OPPOSITION No B 3 094 157

Carl Zeiss AG, Carl-Zeiss-Straße 22, 73447 Oberkochen, Germany (opponent), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Polytec GmbH, Polytec-Platz 1-7, 76337 Waldbronn, Germany (applicant), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative).

On 01/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 157 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300

REASONS

On 10/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 070 901 ‘Pro.Surf’ (word mark), namely against all the goods in Class 9. The opposition is based on international trade mark registration designating the Benelux, Czech Republic, Denmark, Finland, France, Greece, Ireland, Italy, Poland, Portugal, Spain, Sweden and the United Kingdom, No 812 444 ‘PRO’ (word mark) and on German trade mark registration No 30 318 245 ‘PRO’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

Earlier UK right

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that international trade mark registration No 812 444 designating the United Kingdom, no longer constitutes a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on this earlier right.

Earlier international registration No 812 444

In its notice of opposition of 10/09/2019, the opponent accepted that the necessary information for this earlier trade mark be imported from the relevant online official database, accessible through TMView, and that this source be used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

According to the notice of opposition, the present opposition is based on international trade mark registration No 812 444 designating several EU Member States, including Finland, and in relation to the following goods:

Class 9 Coordinate measuring apparatus and their parts.

However, both the relevant online official database, namely WIPO’s ‘Madrid Monitor’ database accessible through TMview, and the extract of said official database, submitted by the opponent on 25/02/2020, within its time limit to submit further facts, evidence and arguments in support of the opposition, convey the following information.

 On 21/10/2005, the National Board of Patents and Registration of Finland confirmed the total provisional refusal, notified on 28/02/2005, of international trade mark registration No 812 444.

 As a result of a limitation published on 05/08/2004 international trade mark registration No 812 444 was registered in all the territories for which it has been invoked in the present case for the following goods:

Class 9: Coordinate measuring apparatus and their parts, with the exception of electric and electronic measuring and control apparatus for vehicle drive and braking systems.

Therefore:

 as the international registration no longer had effect in Finland when the opposition was filed, the opposition is inadmissible and must therefore be rejected as far as it is based on international trade mark registration No 812 444 designating Finland;

 the Opposition Division will take into account the wording of the list of goods of international trade mark registration No 812 444 as indicated in WIPO’s ‘Madrid Monitor’ database and in the extract of said database provided by the opponent, that is to say, coordinate measuring apparatus and their parts, with the exception of electric and electronic measuring and control apparatus for vehicle drive and braking systems in Class 9.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 22/05/2019. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Benelux, Czech Republic, Denmark, Ireland, Greece, Spain, France, Italy, Poland, Portugal and Sweden, as well as in Germany respectively, from 22/05/2014 to 21/05/2019 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

International registration No 812 444:

Class 9: Coordinate measuring apparatus and their parts, with the exception of electric and electronic measuring and control apparatus for vehicle drive and braking systems.

German trade mark registration No 30 318 245:

Class 9: Coordinate measuring devices and their parts.

On 02/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 07/06/2020 to submit evidence of use of the earlier trade marks. On 07/08/2020, within the time limit which had been extended, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Attachment 1: an invoice dated 26/10/2018, issued by Carl Zeiss Industrielle Messtechnik GmbH, to Ford España S.L. for the purchase of a coordinate measuring device referred to as ‘PRO’.

The invoiced amount exceeds EUR 300 000.

 Attachment 2: an undated brochure in Spanish, ‘Productividad visible con PRO® y PRO T®’, including several references to the earlier marks in its plain text and displaying the earlier marks on apparatus in at least one of its pictures:

 Attachment 3: a purchase order dated 26/12/2011, issued by Mercedes Benz España, S.A. to Carl Zeiss Industrielle Messtechnik GmbH for an amount exceeding EUR 900 000.

There is no reference to the earlier marks.

 Attachment 4: an undated document partly in English, referred to by the opponent as a technical document, including several references to the earlier marks in its plain text and displaying the earlier marks on several apparatus, for instance:

.

 Attachment 5: a purchase order dated 11/05/2018, issued by Mercedes Benz España, S.A. to Carl Zeiss Industrielle Messtechnik GmbH for an amount exceeding EUR 250 000.

There are several references to the earlier marks.

 Attachments 6 and 7: offers dated 01/09/2017 and 05/05/2017, issued by Carl Zeiss Iberia, S.L. to Iveco España, S.L. and Hispaplasti, S.A respectively.

The first offer does not include any amounts, whereas the second offer is for an amount exceeding EUR 100 000.

There are several references to the earlier marks in these offers, and their cover letter includes a picture of apparatus displaying the earlier marks:

.

 Attachments 8 and 9: invoices dated 26/02/2019 and 22/06/2018, issued by Carl Zeiss Iberia, S.L. to Ford España S.L. for the repair and maintenance of goods referred to as ‘PRO’.

 Attachment 10: a purchase order dated 21/05/2015, issued by Edscha Santander, S.A. to Carl Zeiss Iberia, S.L. for an upgrade of goods referred to as ‘PRO’.

 Attachment 11: an article in a publication in Spanish from the opponent ‘Noticias de Carl Zeiss’, dated 02/12/2014, and referring to the earlier marks (e.g. as ‘ZEISS PRO’ and ‘ZEISS PRO premium’).

 Attachment 12: an invoice dated 25/11/2015, issued by Carl Zeiss Industrielle Messtechnik GmbH to Ford España S.L. for the purchase of coordinate measuring devices referred to as ‘PRO’.

The invoiced amount exceeds EUR 700 000.

 Attachment 13: an invoice dated 09/07/2019, issued by Carl Zeiss Industrielle Messtechnik GmbH to Carl Zeiss Slovakia, s.r.o., indicating that the shipment of an order made on 30/01/2019, for the purchase of goods referred to as ‘PRO’ is to be shipped to Yanfeng Slovakia Automotive in Slovakia.

The invoiced amount exceeds EUR 200 000.

 Attachment 14: an invoice dated 28/04/2020, issued by Carl Zeiss Industrielle Messtechnik GmbH to Carl Zeiss Sp. z.o.o., indicating that the shipment of an order made on 09/12/2019, for the purchase of goods referred to as ‘PRO’ is to be shipped to Mercedes Benz Manufacturing in Poland.

The invoiced amount exceeds PLN 2 400 000.

 Attachment 15: an invoice dated 11/02/2020, issued by Carl Zeiss Industrielle Messtechnik GmbH to Carl Zeiss S.p.A., indicating that the shipment of an order made on 02/08/2019, for the purchase of goods referred to as ‘PRO’ is to be shipped to OMR Modena Srl in Italy.

The invoiced amount exceeds EUR 400 000.

 Attachment 16: an invoice dated 13/11/2019, issued by Carl Zeiss Industrielle Messtechnik GmbH to Carl Zeiss S.A.S., indicating that the shipment of an order made on 17/05/2019, for the purchase of goods referred to as ‘PRO’ is to be shipped to SMART France SAS in France.

The invoiced amount exceeds EUR 400 000.

 Attachment 17: an invoice dated 19/12/2018, issued by Carl Zeiss Industrielle Messtechnik GmbH to Volkswagen Pozna Sp. z o.o. in Poland for the purchase of, inter alia, goods referred to as ‘PRO’.

The invoiced amount exceeds EUR 600 000.

 Attachment 18: an invoice dated 21/09/2018, issued by Carl Zeiss Industrielle Messtechnik GmbH to Ford Romania S.A. in Romania for the purchase of goods referred to as ‘PRO’.

The invoiced amount exceeds EUR 800 000.

 Attachment 19: an invoice dated 14/11/2017, issued by Carl Zeiss Industrielle Messtechnik GmbH to Carl Zeiss Ltd., for the purchase of goods referred to as ‘PRO’ destined for Jaguar Land Rover Ltd. in the UK (indicated as consignee).

The invoiced amount is close to EUR 300 000.

 Attachment 20: a catalogue ‘Horizontalarm-Messgeräte’ in German from Carl Zeiss Industrielle Messtechnik GmbH, dated in July 2014 (as can be derived from the reference ‘DE_60_020_168I Printed in Germany MAC-CZ-VII/2014 Uoo’ on its last page), including several references to the earlier marks in its plain text and displaying the earlier marks on several apparatus.

 Attachment 21: a catalogue ‘Horizontal-arm measuring machines’ in English from Carl Zeiss Industrielle Messtechnik GmbH, dated in June 2016 (as can be derived from the reference ‘EN_60_020_168I Printed in Germany MAC-CZ-VI/2016 Uoo’ on its last page), including several references to the earlier marks in its plain text and displaying the earlier marks on several apparatus.

 Attachment 22: a catalogue ‘Industrial Quality Solutions – Connected Portfolio’ in English from Carl Zeiss Industrielle Messtechnik GmbH, dated in January 2020 (as can be derived from the reference ‘EN_60_025_0044I Printed in Germany SCH-CZ-I/2020 PAoo’ on its last page), referencing the following on page 16 with regard to ‘Horizontal Arm CMMs’:

ZEISS CARMET and ZEISS PRO horizontal-arm measuring machines measure car body parts with reliable accuracy and efficiency – by contact and optically. Is a stable foundation available? How stable are the temperature conditions? How long can the inspection take? ZEISS offers an appropriate and comprehensive solution, including fixtures, software, sensors and service from ZEISS depending on the requirements and environmental conditions at the customer’s site.

 Attachment 23: a screenshot taken from the website www.zeiss.de via the Wayback Machine web archive on 02/08/2016, including references to ‘ZEISS PRO/PRO T’ and ‘ZEISS PRO’.

 Attachment 24: two links to videos on YouTube where, in the opponent’s words, ‘the product and the brand are displayed’, dated 2016 and 2019.

 Attachment 25: a catalogue ‘ZEISS PRO® / ZEISS PRO T® Specifications’ in English from Carl Zeiss Industrielle Messtechnik GmbH, dated in May 2016.

 Attachment 26: an article published on www.emo-hannover.de, entitled ‘Three-dimensional measuring machines – ZEISS PRO und ZEISS PRO T’, printed on 06/08/2020, but referring to EMO Hannover’s exhibition of September 2019 and indicating, inter alia, the location of the booth of Zeiss.

 Attachments 27 and 28: undated excerpts from www.zeiss.com/us and www.zeiss.es, both referring to ‘ZEISS PRO’ and ‘PRO T’.

Assessment of the evidence

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

Place of use

As can be inferred from the addresses of the opponent’s customers mentioned in the invoices submitted as attachments 1, 12, 14, 15, 16 and 17 and their currency (EUR and PLN), the places of use are Spain, Germany, France, Italy and Poland. As regards Germany in particular, according to Article 18(1), second subparagraph, point (b), EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. This provision applies mutatis mutandis to the earlier German mark. Therefore, regardless of the evidence of use that directly refers to Germany, such as the catalogue submitted as attachment 20 and the screenshot taken from www.zeiss.de submitted as attachment 23, the sales by Carl Zeiss Industrielle Messtechnik GmbH to customers in, inter alia, Spain, France, Italy, Poland, Romania and Slovakia constitute genuine use in Germany (also see by analogy Boards of Appeal decision from 14/07/2010, R 602/2009‑2, RED BARON, § 42).

However, none of the documents refers to the other countries designated by the earlier international trade mark registration, namely the Benelux-countries, Czech Republic, Denmark, Ireland, Greece, Portugal and Sweden. Indeed, the bulk of the evidence relates to either France (attachment 16), Germany (attachments 20, 23 and 26), Italy (attachment 15), Poland (attachments 14 and 17) and Spain (all attachments 1 to 12 with the exception of attachment 4), or to territories that cannot, or not any longer, be taken into consideration, namely attachments 13 (relating to Slovakia), 18 (relating to Romania), 19 (relating to the UK) and 27 (relating to the United States of America). For reasons that will become apparent below (extent of use), the remaining evidence is not sufficient proof of use in these territories.

Time of use

The invoices submitted as attachments 1, 12 and 17, issued to customers in Spain and Poland and deriving from a Germany-based company, are dated within the relevant period.

The invoice submitted as attachment 16, issued to a customer in France, postdates the relevant period. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, attachment 16 confirms use of the opponent’s mark within the relevant period. This is because this invoice, issued approximately six months after the relevant period, clearly refers to an order that was made during the relevant period, namely on 17/05/2019.

However, neither of the invoices submitted as attachments 14 and 15, issued to customers in Poland and Italy respectively, are dated within the relevant period, nor are the ordering dates mentioned therein. Therefore, these invoices fail as regards the requirement of time of use. As regards Poland, although attachment 14 postdates the relevant period, this is counterbalanced – for reasons that will be clear below (extent of use) – because attachment 17 is dated within the relevant period. As regards Italy, the opponent failed to prove genuine use within the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

Use of the mark need not be quantitatively significant for it to be deemed genuine. It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Genuine use is not excluded only because all use involves the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking that owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 50; 08/10/2014, T‑300/12, Fairglobe, EU:T:2014:864, § 36).

In this respect, it is evident that the opponent operates in a very specific market sector, providing important players in (inter alia) the automotive market with highly specialised apparatus, the installment of which seemingly is time-consuming, entails specific know-how and requires highly-qualified personnel. It goes without saying that the opponent’s goods are expensive, as they cost several hundred thousand euro. Taking into account their price and technicalities, it is safe to assume that the opponent’s goods are not purchased overnight, but that their purchase is the result of lengthy consideration and consultation, and possibly pre-sale meetings and negotiations. It is also safe to assume that these apparatus are not purchased very frequently, as they are expected, inter alia for the aforementioned reasons (specification, cost, decision process, …), to last for a long period. Therefore, although the evidence submitted by the opponent does not indicate very frequent sales, as the opponent has only submitted one invoice for France, two invoices – with one of them not dated within the relevant period – for Poland, and, as regards Spain, inter alia, one invoice, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks in relation to the goods covered by the earlier marks, as far as Germany, Spain, France and Poland are concerned.

However, no conclusions can be drawn as to how many products have actually been offered for sale or sold within the Benelux, Czech Republic, Denmark, Ireland, Greece, Italy, Portugal and Sweden. As explained above, none of the documents specifically relates to these territories, or the use within the relevant period as is the case for Italy. None of the documents provides the Opposition Division with sufficient information concerning the commercial volume, the duration and the frequency of use in the above territories.

The technical document submitted as attachment 4 and the catalogues submitted as attachments 21, 22 and 25 are in English, and therefore may admittedly have targeted customers in some of the aforementioned territories. This is because it is not uncommon to provide customers of highly technical apparatus such as the opponent’s goods with brochures, catalogues and explanatory documents in English. However, even if these catalogues were printed or accessible online, there is no evidence that these were distributed and if so to whom, or accessed online and if so by whom, or that they resulted in the sale of the opponent’s goods.

As far as the presence on the internet – as proven by the screenshots from www.zeiss.de and www.zeiss.es (attachments 23 and 28) and the links to YouTube (attachment 24) – is concerned, the standard applied when assessing evidence in the form of printouts from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on the aforementioned websites can show, inter alia, the nature of its use or the fact that goods displaying the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use, unless the website also shows the place, time and, in this particular case, especially the extent of use, or if this information is otherwise provided.

Although there were catalogues and a presence on the internet, this does not necessarily prove that transactions were made or if so to what extent.

The Opposition Division cannot base its assessment on suppositions or inferences and assume that the earlier mark has been the subject of large-scale sales. As European Union case-law has consistently held, ‘genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42). Therefore, in the absence of other supporting documentation, the extent of use of the earlier international trade mark registration during the relevant period in relation to the opponent’s goods cannot be determined, nor can the use be considered sufficient as to create or preserve an outlet for the goods concerned, as far as the designations of Benelux, Czech Republic, Denmark, Ireland, Greece, Italy, Portugal and Sweden are concerned.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, most of the evidence, including the invoices (attachments 1, 12, 14, 15, 16 and 17), the brochure (attachment 2), the technical document (attachment 4), the catalogue (attachment 20) and the screenshot from www.zeiss.de (attachment 23) show use of the earlier marks ‘PRO’, either affixed on the opponent’s apparatus or as a direct reference to the relevant goods, such as in the documents’ plain text.

In view of the above, the evidence shows that the earlier marks were used in accordance with their function, and in relation to the goods covered, namely:

International registration No 812 444:

Class 9: Coordinate measuring apparatus and their parts, with the exception of electric and electronic measuring and control apparatus for vehicle drive and braking systems.

German trade mark registration No 30 318 245:

Class 9: Coordinate measuring devices and their parts.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use, during the relevant period, of international trade mark registration No 812 444 in Spain, France and Poland, and of German trade mark registration No 30 318 245. The opposition is rejected insofar as it is based on international trade mark registration designating the Benelux, Czech Republic, Denmark, Ireland, Greece, Italy, Portugal and Sweden, as the opponent did not prove genuine use for these territories.

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

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

International trade mark registration designating Spain, France and Poland No 812 444:

Class 9: Coordinate measuring apparatus and their parts, with the exception of electric and electronic measuring and control apparatus for vehicle drive and braking systems.

German trade mark registration No 30 318 245:

Class 9: Coordinate measuring apparatus and their parts.

The contested goods are the following:

Class 9: Optical measuring apparatus for surface measurement.

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.

As the opponent correctly pointed out, the goods concerned are measuring apparatus. They have the same nature and purpose, and have a similar, if not the same, method of use. It cannot be excluded that these goods also coincide in their producers and relevant public. Furthermore, they may be in competition. Therefore, the goods concerned are, if not identical, at least similar to a high degree.

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.

The relevant public are users likely to use both the goods covered by the earlier mark and the goods covered by the mark applied for (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23; appeal 10/07/2009, C‑416/08 P, Quartz, EU:C:2009:450, dismissed).

In the present case, the goods found to be (at least) similar to a high degree are directed at business customers with specific professional knowledge or expertise.

Taking into account that the relevant goods are expensive, technically-sophisticated goods, and considering the knowledge, experience and purchase involvement of the relevant public, the degree of attention is high.

c) Distinctiveness of the earlier marks and comparison of the signs

PRO	Pro.Surf
Earlier trade marks	Contested sign

The relevant territories are Germany, Spain, France and Poland.

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).

In addition, the distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion. In the present case, the opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation. Consequently, the present assessment will rest on the earlier marks’ inherent distinctiveness.

The sole element of the two earlier marks is the word ‘PRO’. This word merely denotes a particular positive or appealing quality or function of the goods, namely that they are intended for ‘professionals’ or are ‘supporting’ something (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 29-32). When dealing with the distinctiveness of the earlier marks, they should always be considered to have at least a minimum degree of inherent distinctiveness. Therefore, even if the word ‘PRO’ is descriptive, the Opposition Division will consider the earlier marks to be, at best, distinctive to a low degree in relation to the goods concerned.

The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The contested sign consists of two verbal elements, ‘Pro’ and ‘Surf’, separated by a full stop. As explained above, the word ‘Pro’ is at best distinctive to a low degree for the goods concerned. Most of the relevant public will perceive the word ‘Surf’ as referring to the sport consisting of riding on big waves in the sea on a special board. For this part of the public, this verbal element is not descriptive, allusive or otherwise weak in relation to the relevant goods, and is therefore considered distinctive to a normal degree. However, as the contested goods relate to surface measurement and the relevant public is highly specialised, it cannot be excluded that part of the relevant public may see, as the opponent correctly suggested, an abbreviation of ‘surface’ in the word ‘Surf’. This could be the case for instance for part of the French-speaking public, as ‘surface’ is the same word in English and French. However, ‘Surf’ is not a usual abbreviation of ‘surface’ (at least neither party has adduced evidence to corroborate such a claim). It would take a considerable mental effort, that is to say several mental steps, to bypass the common meaning of ‘Surf’ to perceive it as an abbreviation of ‘surface’. Therefore, contrary to the opponent’s claims, it is considered to be distinctive also for this part of the relevant public, if not to a normal degree, at least to a below-average degree.

Visually and aurally, the signs coincide in, at best, the weak verbal element ‘Pro’ and its sound, whereas they differ in the contested sign’s verbal element ‘.Surf’ and its sound.

As the coincidence between the signs is confined to an element that has at best a weak degree of distinctiveness, it is the most distinctive element in the contested sign that is likely to catch the consumers’ attention and therefore weakens the visual and aural similarity between the marks in question.

Taking into account the above, the coincidence in the verbal element ‘Pro’ can only lead to a low degree of visual and aural similarity between the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs under comparison. They will be associated with the meaning of ‘Pro’ given above, and the contested sign will convey the additional concept of ‘Surf’ (or ‘surface’).

Taking into account that the degree of similarity between signs will be lowered if their coinciding element has a limited degree of distinctiveness, the signs are conceptually similar only to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out in order to calculate the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused as to origin due to similarities that solely pertain to weak elements.

Relevant consumers only rarely have the chance to make a direct comparison between the different signs and must rely on an imperfect recollection of them. However, a high degree of attention by the relevant consumer may lead to the conclusion that they will not confuse the marks, despite the lack of direct comparison between them (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 95).

The signs are visually, aurally and conceptually similar to a low degree. The relevant public consists exclusively of the professional public whose degree of attention is high. The earlier marks have a low degree of distinctiveness. Although the signs coincide in the verbal element ‘Pro’, and this term is located – as the opponent correctly pointed out – at the beginning of the contested sign, this is not sufficient for the relevant public to be confused with regard to the origin of the goods.

In the present case, as explained above, the coinciding verbal element ‘Pro’ is the least distinctive element in the contested sign, whereas its additional verbal element ‘.Surf’ has a higher intrinsic distinctive character than the verbal element ‘Pro’ and serves to sufficiently differentiate the sign from the earlier marks. As a direct consequence, consumers will not focus their attention on ‘Pro’, but rather on ‘.Surf’ as an indicator of origin. This difference is particularly important since it puts conceptual distance between the signs and will therefore help the professional consumers who are purchasing very expensive apparatus which are infrequently purchased whilst at the same time play a quintessential role within their work processes.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

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

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

The Opposition Division

Solveiga BIEZA

Christophe DU JARDIN

Martin MITURA

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.