OPPOSITION No B 3 104 268

Bosch Sicherheitssysteme GmbH, Robert-Bosch-Platz 1, 70839 Gerlingen, Germany (opponent), represented by Dieter Alvermann, Wernerstraße 1, 70469 Stuttgart, Germany (professional representative)

a g a i n s t

Roger Technology S.R.L., Via Sandro Botticelli 8, 31021 Mogliano Veneto, Italy (applicant), represented by Praxi Intellectual Property S.p.A., Via Francesco Baracca 5/a, 30173 Venezia Mestre, Italy (professional representative).

On 04/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 268 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 097 517 for the figurative mark . The opposition is based on European Union trade mark registration No 17 390 071 for the word mark ‘PRINCIPA’. 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

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

Class 9: Public address systems and call systems, consisting of installations for transmission, recording, reproduction and amplification of sound, including installations for recording, amplifying and transmission of background music, components therefor and loudspeakers, microphones, amplifiers and electric cables.

After limitation requested by the applicant on 02/03/2020, the contested goods are the following:

Class 7: Servomotors; gear motors other than for land vehicles; mechanical devices and hydraulic devices, all of the aforesaid being designed to open and close doors, gates, garages, barriers, shutters, curtains, shades, blinds, jalousies, mosquito nets and skylights for civil and industrial purposes.

Class 9: Remote control receivers; remote controls; active infra-red sensors; warning lights [flashing beacons]; digital selectors; digital keyboards; key selectors; electronic boards for receivers and control units; proximity readers for magnetic cards and transponders; control units for electrically connecting sensitive edge safety devices; electromechanical safety edges; electric devices for opening, closing, managing and programming the use of doors, gates, garages, barriers, shutters, curtains, shades, blinds, jalousies, mosquito nets and skylights for civil and industrial purposes; electric and electronic devices for producing and storing electricity from solar sources; electric and electronic devices for managing and monitoring car parks.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

Moreover, 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.

As a starting point, and for the sake of good order, the Opposition Division notes that the following comparison has been made in the absence of arguments that could lead to other conclusions. The degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). In the present case, some of the goods that are included in the contested list require a particular technical knowledge in order to verify if any of the criteria set out in the judgment of 29/09/1998 C-39/97, Canon, EU:C:1998:442 are met. Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known will not be speculated on or extensively investigated ex officio by the Opposition Division (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

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 7

The opponent’s goods are, in general terms, public address systems and call systems, that is, systems comprising microphones, amplifiers, loudspeakers, and related equipment. It increases the apparent volume (loudness) of a human voice, musical instrument, or other acoustic sound source or recorded sound or music. The contested goods in Class 7 are motors as well as mechanical and hydraulic devices. The Opposition Division sees no points in common between the conflicting goods and finds highly unlikely that the relevant public would in any way assume an economic link between the respective producers of the goods. The goods involved have different purposes and are not complementary to each other or in competition; they do not target the same relevant public or share the same distribution channels. Furthermore, they do not originate from the same undertakings. Therefore, the contested goods in Class 7 are dissimilar to all the opponent´s goods.

Contested goods in Class 9

As stated above, the opponent´s goods in Class 9 are public address systems and call systems consisting of installations for recording, transmitting, reproducing and amplification of sounds.

On the other hand, the applicant´s goods may be grouped as follow:

1.Sensors as well as safety, signalling and controlling devices which include the contested remote control receivers; remote controls; active infra-red sensors; warning lights [flashing beacons]; digital selectors; digital keyboards; key selectors; electronic boards for receivers and control units; proximity readers for magnetic cards and transponders; control units for electrically connecting sensitive edge safety devices; electromechanical safety edges; electric devices for opening, closing, managing and programming the use of doors, gates, garages, barriers, shutters, curtains, shades, blinds, jalousies, mosquito nets and skylights for civil and industrial purposes; electric and electronic devices for managing and monitoring car parks.

2. Devices that capture energy to a later consumption which include the contested electric and electronic devices for producing and storing electricity from solar sources.

All these contested goods are dissimilar to the opponent´s goods. The goods involved have different purposes and are not complementary to each other or in competition; they do not target the same relevant public or share the same distribution channels and they do not originate from the same undertakings. Therefore, the contested goods in Class 9 are dissimilar to all the opponent´s goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

Helen Louise MOSBACK

Claudia SCHLIE

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.