OPPOSITION Nо B 3 103 019

 

Sonae Sgps, S.A., Lugar do Espido, Via Norte, 4470-90 Maia, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

Apator Powogaz S.A., ul. Klemensa Janickiego 23/25, 60-542 Poznań, Poland (applicant), represented by Katarzyna Natalia Krupa-Lipińska, ul. Agrestowa 5, 87-100 Toruń, Poland (professional representative).

On 20/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 103 019 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 070 119 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 13/11/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 070 119 (figurative mark). The opposition is based on, inter alia, international trade mark registration designating de EU No 1 036 924, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Moreover, the Office will accept the request only for goods and services listed literally in the specification of the earlier mark and on which the opposition is based. The scope of an explicit request cannot be subject to interpretation. Neither the Office nor the opponent is required to determine whether an item is covered by a broader category of the specification of the earlier mark. Furthermore, the opponent cannot be required to prove use of a specific item within a category because he may prove genuine use for that category by other items included therein (24/09/2008; R 1947/2007-4, HOKAMP / HOLTKAMP, § 23; 07/07/2009, R 1294/2008-4, ORDACTIN / Orthangin, § 16; 08/10/2010, R 1316/2009-4, miha bodytec / bodytec, § 18). Consequently, the Office will refuse a request for proof of use whose scope is not explicit and unambiguous.

On 22/06/2020 the applicant requested the opponent to prove that the earlier mark on which the opposition is based was used in relation to water meters, heat meters, electricity meters, gas meters and flow meters of all kinds and components thereof. These goods are not literally listed in the specification of the earlier mark and on which the opposition is based. Since the scope of the request for proof of use is not explicit and unambiguous, the Office must reject it.

Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use

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

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

 

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishers.

Class 37: Building construction; repairs; installation services.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computers and software.

The contested goods and services, following limitations made thereto by the applicant, are the following:

Class 9: Water meters, heat meters, electricity meters, gasometers and liquid flow meters of all kinds and components therefor, included in Class 9; apparatus and instruments for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing data, in particular data in supply networks for gas, water, heat and electricity; electric and electronic apparatus and instruments for remote control, telecounting and telemetry, in particular instruments for reading, calculating, collecting and recording data in supply networks for gas, water, heat and electricity; data storage apparatus and equipment, and electrical and mechanical accessories; data processing apparatus; data storage media; computers; software, in particular for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing data in supply networks for gas, water, heat and electricity; mobile apps; all the foregoing to the exclusion of any software for the inspection of computer source code or the quality or security of computer code.

Class 35: Recording, reading, remote reading and/or viewing of data, in particular consumption data in supply networks for gas, water, heat and electricity, and calculation of consumption costs for gas, water, heat and electricity and preparation of invoices.

Class 37: Installation, configuration, maintenance and repair of apparatus and instruments for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing of data, in particular consumption data in supply networks for gas, water, heat and electricity; maintenance of computer hardware.

Class 38: Electronic data transmission and data reception for automatic meter reading, included in Class 38; telecommunications in the field of the gas, water and electricity supply sector, including communications with media supply equipment and related apparatus; telecommunications for use by suppliers of gas, water and electricity, including transmission of messages, computer aided transmission of messages and images, providing of access to databases and rental of telecommunications equipment; transmission of data, in particular consumption data in supply networks for gas, water, heat and electricity.

Class 42: IT services; hosting; software as a service (SaaS) and rental of software; maintenance and repair of software and apps, in particular software and apps in relation to the remote reading of consumption data in supply networks for gas, water, heat and electricity; testing (quality control), verifying and certifying of consumption meters; measuring, monitoring and analysis of data, in particular consumption data in gas, water, heat and electricity supply networks; all the foregoing to the exclusion of any services for the inspection of computer source code or the quality or security of computer code.

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

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Data processing apparatus; computers are identically contained in both lists of goods.

The contested data storage media; data storage apparatus and equipment, and electrical and mechanical accessories include, as broader categories, the opponent's magnetic data carriers, recording discs. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested water meters, heat meters, electricity meters, gasometers and liquid flow meters of all kinds and components therefor, included in Class 9; apparatus and instruments for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing data, in particular data in supply networks for gas, water, heat and electricity; electric and electronic apparatus and instruments for remote control, telecounting and telemetry, in particular instruments for reading, calculating, collecting and recording data in supply networks for gas, water, heat and electricity are included in, or overlap with, the opponent's broad category of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments. Therefore, they are identical.

The contested mobile apps; software, in particular for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing data in supply networks for gas, water, heat and electricity are similar to the opponent's data processing equipment and computers because they coincide in distribution channels and relevant public. Moreover, they are complementary and produced by the same undertakings.

Contested services in Class 35

The contested recording, reading, remote reading and/or viewing of data, in particular consumption data in supply networks for gas, water, heat and electricity, and calculation of consumption costs for gas, water, heat and electricity and preparation of invoices are included in the opponent's broad category of office functions. Therefore, they are identical.

Contested services in Class 37

The contested installation, configuration, maintenance and repair of apparatus and instruments for measuring, recording, monitoring, reading, remote reading, transmitting, analysing and/or viewing of data, in particular consumption data in supply networks for gas, water, heat and electricity; maintenance of computer hardware are similar to the opponent's weighing, measuring and signalling apparatus and instruments; data processing equipment and computers since they are distributed through the same distribution channels to the same relevant public. Moreover, they originate from the same undertakings.

Contested services in Class 38

The contested electronic data transmission and data reception for automatic meter reading, included in Class 38; telecommunications in the field of the gas, water and electricity supply sector, including communications with media supply equipment and related apparatus; telecommunications for use by suppliers of gas, water and electricity, including transmission of messages, computer aided transmission of messages and images, providing of access to databases and rental of telecommunications equipment; transmission of data, in particular consumption data in supply networks for gas, water, heat and electricity are included in the opponent's broad category of telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested IT services include, as a broader category, the opponent’s development of software. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s services.

The contested hosting, software as a service (SaaS) and rental of software; maintenance and repair of software and apps, in particular software and apps in relation to the remote reading of consumption data in supply networks for gas, water, heat and electricity are similar to the opponent's design and development of computers and software because they coincide in distribution channels and relevant public. Moreover, they are rendered by the same undertakings.

The contested testing (quality control), verifying and certifying of consumption meters; measuring, monitoring and analysis of data, in particular consumption data in gas, water, heat and electricity supply networks are similar to the opponent's industrial analysis and research services because they coincide in distribution channels and relevant public. Moreover, they are rendered by the same undertakings.

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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

 

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.

For part of the public, such as the Hungarian-speaking part of the public, the verbal elements ‘SONAE’ and ‘SONAR’ have no meaning and are distinctive to an average degree. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public to whom the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the letters ‘SONA’ and in their corresponding sounds. However, they differ in the letter/sound of the letter ‘E’ of the earlier mark and in the letter/sound of the letter ‘R’ of the contested sign. Visually, the signs also differ in the stylization of the signs which, in any case, is not particularly elaborate or sophisticated and will not lead the consumer’s attention away from the verbal elements themselves.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 under assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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 services are partly identical and partly similar. The signs are visually and aurally similar to an average degree on account of the fact that the signs coincide in four letters out of five. The conceptual aspect does not influence the present assessment. The fact that the signs differ in their last letters and in their stylization is not sufficient to counteract the overwhelming similarities.

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).

Moreover, 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).

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-speaking part of the public. 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 well founded on the basis of the opponent’s international trade mark registration No 1 036 924 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Opposition Division

 

 

Helena GRANADO CARPENTER

María del Carmen COBOS PALOMO

Michal KRUK

 

 

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.