OPPOSITION Nо B 3 091 807

 

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative) 

 

a g a i n s t

 

Eunice Trading S.A., Βασιλισσης Σοφιας 29, 10674 Αθηνα, Greece (applicant), represented by Γεωργιος Ρηγας, Πανεπιστημιου 34, 10679 Αθηνα, Greece (professional representative).

 

On 13/10/2020, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 091 807 is partially upheld, namely for the following contested goods and services:

Class 9: All the contested goods in this Class.

Class 11: Regulating and safety accessories for water and gas installations; Heating, ventilating, and air conditioning and purification equipment (ambient); Refrigerating equipment; Sanitary installations, water supply and sanitation equipment; Igniters; Burners, boilers and heaters; Lighting and lighting reflectors.

Class 12: All the contested goods in this Class.

Class 35: Import-export agencies in the field of energy.

Class 37: All the contested services in this Class.

2. European Union trade mark application No 18 053 404 is rejected for the goods and services as reflected under 1. of this dictum. It may proceed for the remaining goods and 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 18 053 404 (figurative mark), in Classes 9, 11, 12, 35 and 37. The opposition is based on EUTM registration No 13 816 939 ‘WE’ (word 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: Recorded content; Information technology and audiovisual apparatus; Magnets, magnetizers and demagnetizers; Diving equipment; Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Vehicle breakdown warning triangles; Warning lamps for vehicles (not parts of vehicles); Solar batteries; Electric batteries for vehicles; Electric batteries for vehicles; Burglar alarm apparatus, Fire alarm apparatus, Smoke alarms, Gas escape warning apparatus; Burglar alarms; Fire-extinguishing apparatus; Electronic control apparatus and power/voltage supply apparatus for vehicle headlights and vehicle lights and respective parts therefor, light-emitting diodes (LED); Simulators for the steering and control of vehicles; Speed indicators; Revolution counters; Life-saving equipment, namely life rafts, rescue ladders, safety nets, safety tarpaulins, lifebelts, lifebuoys, lifejackets; Lasers, not for medical purposes, laser pointers; Remote control apparatus, remote controls; Antennas; Navigation apparatus for vehicles; Cell phones; Telephones; Television apparatus; Video telephones; Radios; Directional compasses, navigation apparatus, navigation instruments; Telematic apparatus; Telematic terminal apparatus; Apparatus for recording, transmission and/or reproduction of sound and/or images, magnetic, electronic and optical data carriers, recording discs, compact discs, DVDs and other digital recording media, sound recording carriers, coin-operated juke boxes, compact discs (read-only memory), downloadable music files, headphones, loudspeakers, cabinets for loudspeakers, luminous signs, compact disc players, DVD players, video telephones, phototelegraphy apparatus; Projection apparatus, Cameras; Films, exposed; Cinematographic apparatus, Photocopiers, Electronic translation apparatus (computers), Electronic pocket translators; Magnetic cards, integrated circuit cards (smart cards), encoded telephone cards; Mechanisms for coin-operated apparatus; Automatic teller machines; Cash registers, calculating machines, data processing equipment, computers, electronic agendas, facsimile machines, monitors (computer hardware and programs), computer peripheral devices, recorded and downloadable computer programs, in particular data files in electronic form, computer software, application software; Pocket calculators; Electronic publications, downloadable; Downloadable image files; Crash test dummies; Microscopes; Radiological apparatus for industrial purposes; Head protection; Electronic locks; Parts and accessories for all the aforesaid goods, included in this class.

Class 12: Vehicles and conveyances; Vehicles for locomotion by land, air, water or rail, and parts therefor; Motorized land vehicles; Motors and drives for land vehicles; Propulsion mechanisms for land vehicles; Chassis for vehicles; Vehicle superstructures for vehicles; Couplings for land vehicles; Suspension shock absorbers for vehicles; Shock absorbing springs for vehicles; Pneumatic tires (tyres); Tyres for vehicle wheels; Rims for vehicle wheels; Solid rubber tyres for vehicle wheels; Wheeled vehicles; Hubs for vehicle wheels; Inner tubes for pneumatic tires; Repair outfits for inner tubes, Adhesive rubber patches for repairing tyre inner tubes, Spikes for tires [tyres], Snow chains; Tires (Non-skid devices for vehicle -); Vehicle seats; Rearview mirrors; Head-rests for vehicle seats; Anti-theft alarms for vehicles, anti-theft devices for vehicles; Cigar lighters for automobiles; Automotive vehicles; Cars; Lorries; Trailers and semi-trailers for vehicles, trailer hitches for vehicles; Motor coaches: Motorbikes; Mopeds; Bicycles; Cable transport apparatus and installations; Carts, shopping trolleys, baggage trolleys; Air vehicles; Boats, Ships: Locomotives; Motor coaches; Caravans: Tractors; Two-wheeled vehicles, scooters (vehicles); Chair lifts, cable cars; Wheelchairs for transporting invalids; Parts and fittings for the aforesaid goods, included in this class.

Class 37: Building, construction and demolition; Rental of tools, plant and equipment for construction and demolition; Mining, and oil and gas extraction; Extermination, disinfection and pest control; Modification, repair, disassembly, maintenance and care of vehicles; Vehicle maintenance and repair; Custom conversion of motor vehicle bodies, chassis, motors and engines (tuning), All the aforesaid services included in class 37; Vehicle painting; Vehicle polishing; Anti-rust treatment for vehicles; Vehicle maintenance; Vehicle cleaning; Tyre repair; Maintenance, cleaning and repair of boilers and burners; Repair information; Construction consultation; Installation of doors and windows; Quarrying services; Machinery installation, maintenance and repair; Airplane maintenance and repair; Shipbuilding; Photographic apparatus repair; Clock and watch repair; Repair of security locks; Rustproofing; Furniture maintenance; Leather care, cleaning and repair; Disinfecting; Burglar alarm installation and repair; Consultancy and information in relation to the aforesaid services, included in this class.

Class 38: Telecommunication services; Telecommunications; News agencies, News agencies, Telecommunications by means of platforms and portals on the Internet, Providing access to information on the Internet, Electronic exchange of messages and information via chat lines, Chat rooms and Internet forums, Electronic mail, Rental of telecommunication equipment, Television broadcasting and radio broadcasting, Electronic mail; Information about telecommunication; Providing user access to global computer networks; Providing telecommunications connections to a global computer network; Providing user access to computer programmes in data networks; Forums [chat rooms] for social networking; Provision of video conferencing services; Wireless mobile phone services; Computer aided transmission of messages and images; Paging services [radio, telephone or other means of electronic communication]; Satellite transmission; Telephone and mobile telephone services; Telephone exchange services; Message sending; Rental of telecommunication equipment; Rental of message sending apparatus; Rental of access time to global computer networks; Providing access to databases; Telematics services; Telematic communication services; Telematic data transmission and file transfer; Consultancy and information in relation to the aforesaid services, included in this class.

Class 39: Transport; Packaging and storage of goods; Travel arrangement; Towing; Taxi services, Motor vehicle transport, Transportation logistics; Rental of vehicles, in particular cars; Passenger transport, in particular by bus; Freight brokerage [forwarding (Am)]; Delivery of goods and parcels; Traffic information; Controlling of fleet vehicles using navigational and positioning apparatus.

The contested goods and services are the following:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; Diving equipment; Scientific and laboratory devices for treatment using electricity; Magnets, magnetizers and demagnetizers; Optical devices, enhancers and correctors; Scientific research and laboratory apparatus, educational apparatus and simulators; Navigation, guidance, tracking, targeting and map making devices; Apparatus, instruments and cables for electricity; Information technology and audio-visual, multimedia and photographic devices; Safety, security, protection and signalling devices; Recorded content.

Class 11: Industrial treatment installations; Drying installations; Regulating and safety accessories for water and gas installations; Heating, ventilating, and air conditioning and purification equipment (ambient); Refrigerating and freezing equipment; Sanitary installations, water supply and sanitation equipment; Igniters; Flues and installations for conveying exhaust gases; Burners, boilers and heaters; Personal heating and drying implements; Lighting and lighting reflectors; Nuclear installations.

Class 12: Vehicles and conveyances.

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Sales management services; Purchasing of goods and services for other businesses; Procurement of contracts for the purchase and sale of goods and services; Import-export agencies in the field of energy; Mediation of agreements regarding the sale and purchase of goods.

Class 37: Rental of tools, plant and equipment for construction, demolition, cleaning and maintenance; Extraction of natural resources; Extermination, disinfection and pest control; Building, construction and demolition; HVAC (Heating, ventilation and air conditioning) installation, maintenance and repair; Computer hardware and telecommunication apparatus installation, maintenance and repair; Renovation, repair and maintenance of electrical wiring.

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.

Furthermore, an interpretation of the wording of the list of goods and services of the earlier mark is required to determine the scope of protection of these goods and service. The term ‘in particular’ indicates that the specific goods after that term are only examples of items included in the category and that protection is not restricted to them. Therefore, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). In contrast, the term ‘namely’ used is exclusive and restricts the scope of protection only to the goods specifically listed after the term.

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

Diving equipment; scientific research and laboratory apparatus; magnets, magnetizers and demagnetizers; educational apparatus and simulators; navigation, guidance, tracking, targeting and map making devices; information technology and audio-visual devices; recorded content are identically contained in both lists of goods in Class 9 (including synonyms).

Identity exists not only when the goods and services completely coincide (the same terms or synonyms are used) but also when the contested goods/services fall within the earlier mark’s broader category of goods/services or, conversely; when a broader term of the contested mark includes the more specific goods/services of the earlier mark. There is also identity when two broad categories under comparison coincide partially (‘overlap). When the contested goods/services designate a broad category, it is considered that the Office cannot dissect ex officio that broad category (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29).

Therefore, the following contested goods are also identical to goods of the opponent:

• measuring instruments, indicators and controllers, as they cover, as a broader category, the opponent's speed indicators; revolution counters;

• photographic devices, as they cover the opponent's cameras;

• detecting and monitoring instruments, indicators and controllers as they cover the opponent's burglar alarm apparatus; fire alarms; smoke alarms;

• safety, security, protection devices as they cover the opponent’s life-saving equipment, namely life rafts, rescue ladders, safety nets, safety tarpaulins, lifebelts, lifebuoys, lifejackets.

• signalling devices as they cover the opponent’s warning triangles;

• apparatus, instruments for electricity as they cover the opponent's electric batteries for vehicles;

• optical devices, enhancers as they cover the opponent's microscopes.

• multimedia devices, as they are included in or overlap with, the opponent's apparatus for recording, transmission and/or reproduction of sound and/or images;

• scientific and laboratory devices for treatment using electricity as they are included in the opponent's scientific research and laboratory apparatus.

The contested optical correctors include correction lenses for cameras and are, therefore, similar to the opponent's cameras as these goods are complementary, target the same public, have the same producers and distribution channels.

The contested cables for electricity and the opponent's electric batteries for vehicles are complementary, are available from the same distribution channels and target the same public. Therefore, they are similar.

Contested goods in Class 11

The contested regulating and safety accessories for gas installations and the opponent's gas escape warning apparatus in Class 9 differ in nature but have the same purpose and share the same distribution channels and producers. They target the same public and may even be complementary in the sense that the alarm signal of the escape warning apparatus may be triggered by the measurements performed by the regulating and safety accessories. Therefore, these goods are highly similar.

By nature, goods and services are dissimilar. However, similarity between goods and their maintenance/repair/installation can be established when it is common in the relevant market sector for the manufacturer of the goods to also provide such services; when the relevant public coincides and when the maintenance and repair of the goods are provided independently of the purchase of the goods (not aftersales services). These conditions are fulfilled when comparing the contested boilers and heaters (which include boilers) with the opponent’s maintenance, cleaning and repair of boilers. The same reasoning and conclusion can be extended to the contested sanitary installations, water supply and sanitation equipment which include boilers and to the contested regulating and safety accessories for water installations; igniters; burners which include/are essential parts of boilers. Therefore, the contested burners, boilers and heaters; sanitary installations, water supply and sanitation equipment; regulating and safety accessories for water installations; igniters are similar to the opponent’s maintenance, cleaning and repair of boilers.

The contested lighting and lighting reflectors include lights for vehicles. Therefore, they are similar to the opponent's vehicles in Class 12 as these goods are complementary, share the same distribution channels and target the same public.

The contested heating, ventilating, and air conditioning and purification equipment (ambient). refrigerating equipment (which include those for air cooling) cover those for vehicles, included in Class 11 of the Nice Classification. These goods target the same professionals in the vehicle-manufacturing industry as some of the opponent’s parts of vehicles in Class 12. As parts of vehicles, these goods are similar in nature and share the same distribution channels. Therefore, they are similar to a low degree.

At this point of the comparison; the Opposition Division finds it useful to provide a description of the goods and services on which the opposition is based:

The opponent’s goods in Class 9 include content (recorded content, music; electronic publications; image files); software; computers, telecommunications and audiovisual apparatus and their peripherals; data carriers (discs, cards,etc.); scientific apparatus; magnets, magnetisers and demagnetisers; protection; safety and life-saving equipment; diving equipment; monitoring, signalling, warning apparatus; batteries and other goods for vehicles including speed indicators, revolution counters, power supply apparatus for vehicle lights, navigation apparatus; educational apparatus and simulators; lasers; LEDs; remote controls; antennas, juke boxes; sound transmitting and reproducing apparatus such as headphones and loudspeakers; photocopiers; integrated circuit cards; mechanisms for coin operated apparatus; electronic translators; calculators, cash registers and tellers; microscopes; industrial radiological apparatus; electronic locks; navigation, guidance, tracking, targeting and map making devices; and parts and accessories for all these goods.

In Class 12, the earlier mark is registered for vehicles and their parts.

The services on which the opposition is based in Class 37 are building (including shipbuilding)/demolition services, rental of construction and demolition tools; mining/quarrying and natural resources extraction services; disinfection services; repair/maintenance/painting services of vehicles and parts of vehicles; installation and/or repair and/or maintenance and/or cleaning of clock/watches, locks, furniture, photographic apparatus, leather, machinery, doors and windows, burglar alarms; repair information and consultancy; information regarding the aforesaid.

The opponent’s services in Class 38 are telecommunication services and those in Class 39 refer to transport of goods and persons (including travel services), packaging and storage; towing; delivery of goods; traffic information and control of fleet vehicles.

The similarity between the goods and services concerns a matter of law which has to be ruled on by the Office, if need be on its own motion, since it is necessary to resolve that matter in order to ensure a correct application of Article 8(1)(b) EUTMR (15/07/2015, T-24/13, CACTUS OF PEACE CACTUS DE LA PAZ / CACTUS, EU:T:2015:494, § 23 and the case-law cited). However, the comparison of goods should not be speculated on or extensively investigated ex officio (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in inter-partes proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Therefore, the submissions of the parties to provide specific and substantiated information may have a decisive impact on the outcome of a case.

The remaining contested goods in Class 11, which are industrial treatment installations; drying installations; freezing equipment; personal heating and drying implements; flues and installations for conveying exhaust gases; nuclear installations do not coincide with the opponent’s goods and services as regards the relevant criteria of the comparison in such a way that similarity, even to a low degree, may be established. Therefore, these goods are dissimilar to all of the opponent’s goods and services.

In particular, the Opposition Division does not share the opponent’s contentions that the contested flues and installations for conveying exhaust gases are similar to vehicles (or their parts) because vehicles incorporate exhaust systems. Components of the exhaust systems of vehicles are not classified in Class 11 but in Class 7. Therefore the contested goods do not cover exhaust systems for vehicles.

The opponent’s arguments that drying installations, freezing equipment, and personal heating and drying implements are necessary parts to be included in vehicles such as trailers, and that these contested goods are, therefore, similar to vehicles/trailers, are not convincing. It is not excluded that trailers may be fitted with such goods or that trailer drivers may take those goods on board to improve their comfort during their travels but they are not necessary parts of trailers. There is no narrow relationship between the contested goods at issue and the opponents vehicles/trailers and their parts in Class 12. In particular, these goods are usually not produced by the same undertakings or distributed through the same distribution channels and there is no link of complementarity between them.

Finally, the Opposition Division is not convinced by the opponent’s statement, not supported by any further explanations or evidence, that radiological apparatus for industrial purposes for which the earlier mark is registered can be considered part of the contested industrial treatment installations. In any case, the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). It is also noted that the mere fact that these goods are intended for industrial purposes is not enough to justify a finding of similarity.

Contested goods in Class 12 

Vehicles and conveyances are identically contained in both lists of goods.

Contested services in Class 35

The contested import-export agencies in the field of energy relates to the movement of goods and normally requires the involvement of customs authorities in both the country of import and the country of export. These goods and the opponent's transport services in Class 39 which includes the transport of energy are usually provided by the same companies through the same distribution channels and they target the same public. Therefore they are similar.

The contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising/promotional services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services and are not provided through the same distribution channels or by the same undertakings. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising. Therefore, and contrary to the opponent’s contentions, these contested services are not similar to the opponent’s television apparatus; radios; data carriers, electronic publications etc. They are dissimilar to all of the opponent’s goods and services because there are no relevant links as regards the factors of the comparison.

 

The contested business analysis, research and information services; business assistance, management and administrative services; sales management services; purchasing of goods and services for other businesses; procurement of contracts for the purchase and sale of goods and services; mediation of agreements regarding the sale and purchase of goods refer to activities of business management and business administration which are usually rendered by specialist companies such as business consultants, which provide their customers support to carry out their business or develop/expand market share. These services do not coincide in any relevant criteria with the opponent’s goods and services. In particular, and contrary to the opponent’s arguments, they are not similar to the opponent’s consultancy services in Classes 37 and 38 which relate to advice on technical issues rather than on a general level regarding the conduct of business. The remaining arguments of the opponent such as the fact that the earlier mark’s services in Class 38, for example telecommunication services or news agencies, or those in Class 39 such as freight brokerage are all “aspects of the services covered by the challenged application in Class 35” are not more convincing as they do not rely on the relevant criteria of the comparison. The contested business services differ from the opponent’s goods and services in purpose, nature, producers/providers and distribution channels. The goods and services at issue are neither complementary nor in competition. Therefore, these contested services are dissimilar to all of the opponent’s goods and services.

Contested services in Class 37

Rental of tools, plant and equipment for construction, demolition; extermination, disinfection and pest control; building, construction and demolition are identically contained in both lists of services.

The contested extraction of natural resources covers as a broader category the opponent's oil and gas extraction. Therefore, these services are identical.

The contested rental of tools, plant and equipment for cleaning and maintenance are usually provided by the same companies as the opponent’s rental of tools, plant and equipment for construction and demolition, through the same distribution channels. Furthermore these services target the same customers and coincide in nature and purpose. Therefore, they are similar.

The contested computer hardware and telecommunication apparatus installation, maintenance and repair are similar to the opponent’s computers/telephones. It is common that the manufacturers of such goods also offer installation, repair and all kind of maintenance operations though the same distribution channels/points of sales and the goods and services are frequently directed at the same consumers.

The contested HVAC (Heating, ventilation and air conditioning) installation, maintenance and repair is similar to the opponent's repair of boilers. These services coincide in nature and purpose to the extent that they consist of putting/maintaining in service household appliances of the same type. These services are likely to be provided through the same distribution channels by the same companies and the targeted public is the same.

The contested renovation, repair and maintenance of electrical wiring is closely related to the opponent's construction services. Undertakings which offer building services (of new houses or in the framework of renovation work) might also be involved in the installation/renovation of some of the basic infrastructures such as electricity, plumbing, insulation, etc. which require building work previous to their installation. It is common practice for consumers to contract one company which takes care of the integral construction or repair/renovation of buildings. The services at issue target the same public, are offered by the same undertakings through the same distribution channels and are complementary. Therefore, they are similar.

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, some of the goods/services found to be identical or similar target both the general public and professionals such as computers in Class 9 or construction, the installation, maintenance and repair of HVAC appliances in Class 37 whereas others target business customers with specific professional knowledge or expertise such as the extraction of natural resources in Class 37 or export-import services in Class 35.

The public’s degree of attention will be high or relatively high for most of the goods and services for reasons such as their prices, the fact they are infrequently purchased (such as vehicles, boilers, building services), the fact that they involve safety/regulatory issues (such as diving equipment/the installation of electrical wiring/the repair of boilers), the fact that issues of compatibility with other goods are to be taken into account before purchase (such as electric batteries for vehicles), or the fact they are key to the conduct of business of professional customers (such as import-export services).

The degree of attention will be average for others such as magnets or recorded content.

c) The signs

 

WE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. As the verbal elements of the signs are English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier word mark is the English word ‘WE’. The contested sign contains the word ‘We’ represented in bold letters in an isolated position in the upper part of the sign. The ‘W’ is portrayed in blue colour with a noticeable stylisation whereas the ‘e’ is depicted in yellow in more standard font. This term is the visually dominant element of the contested sign considering that the other verbal elements consisting of the same term ‘WE’ followed by the term ‘ENERGY, placed below, are depicted in significantly smaller, thinner letters in standard upper case font.

The specific depiction of the stylised term ‘We’ contributes to its visual impact but will nevertheless be perceived by the public as mere ornamentation of the verbal element and will hardly be given any trade mark significance.

The word 'WE' is the personal pronoun in first person plural and in subject form. This meaning is not related to the relevant goods and services. Therefore, the term is fully distinctive. It is noted that a personal pronoun subject is usually followed by a conjugated verb. However, this is not the case here since the pronoun is used on its own in both signs.

Importantly, the word ‘WE’ is also used in an unusual manner in the expression ‘WE ENERGY’ which does not form a grammatically correct expression. Therefore, the sequence will be perceived as the juxtaposition of two separate, unrelated elements, in which ‘WE’ also fulfils a fully independent and distinctive role.

The English word 'ENERGY' of the contested sign refers to the capacity for action and for causing change, and conveys ideas of strength, power and efficiency. It also refers to the power produced by sources such as electricity or natural resources (coal, oil) that makes machines work. The distinctiveness of the term ‘Energy’ varies according to the goods and services. It can be considered non-distinctive for goods and services whose purpose is to provide energy such as the contested electric batteries for vehicles in Class 9 or the installation of electrical wiring in Class 37 as well as for the contested import/export services in the field of energy or extraction of natural resources (which are sources of energy). Furthermore its distinctiveness is low for goods which operate with electrical energy as the public will associate the term with desirable qualities of such goods such as the fact that they are powerful, efficient or have outstanding electrical autonomy in the case of portable devices or (electric) vehicles. More generally, the term conveys positive associations of power, efficiency and motivation/enthusiasm which may lead the public to perceive it at the very least as less distinctive than the element(s) ‘We’ of the contested sign (for example in relation to building or disinfection services). However, the term ‘ENERGY’ has no obvious meaning in relation to some goods, such as magnets, for which it is fully distinctive.

Visually, the signs coincide in the distinctive term ‘WE’ which forms the whole earlier mark. The difference in the case lettering is irrelevant since the earlier word mark is protected for the word itself including in title case as depicted in the contested sign.

The coinciding term ‘We’ plays an essential role in the contested sign not only because of its capacity to indicate the commercial origin of the goods and services which derives from its normal distinctive character, but also because of its clearly independent role made obvious by its isolated position, its strong visual impact and its position at the top/beginning of the sign.

Indeed the beginning of a sign is the part to which consumers normally attach more importance (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 26/01/2006, T-317/03, Variant, EU:T:2006:27, § 50; 23/05/2007, T-342/05, Cor, EU:T:2007:152, § 42).

The importance of the term is further reinforced by its repetition on the second line, this time in upper case letters as in the earlier mark, within the sequence ‘WE ENERGY’ in which it retains a distinctive and independent role for the reasons previously set out.

The applicant argues that there are big differences between the signs including the fact that one is a word mark whereas the other one includes figurative elements. However, the figurative elements of the contested sign are limited to aspects of stylisation that the public will perceive as being merely decorative. Furthermore, there is nothing to prevent visual similarity between a word mark and a figurative mark, since both types of mark have a graphic form capable of creating a visual impression (04/05/2005, T‑359/02, Star TV, EU:T:2005:156, § 43 and the case-law cited).

The main difference between the signs is placed in the verbal element ‘ENERGY’. The term will clearly be perceived as a secondary element owing to its smaller size and ancillary position. Its differentiating impact is further reduced for many goods and services owing to its non-distinctive, weak or laudatory character.

Based on the above, the signs are considered to be visually similar to a degree which varies from average where the term ‘ENERGY’ is distinctive (such as for magnets) to above-average/high for goods or services in relation to which the term ‘ENERGY’ is weak (such as heating, ventilating, and air conditioning and purification equipment (ambient))/non-distinctive (such as electric batteries for vehicles).

Aurally, the earlier mark is fully included at the beginning of the contested sign. It is not excluded that part of the public may pronounce only the initial element ‘We’ of the contested sign as it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. This is all the more likely in this case as the next word is a repetition of the first term. For this public the signs are aurally identical.

For the part of the public which pronounces the contested sign as 'we we energy' or even 'we energy' in order to avoid the repetition, there is at least an average degree of aural similarity since the earlier mark is fully included at the beginning of the contested sign in which it will be perceived as a distinctive and independent element even in combination with the word ‘Energy’ for the reasons previously mentioned. The degree of similarity is even above average/high for the goods and services in relation to which the additional element ‘Energy’ is weak/non-distinctive.

Conceptually, the signs coincide in the meaning of the coinciding term ‘We’. The coincidence is strengthened by the fact that the word is used in both signs in the same unusual manner namely on its own whereas consumers would expect that it be combined with a conjugated verb. Even when combined with the term ‘Energy’, the word ‘We’ retains its independent character which, again, is unusual for a subject pronoun and which, therefore, reinforces its intrinsic semantic value.

The signs differ in the concept of the contested sign’s word ‘Energy’ whose differentiating impact varies according to its distinctiveness for the goods and services at issue.

It follows from the above that the signs are conceptually similar to a degree which varies from average for goods and services in relation to which the additional term ‘ENERGY’ fulfils a distinctive role to above average/high for goods and services in relation to which this term is weak/non-distinctive.

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 mentions that its marks, including the WE-series, generally enjoy a rather high degree of recognition among the relevant public as Volkswagen AG is Europe’s biggest car manufacturer and as such is known to the public. However, the reputation of the opponent itself is not relevant in the assessment which specifically concerns the earlier mark not its owner. In any case the opponent has not submitted any evidence in support of its claims.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Given that the earlier trade mark has no meaning for any of the goods and services in question its distinctiveness must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

Likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where they make a connection between the conflicting signs and assume that the goods/services covered are from the same or economically linked undertakings.

The contested goods and services are partly identical and similar to varying degrees and partly dissimilar to goods and services for which the earlier mark is registered. The degree of attention of the public is relatively high or high for most goods and services and average for a few of them. The earlier mark is distinctive to a normal degree which affords it a normal protection against later similar marks.

The signs are visually, aurally and conceptually similar to a degree which is at least average in relation to all of the goods and services found identical or similar. Although there are perceptible differences between the signs, the fact that the subject personal pronoun ‘We’ is used in the same unusual manner in both of them, namely in isolated position, on its own, is a strong factor of similarity. The coinciding word ‘We’ forms the whole earlier mark and plays a clearly preponderant role in the contested sign as can be gathered from its visual prevalence, its position and its repetition.

Consumers who encounter the contested sign will mainly remember it by its visually dominant element ‘We’ which they are likely to perceive as just a stylised version of the earlier word mark.

Therefore, it is highly conceivable that the relevant English-speaking consumers will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of confusion, on the part of the English-speaking part of the public, even displaying a high degree of attention. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

The applicant argues that the fact that the contested trade mark application has been published by the EUIPO proves that there is no likelihood of confusion with any earlier marks. However, this argument is unfounded because relative ground objections are not raised ex officio by the Office before publishing trade mark applications. The opposition procedure is only initiated after publication of the application at the request of a third party on the basis of the earlier right(s) it holds. The applicant also indicates that the trade mark ‘WE’ does not appear in the list of results after a search on the expression ‘WE ENERGY’ in the Office’s database TMView. However, this argument is irrelevant considering that the assessment of the likelihood of confusion is based on the perception of consumers not on the parameters of a search function in any database. As previously mentioned, the presence of the word ‘ENERGY’ in the contested sign does not exclude that consumers may perceive the relevant goods and services as proceeding from the same or economically linked undertakings given its ancillary position/size, its limited distinctive character for many goods and services and the prevalence of the element(s) ‘WE’ in the contested sign for various reasons as set out above.

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. This conclusion extends to the goods found similar to a low degree namely heating, ventilating, and air conditioning and purification equipment (ambient); refrigerating equipment in relation to which the signs are visually, aurally and conceptually similar to an above average degree considering that the public will perceive the differing ‘ENERGY’ as a weak element indicating that the electrically powered goods in question are particularly powerful/efficient.

The rest of the contested goods and 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 goods and 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

 

 

Boyana NAYDENOVA

Catherine MEDINA

Christian STEUDTNER

 

 

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.