OPPOSITION Nо B 3 112 509

 

Electrofil Oeste Distribucion SL, Avda Franco Rodriguez Romero, Parcella 5, 06006 Badajoz, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Exeger Operations AB, Box 55597, 102 04 Stockholm, Sweden (applicant), represented by Swea IP Law AB, Kopparbergsvägen 6, 722 13 Västerås, Sweden (professional representative).

On 26/03/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 112 509 is partially upheld, namely for the following contested goods and services:

 

Class 9: Measuring, checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; measuring instruments and measuring and control instruments; apparatus and instruments for storing power; solar panels for use in heating, energy generation and recycling; data processing equipment; computers; calculating machines; computer software; photovoltaic apparatus for generating electricity; photovoltaic apparatus for converting solar radiation and light energy into electricity; solar cells for electricity generation, parts for solar cells, included in this class; solar panels; photovoltaic solar modules; solar batteries; solar battery chargers; solar batteries for domestic use; solar-powered rechargeable batteries; solar electronic apparatus and instruments and fittings thereto included in this class; solar portable electronic apparatus and instruments; solar powered telephones; solar powered radios; solar computers; solar computer tablets; solar ear phones; solar electronic sports simulators; tablets; portable computers; remote control; digital and electronic computer tablets; calibrating apparatus and instruments; electronic tracking devices; remote controls, remote control, controllers for machine tools, management software, control apparatus for software, checking (supervision) apparatus. Class 40: Generation of electricity from solar energy; custom assembly of materials for others. Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; design and development of software for control, regulation and monitoring of solar energy systems; research and design in the field of solar cell development; design and development of computer hardware and software; consultancy relating to solar cell technology.

2.

European Union trade mark application No 18 120 210 is rejected for all the above goods and services. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 26/02/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 120 210 ‘Electrofyl’ (word mark). The opposition is based on European Union trade mark registration No 17 288 499 (figurative mark), and on national Spanish trade mark registration No 3 685 608 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

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

 

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

 

a) The goods and services

 

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

 

European Union trade mark registration No 17 288 499 (earlier mark a))

Class 35: Wholesaling, via the internet and catalogue, and retailing of insulators, electrical insulating materials of all kinds and in all forms, electrical conductors, lighting apparatus, apparatus for ventilating, air-conditioning apparatus, electrical industrial material, namely contactors, relays, circuit breakers, limit switches, security and robot systems, electrical supports, namely electrical supports for electrical transport lines of medium and high voltage, overhead aerial electric lines, lighting towers, antenna support towers, both parabolic and omnidirectional, tools and small electrical equipment; Advertising; Marketing services; Import and export of insulators, electrical insulating materials of all kinds and in all forms, electrical conductors, lighting apparatus, apparatus for ventilating, air-conditioning apparatus, electrical industrial material, namely contactors, relays, circuit breakers, limit switches, security and robot systems, electrical supports, namely electrical supports for electrical transport lines of medium and high voltage, overhead aerial electric lines, lighting towers, antenna support towers, both parabolic and omnidirectional, tools and small electrical equipment.

Spanish trade mark registration No 3 685 608 (earlier mark b))

Class 42: Design and development of generation systems of renovative energies, consultant on energy saving, conducting studies of technical projects and investigation on the use of natural energy, technological consulting services in the generation of alternative energy.

The contested goods and services 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; measuring instruments and measuring and control instruments; apparatus and instruments for storing power; apparatus and instruments for recording, transmission or reproduction of sound or images; solar panels for use in heating, energy generation and recycling; data processing equipment; computers; calculating machines; computer software; photovoltaic apparatus for generating electricity; photovoltaic apparatus for converting solar radiation and light energy into electricity; solar cells for electricity generation, parts for solar cells, included in this class; solar panels; photovoltaic solar modules; solar batteries; solar battery chargers; solar batteries for domestic use; solar-powered rechargeable batteries; solar electronic apparatus and instruments and fittings thereto included in this class; solar portable electronic apparatus and instruments; solar powered telephones; solar powered radios; solar computers; solar computer tablets; solar ear phones; solar electronic sports simulators; portable electronic sports and fitness apparatus, being portable computers; electronic reading and writing apparatus; wireless communication apparatus; cell phones; cases adapted for mobile phones; tablets; cases for tablet computers; portable computers; sleeves for laptops; wireless headphones; loudspeakers; speakers for wireless; use; wireless keyboards; mouse pads; electric signs; light (traffic- -) apparatus [signalling devices]; safety helmets; sports glasses; helmets for use in sports; games software; head protection; goggles; remote control; digital and electronic computer tablets; telecommunication apparatus; video devices; calibrating apparatus and instruments; electronic tracking devices; fitness monitoring devices; remote controls, remote control, controllers for machine tools, management software, control apparatus for software, checking (supervision) apparatus; bags and fittings for the aforesaid goods included in class 9.

Class 40: Generation of electricity from solar energy; custom assembly of materials for others.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; design and development of software for control, regulation and monitoring of solar energy systems; research and design in the field of solar cell development; design and development of computer hardware and software; consultancy relating to solar cell technology.

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 term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

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

 

The contested sign covers in Class 9 goods whereas the earlier marks only cover services in Classes 35 and 42. By their nature, goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.

The services of Class 42 design and development of generation systems of renovative energies, of earlier mark b) are essentially technological services, research and design all relating to (renewable) energy, whereas the contested goods data processing equipment; calculating machines; computers; portable computers; tablets; digital and electronic computer tablets; electronic tracking devices; computer software; management software, control apparatus for software are broad categories and are essentially either data processing apparatus or software. Generation systems may very well and typically do consist of data processing equipment and/or software. These goods and the above-mentioned services usually coincide in producer/provider, relevant public and as far as data processing apparatuses of the earlier mark are concerned, distribution channels. Furthermore, they might be complementary and are therefore at least similar to a low degree.

The contested photovoltaic apparatus for generating electricity; solar panels; photovoltaic solar modules; solar batteries; solar battery chargers; solar batteries for domestic use; solar-powered rechargeable batteries; solar powered telephones; solar powered radios; apparatus and instruments for storing power; solar panels for use in heating, energy generation and recycling; photovoltaic apparatus for converting solar radiation and light energy into electricity; solar cells for electricity generation, parts for solar cells, included in this class; solar electronic apparatus and instruments and fittings thereto included in this class; solar portable electronic apparatus and instruments; solar computers; solar computer tablets; solar ear phones; solar electronic sports simulators are all specific goods relating to the generation, storage and use of renewal energies. Taking into account that the services of earlier mark b) design and development of generation systems of renovative energies, consultant on energy saving, conducting studies of technical projects and investigation on the use of natural energy, technological consulting services in the generation of alternative energy are all relating to renewal energies, the above mentioned goods may very well be the subject matter of the services design and development of generation systems of renovative energies, conducting studies of technical projects and investigation on the use of natural energy of earlier mark b). Moreover, the contested goods involve the use of renewable energies. In order to develop and adapt its goods to the specific demands and on a large industrial scale, it seems reasonable and, even necessary, to also engage the application of technological principles to the design of the mentioned apparatus and equipment as well as technical projects and investigations to properly assess the specific needs of the customers and the complexity of the tasks at issue. In light of the highly complex field of (renewable) energy production and related issues, the relevant public will expect the manufacturer of this type of apparatus to be also active in the field of the opponent’s services. In the view of the Opposition Division the above mentioned goods and services are therefore similar as they may coincide in producer/provider, relevant public and distribution channels.

Earlier mark a) covers in Class 35, inter alia, wholesale and retail services relating to specific goods, essentially various electrical materials, lighting apparatus and apparatus for ventilating and air-conditioning.

Retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

However, according to the case-law and current Office practice, retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T‑390/16, DONTORO dog friendship (fig.) /TORO et al., EU:T:2018:156, § 33; 07/10/2015, T‑365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34; Office’s guidelines, Part C Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 5.7, page 887 ff.). Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary, and the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

The principles set out above in relation to retail services apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).

It follows from the above that the contested measuring, checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming accumulating, regulating or controlling electricity; measuring instruments and measuring and control instruments; calibrating apparatus and instruments; checking (supervision) apparatus; remote control (listed three times), controllers for machine tools are at least similar to a low degree to wholesaling, via the internet and catalogue, and retailing of electrical conductors, electrical industrial material, namely contactors, relays, circuit breakers, limit switches of earlier mark a). This is because the goods being subject to the wholesale and retail services of earlier mark a), are at least similar to a low degree to the broad categories of the above-mentioned contested goods. In the view of the Opposition Division these goods are commonly offered for sale in the same specialised shops, may originate from the same producers, they belong to the same market sector and, therefore, are of interest to the same consumer.

The contested cases for tablet computers; sleeves for laptops; mouse pads; cases adapted for mobile phones; safety helmets; helmets for use in sports; head protection; sports glasses; goggles; games software; portable electronic sports and fitness apparatus, being portable computers; electronic reading and writing apparatus; fitness monitoring devices; electric signs; light (traffic-) apparatus [signalling devices]; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for recording, transmission or reproduction of sound or images; telecommunication apparatus; video devices; wireless communication apparatus; cell phones; wireless headphones; loudspeakers; speakers for wireless use; wireless keyboards; bags and fittings for the aforesaid goods included in class 9 [which includes the goods of Class 9 which have been found similar further above] are dissimilar to all services covered by the opponent's earlier rights because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 40

The contested generation of electricity from solar energy; custom assembly of materials for others are all services which are either directly relating to renewal energy or might be provided in the context of renewal energy. These services are therefore similar to the services in Class 42 design and development of generation systems of renovative energies, consultant on energy saving, conducting studies of technical projects and investigation on the use of natural energy, technological consulting services in the generation of alternative energy of earlier mark b). These services may coincide in purpose, nature, provider, relevant public and might be distributed though the same channels.

Contested services in Class 42

The contested consultancy relating to solar cell technology includes as broader category and/or overlaps with the opponent’s technological consulting services in the generation of alternative energy of earlier mark b). These services are therefore identical.

The contested design and development of computer hardware and software (listed twice); design and development of software for control, regulation and monitoring of solar energy systems; design in the field of solar cell development; scientific and technological services and research and design relating thereto; industrial analysis and research; research in the field of solar cell development are, if not identical, at least similar to the opponent’s design and development of generation systems of renovative energies; conducting studies of technical projects and investigation on the use of natural energy of earlier mark b), as these services are of the same nature and purpose. They typically coincide in provider, relevant public and distribution channels. Furthermore they might be 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 as well as business customers with specific professional knowledge or expertise.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

 

c) The signs

 

a) EUTM No 17 288 499  b) ES M3 685 608	Electrofyl
Earlier trade marks	Contested sign

 

 

The relevant territory is the European Union for earlier mark a) and Spain for earlier mark b).

 

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 earlier mark a) is made up, inter alia, of the Spanish terms ‘Material Eléctrico e Industrial’, which will be easily understood by the Spanish-speaking public for whom these elements, and as it will be further elaborated below, are non-distinctive. The remaining verbal element ‘Electrofil’ will therefore have a stronger impact on the perception of the mark by such public, which is the best-case scenario for the opponent. The Opposition Division finds it therefore appropriate to focus the comparison of signs on the Spanish-speaking part of the public.

Earlier mark a) is a figurative sign consisting of the verbal element ‘Electrofil’ depicted in large, black and standard letters. This element is placed in the middle of the sign. Placed underneath are additional verbal elements, namely ‘Material Eléctrico e Industrial’, which are however depicted in very small, hardly legible letters. Taking into account that these elements will be easily understood by the relevant public under analysis in the sense of ‘electrical and industrial material’, and the fact that the relevant services may all relate to electrical and/or industrial materials, these elements will be perceived as a mere descriptive reference to the nature of the services offered under this mark. These elements are therefore non-distinctive.

The element ‘Electrofil’ taken as a whole does not have any particular meaning and is therefore of normal distinctive character. Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case the relevant public will at least recognise the word ‘electro’ and associate it with ‘electricity’ or ‘electronic’ (electricidad and electrónico in Spanish), and therefore break this element into ‘Electro’ and ‘fil’. In the context of the relevant services, which are either directly or indirectly related to electric and/or electronic devices, ‘electro’ is of weak distinctive character, if any at all. The element ‘fil’ does not have any particular meaning with regard to the relevant services and is therefore of normal distinctiveness.

At last the earlier sign a) consists of an abstract graphical element in turquoise colours placed right to the verbal element ‘Electrofil’ and being reminiscent of a sail boat and waves. While this figurative element is rather fanciful, it has to be recalled that 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). Therefore, the figurative element of the contested sign will have little impact on the consumers’ overall perception of the sign.

The verbal element ‘Electrofil’ and the figurative element are by virtue of their position and size, the co-dominant (most eye-catching) elements of the earlier mark a).

Earlier mark b) is a figurative mark, too consisting of the verbal elements ‘Electrofil’ and ‘Suma’ depicted in standard, black respectively light grey coloured letters. Below these verbal elements is a graphical element showing an orange coloured ascending arrow as frequently used in charts. All these elements are placed within a circle consisting of an orange coloured and bold outer line. Within this outer line the additional verbal elements ‘Soluciones Especializadas’ (special solutions in English) in black colours, as well as ‘Eficiencia Energetica Renovables Automatizacion & Control’ (efficiency renewable energy automatization and control in English) depicted in white colours are located. These verbal elements are not only hardly legible, they are also merely descriptive in the context of the relevant services, which may all relate to renewable energy and solutions relating thereto and are therefore non-distinctive. The figurative elements are essentially basic geometric forms and will therefore, just like the colours, have a limited impact on the consumer’s perception of the marks, if any at all.

As regards to the element ‘Electrofil’ the same considerations as for earlier mark a) apply. The word ‘Suma’ will be associated with the meaning of ‘sum’, ‘total’, ‘addition’ or ‘balance’, which however in the context of the relevant services does not have any particular meaning and is therefore of normal distinctive character.

Although, earlier mark b) consist of various verbal as well as figurative elements, it has no element that could be considered clearly more dominant (being visually more eye-catching) than other elements.

The contested sign is a word mark consisting of the word ‘Electrofyl’, which taken as a whole has no particular meaning and is therefore of normal distinctive character. However, just as it is the case with the earlier marks, it will be dissected into the elements ‘Electro’ and ‘fyl’. As explained above, ‘Electro’ is of weak distinctive character in the context of the relevant goods and services, whereas ‘fyl’ has no particular meaning and therefore is of normal distinctiveness. As a word mark, the contested sign, by definition, does not have any dominant elements.

Visually, the signs coincide in the string of letters ‘E-L-E-C-T-R-O-F-*-L’, which represents almost the entire contested sign and the dominant verbal element of earlier mark a) as well as the distinctive verbal element ‘Electrofil’ of earlier mark b). The signs differ on account of one different letter (‘I’ v. ‘Y’) in the above-mentioned elements as well as the additional verbal element ‘Suma’ of earlier mark b). Furthermore, the signs differ on account of the various additional verbal as well as figurative elements of the earlier signs. These elements are, however, either of secondary nature or non-distinctive. Taking into account the different weighting of the various elements of the signs, they are considered to be visually similar to at least an average degree.

 

Aurally, similar considerations as for the visual comparison apply. The signs coincide in the pronunciation and the string of the letters ‘E-L-E-C-T-R-O-F-*-L’. As regards to this element the signs differ on account of only one letter (‘I’ v. ‘Y’), which, however, will be pronounced identically by the public under analysis. Furthermore, the signs differ on account of the additional letters ‘S-u-m-a’, which are only present in the earlier mark b). Furthermore, the signs differ in the additional verbal elements of the earlier marks. These elements are, however, of secondary nature, as explained above. In fact, these elements will likely not be pronounced by the relevant public at all. It has been confirmed by the case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. This is especially the case when the purely descriptive words can be easily separated from the dominant term (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). In view of the above, the signs are considered to be aurally similar to at least a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although neither ‘Electrofil’ / ‘Electrofyl’ as a whole have any meaning for the public in the relevant territory, the element ‘Electro’, included in the signs, albeit being of weak distinctive character, will be associated with the meaning explained above. While the other verbal elements of the earlier marks do have various meanings, most of them (except for the element ‘Suma’) are non-distinctive and therefore not capable of indicating any commercial origin. The element ‘Suma’ of earlier mark b), however will be perceived with certain meanings as explained above, whereas the various figurative elements of the earlier signs, either due to their level of abstraction or because of merely being basic geometric forms, will not. Considering the above, and in particular the fact that the signs conceptually only coincide in an element which is of weak distinctive character, the signs are considered to be conceptually similar to at most 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) Distinctiveness of the earlier marks

 

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non-distinctive and weak elements, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods and services are identical, similar to varying degrees or dissimilar. The goods and services found to be identical or similar to varying degrees target the public at large as well as professionals whose degree of attention will vary from average to high depending on the actual goods and services. The degree of inherent distinctiveness of the earlier trade marks is normal. Moreover, the signs are visually similar to at least an average, phonetically to at least a high degree and conceptually to at most a low degree.

The signs display considerable visual and in particular aural similarities. The signs are almost identical (safe for one letter) in their verbal element ‘Electrof*l’, which is not only (almost) the entire contested sign, but also represents the dominant verbal element of earlier mark a) and the distinctive verbal element ‘Electrofil’ of earlier mark b). While the signs do consist of various differences, it needs to be recalled that such differences are mainly limited (safe for the word ‘Suma’ of earlier mark b)) to secondary or non-distinctive elements and as such have a reduced impact on the perception of the signs by the relevant public. 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).

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

Taking into account all the circumstances of the case, the Opposition Division concludes that the differences between the signs are clearly outweighed by their similarities.

 

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, however, it remains unclear to what extent the previous cases referred to by the opponent are relevant to the present proceedings. In fact, the opponent merely copied extracts from various prior decision of the Office in its submissions without explaining what part thereof might be relevant for the present case and to what extent. In the view of the Opposition Division, and in the absence of any elaborating arguments of the opponent, none of the prior decisions is relevant for the present proceedings as they either refer to different marks with different levels of similarities or different goods and services.

In its observations, the applicant makes several considerations as regards to the differences between the businesses of the opponent and the applicant. In this regard, the Opposition Division notes that the examination of likelihood of confusion carried out by the Office is a prospective examination. The comparison of the goods and services must be based solely on the wording of the list of goods and/or services registered or for which protection is sought. Any actual or intended use not stipulated in the list of goods and/or services is, by contrast, irrelevant (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Likewise, the particular circumstances in which the goods and/or services in question are marketed and/or provided must not be taken into account in the analysis of the likelihood of confusion (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73). Consequently, the applicant’s arguments in this regard must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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 17 288 499 and Spanish trade mark registration No 3 685 608. 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, including the goods found to be similar to a low degree, to those of the earlier trade marks.

 

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. This conclusion applies likewise to the non-Spanish speaking public. The goods found to be dissimilar remain dissimilar irrespective of the relevant territories.

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

 

 

Anna BAKALARZ

Holger Peter KUNZ

Beatrix STELTER

 

 

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.