OPPOSITION Nо B 3 105 801

Ingenieria y Economia del Transporte, S.M.E. M.P. S.A., Paseo de la Habana, nº 138, 28036 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

IN-ECO, spol. s r.o., Radlinského 13, 03401 Ružomberok, Slovakia (applicant), represented by Romana Záthurecká, Kláry Jarunkovej 4, 97401 Banská Bystrica, Slovakia (professional representative).

On 16/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 801 is partially upheld, namely for the following contested goods:

Class 9: Flowmeters; pressure gauges

2. European Union trade mark application No 18 135 722 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 11/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 135 722 (figurative mark). The opposition is based on the following earlier marks:

1) European Union trade mark registration No 17 776 436 (figurative mark);

2) European Union trade mark registration No 17 781 881 (figurative mark);

3) European Union trade mark registration No 17 916 686 (figurative mark);

4) Spanish trade mark registration No 3 110 455 ‘INECO’ (word mark);

5) Spanish trade mark registration No 3 110 456 (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 goods and services on which the opposition is based are the following:

1) European Union trade mark registration No 17 776 436 (earlier mark 1)

2) European Union trade mark registration No 17 781 881 (earlier mark 2)

Class 9: Computer software; computer programs for the fields of traffic and transport; software for mobile device management; computer software for global positioning systems; global positioning system [GPS] apparatus; global positioning instruments; global positioning instruments; computer software applications, downloadable; downloadable applications for use with mobile devices; computer application software for streaming audio-visual media content via the internet; electronic control systems; access control systems (electric -); measuring sensors; electronic publications, downloadable; data storage media; alarm systems; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems; controllers (regulators); regulating apparatus, electric; electric control apparatus; telematic apparatus; wireless communications equipment and apparatus; wire communication apparatus; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures.

Class 42: Design and development of computer hardware and software; updating of computer software; providing back-up computer programs and facilities; consultancy in the field of computers; computer software consultancy; computer technology consultancy; software development, programming and implementation; installation and maintenance of computer programs; configuration of computer networks by software; copying of software; rental of software; maintenance of software; data recovery services.

3) European Union trade mark registration No 17 916 686 (earlier mark 3)

Class 37: Building construction; construction consultancy; building construction supervision; construction information; rental of building material and machines; repair and conservation of buildings and structures; repair information; interior and exterior cleaning of buildings; installation services provided in the construction of buildings and structures.

Class 42: Engineering services; technological consultation services; research, design, planning and supervision of structures, infrastructure and buildings in the civil, railway, aeronautical and naval engineering sectors; conducting technical project studies; research in the field of environmental protection; quality control; planning and consultancy in the field of architecture; development of construction projects; geological testing and analysis; design of engineered building systems; analysis of the structural behaviour of building materials; research on building construction or city planning; development of computer programs designed for use in construction and engineering; measuring the environment within civil engineering structures; conducting engineering surveys.

4) Spanish trade mark registration No 3 110 455 (earlier mark 4)

5) Spanish trade mark registration No 3 110 456 (earlier mark 5)

Class 42: Engineering services; technological consultation services; research, design, planning and supervision of structures, infrastructure and buildings in the civil, railway, aeronautical and naval engineering sectors; conducting technical project studies; research in the field of environmental protection; quality control; planning and consultancy in the field of architecture; development of construction projects; geological testing and analysis; design of engineered building systems; analysis of the structural behaviour of building materials; research on building construction or city planning; development of computer programs designed for use in construction and engineering; measuring the environment within civil engineering structures; conducting engineering surveys.

The contested goods are the following:

Class 7: Bellows [parts of machines]; vacuum pumps [machines]; filters being parts of machines.

Class 9: Flowmeters; pressure gauges.

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 7

As a preliminary remark, and as pointed out by the applicant, it should be noted that the contested bellows [parts of machines] were originally filed in Slovak as ‘dúchadlá’. The applicant claimed that the correct translation of the Slovak indication is ‘blowers’.

However, the Opposition Division considers that, contrary to the applicant’s opinion, it is apparent from the translation included in the Harmonised Database that the Slovak indication corresponds to ‘bellows [parts of machines]’, which is a term in the alphabetical list of Class 7 of the Nice Classification (No 70350). The Harmonised Database is the European Union common list of terms of goods and services, pre-validated by the EU trade mark offices.

Furthermore, it is recalled that an application for an EUTM will be published in all the official languages of the European Union (Article 147(1) EUTMR). In the case of a discrepancy between the translation of the wording of the list of goods/services of an EUTM application published in the EUTM Bulletin and the original wording as filed, the definitive version of the list of goods/services is the text in the second language indicated by the applicant (Article 147(3) EUTMR), if the first language of the application is not one of the five languages of the Office. In the present case, the first language of the contested EUTM application is Slovak, and the second language is English. Consequently, the list of goods in the second language prevails.

The Opposition Division will hereby proceed with the analysis and comparison of the goods and services bearing in mind the official translation of the abovementioned goods.

The contested bellows [parts of machines]; vacuum pumps [machines]; filters being parts of machines are dissimilar to the opponent’s goods in Class 9 of earlier marks 1 and 2. The contested bellows [parts of machines] are devices used for blowing air into a fire in order to make it burn more fiercely. The contested vacuum pumps [machines] are pumps for exhausting gas from an enclosed space. The contested filters being parts of machines are porous articles or masses (as of sand or other materials) through which a gas or liquid is passed to separate out matter in suspension. These goods have no relevant connection to any of the opponent’s goods in Class 9, which encompass, broadly speaking, different kinds of software, applications, global positioning system apparatus and instruments, measuring, controlling and regulating apparatus, communication apparatus, electronic publications, data storage media and alarm systems. There is a clear difference in the natures and purposes of these goods, they are not produced by the same manufacturers nor found in the same sections of retail outlets. Furthermore, the goods are neither complementary nor in competition.

The abovementioned contested goods are also dissimilar to the services for which earlier mark 3 is registered in Class 37, which are mainly the construction, repair, cleaning, installation of buildings and structures, and the rental of building material and machines. Since, by nature, goods and services are dissimilar, similarity between goods and their installation, maintenance and repair can only be established when it is common in the relevant market sector for the manufacturer of the goods to also provide such services and the relevant public coincides, and the services are provided independently of the purchase of the goods (not aftersales services). These conditions are not fulfilled here, since the contested goods being specific machines and their parts do not have such a connection with the opponent’s services, which are related to the construction, repair, cleaning and installation of buildings and structures. Furthermore, rental services are in principle always dissimilar to the goods rented. Exceptions exist where it is common for the manufacturer of the goods to provide rental services. In the absence of evidence to the contrary, it must be concluded that it is not common for the manufacturers of machines and/or their parts to also provide rental services of those goods.

Dissimilarity is also found between these contested goods and the opponent’s services in Class 42 of all the earlier marks. The nature and purpose of the contested goods have been outlined above, whereas the opponent’s services in Class 42 of earlier marks 1 and 2 are computer hardware and software-related services, and the opponent’s services in Class 42 of earlier marks 3, 4 and 5 are mainly engineering and technological consultation services, research, design, planning and supervision of structures, infrastructure and buildings in the civil, railway, aeronautical and naval engineering sectors, and other services related to construction and engineering, including development of computer programs thereof. These services have no relevant connection to the contested goods on account of the vast difference between the natures, purposes and usual producers/providers. Furthermore, they are neither complementary nor in competition.

Therefore, the contested bellows [parts of machines]; vacuum pumps [machines]; filters being parts of machines are dissimilar to all the opponent’s goods and services in Classes 9, 37 and 42.

Contested goods in Class 9

The contested flowmeters are instruments that measure the rate of flow of a liquid or gas within a pipe or tube. The contested pressure gauges are instruments for measuring, among others, fluid pressure. Consequently, the contested goods are types of measuring apparatus and thus are included in the broad category of, or overlap with, the opponent’s measuring sensors in Class 9 covered by earlier marks 1 and 2. Therefore, they are identical.

However, these contested goods are dissimilar to the services in Class 37 of earlier mark 3 and Class 42 of all the earlier marks, since they have no relevant connection to any of the opponent’s services on account of the vast difference between the natures, purposes and usual producers/providers. Furthermore, they are neither complementary nor in competition.

Conclusion in relation to earlier marks 3, 4 and 5

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 contested goods are clearly dissimilar to all of the services of earlier marks 3, 4 and 5, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on these earlier marks.

As seen above, the contested goods have been found identical to some of the goods covered by earlier marks 1 and 2 and the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier mark 1, because it is the most relevant earlier mark vis-à-vis the contested sign.

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 found to be identical are primarily directed 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 purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

For the purposes of this comparison, the Opposition Division will assess the signs from the perspective of the English-speaking part of the public, which includes the Anglophone countries, as well as consumers with sufficient knowledge of English as a foreign language in the other language areas. This is because, for this part of the relevant public, the differing verbal elements in the earlier mark have less weight than the coinciding element, for the reasons explained in detail below.

The earlier mark is a figurative mark composed of the verbal elements ‘NAVtools’, ‘SUITE’ and ‘ineco’, written in slightly stylised letters, depicted partly in blue (‘NAV’ and ‘ineco’) and partly in shades of grey (‘tools’ and ‘SUITE’), and an abstract figurative element depicting smaller blue ovals within a large circle with light- and dark-grey shaded areas. The figurative element partly overlaps with the earlier mark’s verbal elements. The word ‘NAVtools’ is written in a larger font. Furthermore, the verbal element ‘SUITE’, written in a smaller font in light grey, is placed in between the two thin lines separating the verbal elements ‘NAVtools’ and ‘ineco’. The word ‘ineco’, located next to a very small figurative element depicting three vertical lines in different shades of blue, is clearly separated from, and positioned below, the verbal elements ‘NAVtools’ and ‘SUITE’.

It should be also noted 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, and irrespective of their degree of distinctiveness, the figurative elements have a lower impact on the consumers’ perception of the earlier mark than its verbal elements.

The contested sign is a figurative mark composed of the verbal element ‘INECO’, written in slightly stylised upper-case letters, depicted partly in white (the letters ‘IN’ and part of the middle letter ‘E’) and partly in green (part of the letter ‘E’ and the letters ‘CO’), placed on a square black background.

It is recalled that the relevant consumers will break a verbal element down into parts 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 common element ‘INECO’ contains the letter string ‘ECO’. Admittedly, this is a commonly used abbreviation in English for concepts such as ‘ecological’ and ‘economical’. Nevertheless, the different colours of the letters in the word ‘INECO’ in the contested sign, as described above, do not clearly separate out any element as the letter strings ‘INE’ and ‘ECO’ are visually connected. In addition, there is also no visual or other aspect that would facilitate the breaking down of the word ‘ineco’ in the earlier mark. Consequently, it can be reasonably assumed in the present case that the relevant public will not discern any meaningful components in the common word ‘INECO’ and rather perceive it as an indivisible unit as a whole. It has no meaning for this public and no connection to the relevant goods, and is, therefore, considered distinctive.

However, when perceiving the verbal element ‘NAVtools’ in the earlier mark, the relevant public under analysis will split it into the elements ‘NAV’ and ‘tools’. This is because those elements are visually separated by different colours and upper- and lower-case letters, and at least ‘tools’ has a clear meaning for this public. The component ‘NAV’ might be understood as an abbreviation for ‘navigation’, and the word ‘tools’ refers to instruments or simple hand-held equipment used to do a particular kind of work (e.g. measuring tools). Consequently, and as argued by the applicant, the element ‘NAVtools’ might be perceived as a shortened version of ‘navigation tools’ and is, therefore, distinctive to a low degree in relation to the relevant goods, as some of the modern navigation systems (e.g. inertial navigation system) use particular types of measuring instruments in the form of sensors to fulfil their function. The verbal element ‘SUITE’ will be understood by the public under analysis as a series of items intended to be used together (e.g. a set of the opponent’s measuring sensors) and is, therefore, non-distinctive for those goods. Considering the above, the word ‘ineco’ is the most distinctive verbal element in the earlier mark.

In terms of dominance, the earlier mark’s figurative element is visually eye-catching due to its size and position in the sign and, therefore, can be considered clearly more dominant than other elements. The contested sign has no dominant element.

Visually, the signs coincide in the word ‘INECO’, which is the only verbal element of the contested sign and the most distinctive verbal element in the earlier mark. They differ in the stylisation and colours of their verbal elements, the square black background of the contested sign, the additional verbal elements ‘NAVtools’ and ‘SUITE’ (where ‘NAVtools’ has a low degree of distinctiveness and ‘SUITE’ is non-distinctive) and the figurative elements of the earlier mark.

Therefore, and considering the weight of their particular elements, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘INECO’, which is the only verbal element of the contested sign and the most distinctive verbal element in the earlier mark. The pronunciation differs in the sound of the verbal element ‘NAVtools’ of the earlier mark, which has no counterpart in the contested sign.

The additional verbal element ‘SUITE’ of the earlier mark is unlikely to be pronounced by the public under analysis on account of its dimensions, thinness, position and drab light-grey colour.

Therefore, and considering the weight of their particular elements, the signs are aurally similar to an average degree.

Conceptually, although the public under analysis will perceive the meanings of some elements in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak and non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods have been found partly identical and partly dissimilar to the opponent’s goods and services. Those found to be identical target primarily the business customers with specific professional knowledge or expertise, whose degree of attentiveness may vary from average to high. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods at issue.

The signs are visually similar to a low degree, aurally similar to an average degree and conceptually not similar. Although the signs differ in the stylisation and colours of their common element, the square black background of the contested sign and the additional figurative and verbal elements of the earlier mark, these differences have less weight and are secondary for the reasons outlined above.

Consequently, the Opposition Division considers that the presence of those elements is insufficient to safely distinguish the marks in the context of the goods found to be identical and due to the presence of the identical word ‘INECO’, which plays an independent and distinctive role in the earlier mark.

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 identity between the goods is sufficient to offset the low degree of visual similarity and the lack of conceptual similarity between the signs.

The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities. Indeed, 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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or by adding verbal or figurative elements to them, in order to denote a new product line or to endow a trade mark with a new, modern image. In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is real. It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is therefore perfectly conceivable that the relevant public, even when displaying a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

The applicant submitted various documents along with its observations in order to explain the background and activities of its company. Most of these documents refer to facts and events taking place before the contested application was filed. However, it is reminded that the right to an EUTM begins on the date when the EUTM application is filed and not before, and it is from that date onwards that the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the opponent’s rights, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Furthermore, the documents postdating the filing date of the contested application do not contain any information relevant for the present proceedings. In light of the foregoing, the applicant’s arguments and evidence related thereto must be set aside.

Considering all the above, there is a likelihood of confusion (including likelihood of association) on the English-speaking part of the relevant public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 776 436. It follows that the contested trade mark must be rejected for the goods found to be identical to the goods of the abovementioned earlier mark 1.

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)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the European Union trade mark registration No 17 781 881 . This earlier right invoked by the opponent covers the same scope of the goods and services as earlier mark 1. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Agnieszka PRZYGODA

Solveiga BIEZA

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.