OPPOSITION No B 3 096 436

TEKO Gesellschaft für Kältetechnik mbH, Carl-Benz-Str. 1, 63674 Altenstadt, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Teco Energy Sp. z o.o., ul. Franciszka Klimczaka 8/11, 02-797 Warszawa, Poland (applicant).

On 11/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 436 is partially upheld, namely for the following contested goods and services:

Class 11: Regulating and safety accessories for water and gas installations; filters for industrial and household use; refrigerating and freezing equipment; heating, ventilating, and air conditioning and purification equipment (ambient); industrial treatment installations; drying installations; sanitary installations, water supply and sanitation equipment; burners, boilers and heaters; flues and installations for conveying exhaust gases; cooking, heating, cooling and preservation equipment, for food and beverages; personal heating and drying implements.

Class 42: Testing, authentication and quality control; science and technology services; design services; IT services.

2. European Union trade mark application No 18 077 922 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 11: Nuclear installations; lighting and lighting reflectors; sun tanning appliances; igniters.

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 18 077 922 for the figurative mark . The opposition is based on European Union trade mark registration No 14 435 689 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and (b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Pursuant to 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 7: Compressors for refrigerators; machines for chemical industry; machines for preparing beverages [industrial]; machine tools; filling machines; condensers (parts of machines), pressure regulators, pressure valves, printing rollers for machines; electromechanical machines for chemical industry; condensing installations; axial capacitors, radial capacitors, coaxial capacitors, aerial bundled capacitors; air condensers; steam engines, blowing machines for the compression, exhaustion and transport of gases; blowing engines; hangers [parts of machines]; compressors (machines); radiators [cooling] for motors and engines; condenser lenses; pneumatic controls for machines, for motors and for engines; pumps for heating installations; pumps (parts of machines or engines); vacuum pumps [machines], centrifugal pumps, lubricating pumps; heat exchangers (parts of machines); regulators (parts of machines); fans for motors and engines; carburettors; steam boilers (parts of machines); self-regulating fuel pumps.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking supervision, life-saving and teaching apparatus and instruments; data processing apparatus and computers; computer software recorded; integrated circuit chips; computer operating programs recorded; computer programs recorded, downloadable; temperature indicating apparatus.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air generators, other than machine components; refrigerating machines; cooling installations and machines; cooling installations for liquids; refrigerating apparatus and machines; refrigerating containers; cold storage rooms; refrigerating cabinets; ventilation (air-conditioning) installations and apparatus; heat accumulators, heat exchangers, heating installations utilising the waste heat from cooling installations for heating purposes; fans (air-conditioning); evaporators; recooling apparatus for cooling media; cooler pipes and finned tubes (parts of refrigerating installation); refrigeration units; freezing machines; air conditioning installations; air conditioning fans; steam generating installations; ventilating installations; heat pumps; heat regenerators; heat accumulators using the waste heat from cooling installations for heating purposes; water cooling installations; heat pumps; fans (parts for air conditioning installations); ventilator frames (parts of air conditioning installations); none of the above pertaining to kitchen and bathroom appliances, porcelain products and industrial containers.

Class 35: Retailing and wholesaling in relation to cooling machines, cooling installations, heat exchangers, evaporators, condensers, air conditioning installations; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class; professional business analysis; professional business research and information; business brokerage, organisation of business contacts, collective buying, commercial evaluation, import and export, negotiation and brokerage for all of the aforesaid services, procurement services, for others.

Class 37: Installation, cleaning, repair and maintenance in relation to cooling machines, cooling installations and machines, heat exchangers, evaporators, condensers, air conditioning installations; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class; information in relation to the aforesaid services; brokerage for all of the aforesaid services.

Class 41: Education, providing of training, entertainment, arranging, organisation and conducting of seminars, courses, workshops and congresses; planning of seminars for educational purposes; arranging and conducting of exhibitions for educational purposes in relation to cooling technology; publication of periodicals, magazines and newsletters; electronic publication of information.

The contested goods and services are the following:

Class 11: Regulating and safety accessories for water and gas installations; filters for industrial and household use; refrigerating and freezing equipment; heating, ventilating, and air conditioning and purification equipment (ambient); industrial treatment installations; drying installations; sanitary installations, water supply and sanitation equipment; nuclear installations; lighting and lighting reflectors; burners, boilers and heaters; flues and installations for conveying exhaust gases; cooking, heating, cooling and preservation equipment, for food and beverages; personal heating and drying implements; sun tanning appliances; igniters.

Class 42: Testing, authentication and quality control; science and technology services; design services; IT services.

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 11

The goods in Class 11 of the earlier trade mark contain the following limitation ‘none of the above pertaining to kitchen and bathroom appliances, porcelain products and industrial containers’. While this limitation has been duly taken into account in the below comparison (in relation to each contested item), to avoid repetition it will not be expressly mentioned, but will be considered included by way of reference.

The contested refrigerating and freezing equipment at least overlaps with the opponent’s refrigerating apparatus and machines; freezing machines respectively. Therefore, they are identical.

The contested heating, ventilating and air conditioning equipment at least overlaps with the opponent’s apparatus for heating and ventilating; ventilation (air-conditioning) installations and apparatus. Therefore, they are identical.

The contested drying installations at least overlap with the opponent’s apparatus for drying. Therefore, they are identical.

The contested sanitary installations, water supply and sanitation equipment at least overlap with the opponent’s apparatus for water supply and sanitary purposes. Therefore, they are identical.

The contested burners, boilers and heaters at least overlap with the opponent’s apparatus for heating. Therefore, they are identical.

The contested personal heating and drying implements at least overlap with the opponent’s apparatus for heating and drying. Therefore, they are identical.

The contested industrial treatment installations are used for treating waste that is produced by industry as an undesirable by-product. The treated industrial waste (or effluent) may be reused or released into the environment. This category of goods encompasses a wide range of industrial treatment goods, inter alia, heating apparatus for use in the treatment of waste material. Therefore, these contested goods at least overlap with the opponent’s heating installations utilising the waste heat from cooling installations for heating purposes. Therefore, they are identical.

Considering the aforementioned limitation of the opponent’s goods in Class 11, the contested cooking and cooling equipment, for food and beverages is at least similar to the opponent’s apparatus for cooking and cooling installations and machines, as they usually coincide in producer, relevant public and distribution channels.

The contested preservation equipment, for food and beverages is at least similar to the opponent’s refrigerating machines, as they usually coincide in producer, relevant public and distribution channels.

The contested heating equipment, for food and beverages is at least similar to the opponent’s apparatus for heating, as they usually coincide in producer, relevant public and distribution channels.

The contested flues and installations for conveying exhaust gases are pipes or channels for conveying exhaust gases from a fireplace, oven, furnace or boiler. Therefore, they are similar to the opponent’s installations for heating purposes. These goods may have the same manufacturers, relevant public and distribution channels. Moreover, they are complementary.

The contested regulating and safety accessories for water installations are similar to the opponent’s apparatus for water supply, since they target the same public, have the same points of sale and are often produced by the same undertakings. Furthermore, they are complementary.

The contested regulating and safety accessories for gas installations and the opponent’s apparatus for heating have the same producers and can be complementary. They are also offered to the same customers. Moreover, it is likely that these goods are sold through the same distribution channels. Consequently, they are similar.

The contested filters for industrial and household use; purification equipment (ambient) are types of apparatus that modify the condition of indoor air by removing contaminants to improve air quality. They are similar to the opponent’s ventilation (air-conditioning) installations and apparatus as they both have the purpose of modifying the condition of air. Although they differ in nature, the goods are equipment that is usually installed in houses, offices, other buildings and cars, in order to create a pleasant and healthy environment by controlling and monitoring air purity, temperature, or quality. These goods might originate from the same manufacturers, have the same channels of distribution and target the same public.

The remaining contested goods, namely nuclear installations, lighting and lighting reflectors, sun tanning appliances and igniters, do not have anything in common with the opponent’s goods. In particular, nuclear installations are highly specialised goods, requiring very specific know-how and technology, and target a very specific and narrow group of consumers. Lighting and lighting reflectors comprise a wide range of products intended to produce or reflect light, such as vehicle lamps, light bulbs and light reflectors. Sun tanning appliances are quite specific in terms of production and also nature, purpose and method of use. Igniters are devices for igniting a fuel mixture in an engine or causing an electric arc. All the aforementioned goods are dissimilar to the opponent’s goods in Class 11, as they differ in producer, purpose, method of use, distribution channels and relevant public. In addition, they are neither complementary nor in competition. Furthermore, they are also dissimilar to the opponent’s goods and services in Class 7 (various machines and machine parts, etc.), Class 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking supervision, life-saving and teaching apparatus and instruments; computers; recorded computer software, etc.), Class 35 (various retailing and wholesaling services, various rental services and business-related services, etc.), Class 37 (installation, cleaning, repair, maintenance and rental services in relation to cooling machines, etc.) and Class 42 (education, training, entertainment and publication services, etc.). These opponent’s goods and services are different in nature, purpose and method of use, have different end users and distribution channels, furthermore, they are not complementary or in competition.

Due to the above reasons and the lack of any argumentation or evidence from the opponent to prove the opposite, the contested goods enumerated in the preceding paragraph are dissimilar to all the opponent’s goods.

Contested services in Class 42

The contested IT services are similar to the opponent’s computer software recorded in Class 9. IT services refer to the application of business and technical expertise to assist organisations in the creation, management and optimisation of, or access to, information and business processes. They include, inter alia, the design and development of computer software. Furthermore, manufacturers of computer software will also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the opponent’s goods and the contested services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary.

The contested design services are services that plan, invent, and create and present ideas for a particular purpose. They are similar to the opponent’s computer software recorded in Class 9, as they have the same distribution channels, are aimed at the same relevant public and are often produced by the same undertaking.

The contested science and technology services are similar to the opponent’s education in Class 41 considering that universities carry out a lot of research, not only as academic training but as a stand-alone part of what they do. Universities bid on tenders to be able to provide research services, and as such this is a service that can be provided to third parties. Therefore, these services can be provided by the same providers and through the same distribution channels. They also coincide in the general purpose of acquiring and/or imparting or disseminating knowledge or skills.

The contested testing, authentication and quality control is worded broadly and, depending on its exact nature, could be related to several of the general categories protected by the earlier mark (e.g. installation, maintenance and repair of cooling machines, cooling installations and machines) and refers to the process of checking products before they are brought to market, after their installation or during their maintenance. The contested testing is a process used to identify characteristics or problems. The contested authentication is the action of establishing something as genuine or valid. The contested quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. This includes, inter alia, testing and authentication, machinery testing and quality control after the installation or repair of these type of products or as part of their maintenance services. Consequently, the contested testing, authentication and quality control is similar to a low degree to some of the opponent’s goods, such as installation, repair and maintenance in relation to cooling machines, cooling installations and machines in Class 37, since they can have the same providers and end users, and are complementary.

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 to varying degrees 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.

The verbal element ‘energy’ of the contested sign is meaningful or may be associated with some meanings in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as in Ireland, Malta and the United Kingdom.

The verbal element of the earlier figurative mark ‘TEKO’ has no meaning for the relevant public and is, therefore, distinctive. In addition, it is written in slightly stylised silver upper-case letters and the second letter, ‘E’, has the upper part of the main vertical line missing. The stylisation of the earlier mark is not particularly striking and, therefore, only has a limited trade mark significance. Moreover, the figurative element of the earlier mark will be perceived as an eight-pointed star and is a less distinctive figurative element of an essentially ornamental nature.

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

The contested sign is a figurative mark containing the verbal element ‘TECO’, which has no meaning for the relevant public and is, therefore, distinctive. In addition, it is depicted in slightly stylised black upper-case letters with the exception of the letter ‘O’, which is black and green. Furthermore, underneath the verbal element ‘TECO’, there is the verbal element ‘energy’ written in fairly standard, considerably smaller grey lower-case letters, which means, inter alia, ‘dynamic quality’, ‘the capacity of acting or being active’, ‘usable power (such as heat or electricity)’ (information extracted from Merriam-Webster Dictionary on 05/08/2020 at https://www.merriam-webster.com/dictionary/energy). In the context of the goods and services in question: various environmental control apparatus and installations in Class 11 and, for example, testing, authentication and quality control services in Class 42, it has (at most) a weak distinctive character as it could be understood as referring to the characteristics of the contested goods and services, namely that they produce energy, use energy to function and/or that they have a dynamic quality. In addition, given its smaller size and secondary position in the contested sign, it has less impact on the overall impression. Therefore, the verbal element ‘TECO’ is considered more dominant (eye-catching) than the other elements.

Regarding the figurative elements of the conflicting signs, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their letters ‘TE*O’. However, they differ in their respective third letter, ‘K’ in the earlier mark versus ‘C’ in the contested sign, and the additional verbal element ‘energy’ of the contested sign, which has no counterpart in the earlier mark. Nonetheless, considering the latter’s secondary position and (at most) weak distinctive character, it has a very limited impact on the consumers’ perception of the marks.

In addition, the signs differ in the figurative element of the earlier mark and their slight stylisations of the verbal elements, which are rather standard and not particularly striking, as explained above.

Therefore, considering that the sole verbal element of the earlier mark differs only in one middle letter from the dominant, distinctive and initial verbal element of the contested sign, and that the figurative elements of the signs have a lesser impact, as explained above, the signs are similar to an average degree.

Aurally, the sole verbal element of the earlier mark ‘TEKO’ is pronounced identically to the dominant verbal element of the contested sign, ‘TECO’. The pronunciation differs in the sound of the verbal element ‘energy’ of the contested mark, which has no counterpart in the earlier sign. However, since this verbal element has (at most) a weak distinctive character, and due to its secondary position in the contested sign, it has a limited trade mark importance.

Moreover, consumers generally refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and they tend to shorten marks containing several words. Therefore, it is likely that the verbal element ‘energy’ of the contested sign will not be pronounced at all and the contested sign will be referred to aurally as ‘TECO’ by the relevant public. In addition, the figurative elements of the conflicting signs are not subject to a phonetic assessment.

Therefore, the signs are, at least, aurally highly similar (they may even be identical, if ‘energy’ is not pronounced).

Conceptually, although the public under examination in the relevant territory will perceive the meaning of the verbal element ‘energy’ of the contested sign as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are conceptually not similar. Nonetheless, the impact of the only concept of the word ‘energy’ should not be overestimated due to its reduced impact on the consumer as an indicator of origin for the relevant goods and services.

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 examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all the factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark enjoys a normal degree of distinctiveness. The signs are visually similar to an average degree, aurally at least highly similar and conceptually not similar; however, the impact of the only concept (of the word ‘energy’) of the contested sign should not be overestimated, as explained above. In other words, the only differing semantic content of the contested sign will not be afforded much trade mark significance by the public and, therefore, cannot assist consumers in distinguishing between the marks.

The goods found to be identical and similar to varying degrees target the professional public and the public at large, and the degree of attention will vary from average to high. 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).

The signs coincide in the sequence of letters ‘TE*O’ of the sole verbal element of the earlier mark and the dominant and distinctive element of the contested sign, which will be perceived as its main badge of origin. They differ in their respective third letters and in the additional verbal element of the contested sign, ‘energy’, which is secondary and has (at most) a weak distinctive character, as explained above. In addition, the signs differ in their stylisations and the figurative element of the earlier mark, which have lesser impact on the consumers’ perception. Therefore, these differences cannot change the overall impression of similarity produced by the signs.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the heightened visual and aural similarities between the signs, as well as the absence of any relevant semantic difference, compensate for and outweigh the fact that some of the goods and services are similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 077 922. 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.

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 varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods and services are obviously not identical.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Reiner SARAPOGLU

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.