The contested solar panels cannot be clearly separated from the broad category of the opponent’s apparatus and instruments for conduction, distribution, transformation, accumulation, regulation or control of electricity. Therefore, they are identical.

The contested burglar alarms; electrical and electronic burglar alarms; fire alarms are included in the broad category of, or overlap with, the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested security systems, security cameras are included in, or overlap with the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound and images insofar as both sets of items include security cameras. Therefore, they are identical.

The contested network and Wi-Fi installations; computer peripherals include any devices, such as printers, modems. Consequently these goods are similar to the opponent's data processing equipment and computers. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested fire hose nozzles; fire hose are similar to the opponent’s fire extinguishers because they coincide in distribution channels, target public and producer.

Contested services in Class 37

The contested installation of telecommunications networks and telephone systems; building, repair and installation in relation to mobile transmission installations; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet are similar to the opponent’s telecommunications. This is because the same telecommunications companies are responsible for the installation, maintenance and repair of the networks and telecommunication equipment. The distribution channels are the same, as well as the target consumers. Furthermore, they are complementary.

The contested building construction, repair and installation services in relation to railway buildings, installations and train protection; planning and consultancy relating to building and construction of buildings and structures, including for constructing telecommunications and computer networks; electrical contractor services; installation, repair, renovation or maintenance of energy supply installations, meters, including smart meters, and solar panels; supervision and monitoring of construction work, in particular for constructing telecommunications and computer networks; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet are similar to the opponent’s advisory services relating to construction and development of construction plans in Class 42 because these services are offered together through the same distribution channels, by the same providers and to the same public.

The contested installation, repair, renovation or maintenance of camera systems, security systems, network software and control apparatus; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images that also includes security cameras and it is common in the relevant market sector for the manufacturer of the opponent’s goods to also provide the contested services. Moreover, the goods and services are offered through the same distribution channels to the same public.

The contested electrical installation, repair, renovation or maintenance of electrotechnical products, installations and components; installation of charging point networks; consultancy in relation to heating and cooling apparatus; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet belong to the category of goods-related services. By nature, goods and services are dissimilar and similarity between goods and their installation, maintenance and repair services can only be established under certain circumstances. Even if some of the goods that are subject to these contested services could target the same relevant public as that of the opponent’s goods in Class 9, it is not common in the relevant market sector for the manufacturer of the goods of the opponent’s to also provide the contested services. Neither the installation, maintenance and repair of the opponent’s goods are provided independently of the purchase of the goods. Furthermore, they do not have the same distribution channels, purpose or methods of use and are not, contrary to the opponent’s arguments, complementary in the sense that one indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production/provision of those goods and services lies with the same undertaking. Nor are they in competition. Therefore, these contested services are dissimilar to the opponent’s goods in Class 9 as so are they to the opponent’s services in Class 35, 38 and 42 with which they do not share any relevant points in common.

Contested services in class 38

The contested telecommunications; value added network [communication] services; transfer, distribution, transmission and sending of data, images and sound; providing access to and providing optionally wireless electronic networks and online data transmission, data exchange and data communication facilities, including for collecting, monitoring, analysing and providing insight into data; services in the field of data communications and data transmission; providing and rental of communications and telecommunications devices, including communications and telecommunications apparatus, instruments, installations and systems; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet all belong to the market sector of telecommunications. The opponent’s services in Class 38 cover, inter alia, telecommunications. The contested services, if not all falling under the broad category of telecommunications are at least related to this market sector. Therefore, all the contested services, if not identical to the broad category of the opponent’s telecommunications because they are included in, or overlap with this broad category, are at least similar to these services because they are – at the very least – rendered or provided by the same companies, target the same public and can be sold through the same distribution channels.

Contested services in class 42

The contested scientific and technological services and research and design services relating thereto; industrial analysis and research services; design and development of computer hardware and software; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet are identical to the opponent’s scientific and technological services, as well as research and design services in these fields; industrial analysis and research services; design and development of computer equipment and software because either they are identically contained in both lists of services or overlap with the broader categories of the opponent’s services.

The contested IT and ICT specialists; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet include, as broader categories include the opponent’s design and development of computer equipment and software. Since the Office cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested design, development and updating of computer systems, computer networks and computers; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet include, or overlap with, as broader categories include the opponent’s computer and computer systems and software design services. Since the Office cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested automation services; conducting of network system inspections; conducting of measurements and simulations for gaining an insight into energy consumption; conducting of measurements at mobile transmission installations; design of critical installations for train protection; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet are included in, or overlap with, the broad category of the opponent’s scientific and technological services, as well as research and design services in these fields. Therefore, they are identical.

The contested cloud computing; infrastructure as a Service [IaaS]; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet are similar to the opponent’s design and development of computer equipment and software. For instance infrastructure as a service (IaaS) is a type of cloud services that consists of an instant computing infrastructure, provisioned and managed over the internet. The contested services coincide with the said opponent’s services in distribution channels, target consumers and provider.

The contested platform as a Service [PaaS]; software as a service (SaaS); hosting of Access Control as a Service (ACaaS) servers and software; consultancy and information regarding the aforesaid services; including the aforesaid services provided via electronic networks, including the Internet consist essentially in the distribution of software where customers access software over the Internet. The software could be hosted by its producers, or made available to clients on the internet and licensed on a subscription basis. They are similar to the opponent’s software because they coincide in provider/producer and distribution channels as well as in target public. Moreover, they are in competition with each other.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	DAEL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark composed of the verbal element ‘BAEL’ written in blue standard upper-case letters on the right-hand side of an abstract figurative element resembling a kind of thick blue string wrapped around a white ball. Neither the figurative element nor the word conveys any concrete meaning to the relevant public and they are, therefore, distinctive to a normal degree. However, 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).

The contested sign is the word mark ‘DAEL’, that has no meaning for the relevant public and it is, therefore, distinctive to a normal degree.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the strings of letters ‘AEL’, that is, three out of four letters of the contested sign and of the earlier mark’s verbal element. The difference lies in their first letters ‘B’ versus ‘D’ and the figurative device of the earlier mark, albeit for the reasons explained above the latter has a lesser impact on consumers than its word.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AEL’, present identically in both signs. The pronunciation differs in the sound of the letters ‛B’ and ‘D’ of the earlier mark and contested sign respectively.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of the similarity of the marks.

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

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).

As set out above, the goods and services are partly identical, partly similar and partly dissimilar. The public’s degree of attentiveness varies from average to high and the inherent distinctive character of the earlier mark is normal. The signs are visually similar to an average degree and aurally similar to an above average degree. Conceptually, the signs do not convey any semantic content that could help to differentiate between them.

Although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end, it cannot be inferred from this that, in the present case, the different first letter ‘B’ and ‘D’ of the earlier mark and contested sign, can prevent them from being perceived as similar. Since the average consumer 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 consumer will not only look at the mark’s first letters, but will also consider the following letters, ‘AEL’, which overlap with those of the earlier mark. Therefore, the differences in the earlier mark’s figurative element and the signs’ beginnings is not enough to counteract the similarity between the signs in respect of all the other letters making up the majority of the signs (19/04/2013, T 537/11, Snickers, EU:T:2013:207, § 41). This is particularly so because 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). Consequently, there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

Kieran HENEGHAN

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.