OPPOSITION Nо B 3 108 808

Casa Prem, S.L., Calle Gamonal, 45, Pol Ind. Vallecas - Nave A/B, 28031 Madrid, Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative)

a g a i n s t

Rilo Systemtechnik GmbH & Co. KG, Weinerpark 9-11, 48607 Ochtrup, Germany (applicant), represented by Dr. Wallscheid & Drouven Partnerschaftsgesellschaft, Am Mittelhafen 10, 48155 Münster, Germany (professional representative).

On 06/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 808 is upheld for all the contested goods, namely:

Class 9: All the goods in this class.

Class 11: All the goods in this class.

2. European Union trade mark application No 18 138 616 is rejected for all the contested goods, listed under section a) of this decision. It may proceed for the remaining non-contested goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 15/01/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 138 616 ‘COOLTRACK’ (word mark), namely against all the goods in Classes 9 and 11. The opposition is based on, inter alia, Spanish trade mark registrations No 3 646 222 (figurative mark) and No 2 666 077 (figurative mark) in relation to which 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registrations No 3 646 222 and No 2 666 077.

a) The goods

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

 Spanish trade mark registration No 3 646 222 (earlier mark 1)

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, control (inspection), teaching rescue equipment; apparatus and instruments for the conduction, distribution, transformation, accumulation, regulation or control of electricity; apparatus for recording, transmitting or reproducing sound or images; magnetic record carriers, acoustic discs; CD; DVD and other digital recording media; mechanisms for prepaid devices; cash registers, calculating machines, data processing equipment; electronic agendas, computers; software; magnetic encoders; computer printers, computer and computer memories; data processing apparatus; magnetic and optical data carriers; floppy; magnetic encoded identification bracelets; printed circuits; computer game programs; computer operating system programs; semiconductors: fire extinguishers.

 Spanish trade mark registration No 2 666 077 (earlier mark 2)

Class 11: Lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water distribution and sanitary equipment.

The contested goods are the following:

Class 9: Recording apparatus; electronic units for transmitting audio signals; control panels [electricity]; switching power supply apparatus; panels for the distribution of electricity; software; digital signal processing apparatus; data collection apparatus; electric control apparatus; coolant-temperature sensors; climate control digital thermostats; measuring and control devices for air conditioning technology; apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; switchgear [electric]; electric current transformers; electronic transformers; electric current control devices; programmable controllers; electronic controllers; thermal controls; access control devices; regulating apparatus, electric.

Class 11: Heating apparatus; heating, ventilating, and air conditioning and purification equipment (ambient); sanitary installations, water supply and sanitation equipment; water supply installations; lighting and lighting reflectors; cooling installations; air-conditioning installations; air-conditioning apparatus; filters for air conditioning; central air conditioning installations; residential air conditioning units; radiators [for industrial air-conditioning purposes]; ventilation [air-conditioning] installations and apparatus; radiant ceiling plates; roof fans; downlights; ceiling fans with integrated lights; taps for the control of water flow.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

As a preliminary remark, the contested goods in Class 9 will be compared to those of earlier mark 1, while the contested goods in Class 11 will be compared to the goods of earlier mark 2.

Contested goods in Class 9

Software is identically contained in both lists of goods.

The contested recording apparatus; electronic units for transmitting audio signals; digital signal processing apparatus; data collection apparatus are included in, or overlap with, the opponent’s broad category of data processing equipment. Therefore, they are identical.

The contested electric control apparatus; climate control digital thermostats; programmable controllers; electronic controllers; thermal controls; regulating apparatus, electric are included in, or overlap with, the opponent’s broad category of control (inspection) equipment. Therefore, they are identical.

The contested control panels [electricity]; switching power supply apparatus; panels for the distribution of electricity; apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; switchgear [electric]; electric current transformers; electronic transformers; electric current control devices are identical to the opponent’s apparatus and instruments for the conduction, distribution, transformation, accumulation, regulation or control of electricity, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested coolant-temperature sensors; measuring and control devices for air conditioning technology are included in, or overlap with, the opponent’s measuring equipment and/or control (inspection) equipment. Therefore, they are identical.

The contested access control devices are security devices which are closely linked to the opponent’s magnetic encoded identification bracelets, which may relate to bracelets for access control. To this extent, they are complementary and have the same ultimate purpose. Moreover, they may have the same producers and target the same relevant public through the same distribution channels. Therefore, they are at least similar.

Contested goods in Class 11

The contested heating apparatus; heating, ventilating, and air conditioning and purification equipment (ambient); cooling installations; air-conditioning installations; air-conditioning apparatus; central air conditioning installations; residential air conditioning units; radiators [for industrial air-conditioning purposes]; ventilation [air-conditioning] installations and apparatus; radiant ceiling plates; roof fans are identical to the opponent’s heating, refrigerating and ventilating equipment, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested sanitary installations, water supply and sanitation equipment; water supply installations; taps for the control of water flow are identical to the opponent’s water distribution and sanitary equipment, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested lighting and lighting reflectors; downlights; ceiling fans with integrated lights are identical to the opponent’s lighting equipment, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested filters for air conditioning are closely linked to the opponent’s refrigerating and ventilating equipment because they are components that are often produced and/or sold by the same undertaking that manufactures the end product, target the same public through the same distribution channels, as spare parts, which are also sold independently of the final product. Moreover, they are complementary as these filters are very important for the proper functioning of the air conditioning apparatus. Therefore, they are similar.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

The goods found to be identical and similar target the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Earlier mark 1 Earlier mark 2	COOLTRACK
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 earlier marks are figurative signs, both include the verbal element ‘KOOLTECH’. It will be perceived as a fanciful term by Spanish consumers. Therefore, it is distinctive to a normal degree (05/11/2014, R 2026/2013‑5, COOLTECH URBAN AGRICULTURE (FIGURATIVE MARK) / KOOLTECH (FIGURATIVE MARK) et al., § 39).

However, the majority of the public will perceive the abbreviation ‘TECH’ in the earlier marks. Although signs must not be artificially dissected, when a sign contains sequences of letters that constitute words, prefixes or suffixes that suggest a concrete meaning, or that resemble words the consumers already know, it is likely that the public will split the mark into the words or parts they recognise (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 verbal component ‘TECH’ will be understood by the relevant public as an abbreviation referring to the words ‘technology’ or ‘technical’ (‘tecnología’ or ‘tecnológico’ in Spanish, which are also usually abbreviated as ‘tec’). The use of ‘tech’, short for ‘technology’, is customary, and has become part of general usage in word combinations, such as ‘high tech’ for ‘high technology’ and ‘biotech’ for ‘biotechnology’ (19/11/2014, T‑138/13, VISCOTECH, EU:T:2014:973, § 77). The association with the Spanish words ‘tecnología’ and ‘tecnológico’ by the relevant public has been confirmed by the Board of Appeal (06/07/2016, R 2277/2015‑2, VulTech (fig.) / BULLTECH, § 32). Bearing in mind the nature of the relevant goods in Classes 9 and 11, which all may be of a technical nature, or provided or implemented using technology or are technology related, this element will be seen as indicating a characteristic of the goods, for instance, the fact that they are produced according to the latest technology. Consequently, the distinctive character of this element is at most weak.

In earlier mark 1, the figurative element depicted underneath the verbal element may be perceived as a mere logotype or abstract figurative element with no particular meaning, or also as representing the letter ‘c’, depicted in the same stylised form within the verbal element ‘kooltech’. Since it has no meaning for the relevant goods, this element is distinctive to a normal degree.

In earlier mark 2, the letters ‘O’ are depicted as globes, hemispheres of the Earth (although the poor quality of the picture makes them hardly recognisable). If perceived, they may convey a concept that, in principle, is not directly related to the relevant goods and, therefore, not devoid of distinctiveness. However, the public will rather perceive them as a mere graphical means of drawing attention to the verbal element, which has a stronger impact on the overall impression of the sign. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way. Furthermore, the sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Therefore, this will not be taken into consideration for the purposes of comparison.

As regards the abovementioned figurative elements of the earlier marks, it must be 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59). This applies even more to the remaining figurative aspects of the earlier marks (typography of their verbal elements, and the rectangular background of earlier mark 2), which are fairly standard and will not be given much trade mark significance, if at all.

Neither of the earlier marks has elements that could be considered clearly more dominant (eye-catching) than other elements.

As regards the contested sign, the verbal element ‘COOLTRACK’ will be perceived as a meaningless fanciful word by the majority of the relevant public. Therefore, it is distinctive to a normal degree.

Visually, the signs coincide in the string of letters ‘*OOLT**C*’. However, they differ in the first letters of the signs (‘K’ v ‘C’), the middle letters (‘E’ v ‘RA’) and the last letters (‘H’ v ‘K’). Therefore, they coincide in a significant number of their letters, in almost identical order (the coincidence in the double letter ‘O’ in their first part, which is quite striking for the relevant public), having a similar length (eight v nine letters). Moreover, although their first letters are quite different, the remaining differing letters either occupy the middle part of the signs, with a mitigated impact, or have a rather similar shape (‘H’ v ‘K’).

Moreover, the signs differ in the additional figurative elements of the earlier marks, namely their typography, the logotype of earlier mark 1, and the globes, if perceived, and background of earlier mark 2. However, these differences will have a lesser impact in the overall impression given by the signs than the verbal elements for the reasons stated above.: in essence, they are either of a limited distinctive character or play a secondary role.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the earlier marks will be pronounced as /KOOL-TEK/ and the contested sign as /KOOL-TRAK/ (emphasis added for the differences). Therefore, they coincide in the number of syllables, rhythm and in the sound of all the letters except those produced by the letters ‘E’ v ‘RA’, which are in their second parts, and between the coinciding letter/sounds /KOOL-T**K/, thus with a lesser impact.

Consequently, the signs are aurally highly similar.

Conceptually, the verbal elements of the signs have no meaning as a whole for the relevant public and a conceptual comparison between these elements is not possible. Although the component ‘TECH’ of the earlier marks and the globes of earlier mark 2, if perceived, may evoke a concept, the former is of very limited distinctiveness (and cannot indicate the commercial origin) and the latter play a rather secondary and decorative role. They would only introduce (at most) a very minor conceptual difference, so they cannot significantly influence the conceptual assessment.

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

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods 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 the weak element ‘TECH’, 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).

The goods are partly identical and partly similar. They target the general public and professionals, whose degree of attention may vary from average to higher-than-average. The earlier marks have a normal degree of inherent distinctiveness.

The signs are visually similar to a below-average degree and aurally highly similar, while the conceptual aspect cannot significantly influence the comparison. The letters of the verbal elements of the signs coincide for the most part, and are placed in an almost identical order (‘KOOLTECH’ v ‘COOLTRACK’), which produce a similar overall impression, especially aurally, as explained above in section c). The differences in these elements and the additional figurative elements of the earlier marks, which have less relevance in the overall impression, are insufficient to outweigh the commonalities and exclude the likelihood of confusion.

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).

Taking all of the above into account, and given the similar overall impressions created by the signs and the degree of similarity between the relevant goods (identical for the majority and similar for the remainder), there is a likelihood of confusion between the signs. This is even more so the case for the general public, which is more prone to confusion.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 3 646 222 and No 2 666 077. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-contested goods and services in Classes 6, 17, 19, 37, 40 and 42.

As these earlier marks lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights and grounds invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Félix ORTUÑO LÓPEZ

Gonzalo BILBAO TEJADA

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.