OPPOSITION Nо B 3 119 254

 

Battery Supplies N.V., Nijverheidslaan +50/56, 8540 Deerlijk, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative) 

 

a g a i n s t

 

Moslim El Abdouni, Rue Picard, 58-60, 1080 Bruxelles, Belgium (applicant), represented by Iannis Roman, 24 Rue Bel Air, 13006 Marseille, France (professional representative).

On 22/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 3 119 254 is upheld for all the contested goods.

2. European Union trade mark application No 18 143 120 is rejected in its entirety.

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

REASONS

 

On 12/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 143 120 (figurative mark). The opposition is based on European Union trade mark registration No 7 433 402 (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

 

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

 

Class 9: Batteries, namely starter batteries for cars and trucks; motorcycle batteries for motorcycles; semi-traction batteries for industrial cleaning machines; deep-cycle batteries for scissor lifts; stationery batteries for alarm systems and no-break systems; traction batteries for electrical forklifts; battery chargers.

The contested goods are the following:

 

Class 9: Batteries.

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

 

The contested batteries include, as a broader category, the opponent’s batteries, namely starter batteries for cars and trucks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

 

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 directed at 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 price, specialised nature and conditions of purchase of the goods in question. 

 

c) The signs

 

Earlier trade mark	Contested sign

 

The relevant territory is European Union.

 

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

 

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

The respective elements ‘XTREME’ and ‘EXTREMES’ are not meaningful in certain territories, as claimed by the opponent, for example in respect of the vast majority of the public in Poland.

The applicant claims that ‘XTREME’ could be perceived as a misspelling of the English word ‘EXTREME’, which is part of the basic English vocabulary and is used generally in trade to describe certain enhanced characteristics of the goods or services. The applicant also claims that the degree of distinctiveness of this word is lower than average. In support of his arguments, the applicant refers, inter alia, to a previous decision of the Office (26/01/2011, R 1512/2009‑4, EXTREM NUTRITION WEST‑GERMANY (FIG.MARK) / EXTREME). In this regard, it must be noted that the words equivalent to ‘EXTREME’ in Polish are ‘ekstremalny’ (adjective) or ‘eksteremum’ (noun), which are quite different and not commonly used by the relevant public. Furthermore, the letter ‘X’ is very rarely used in Polish. Indeed, in the case referred to by the applicant, the Board of Appeal confirmed the Opposition Division’s statement that ‘extreme’ is a term that exists with the same or very similar equivalents in a series of countries. However, Poland was not mentioned among those countries.

Taking into account the foregoing, the word elements ‘XTREME’ and ‘EXTREMES’ are meaningless and, therefore, distinctive for the vast majority of the public in Poland and, consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish‑speaking part of the public, as this is the scenario where a likelihood of confusion would be most likely to arise.

In the earlier mark, the letter ‘X’ is not a divisible and separate component despite its stylisation. The most immediate perception the relevant public will have of the earlier mark is that it contains the meaningless term ‘XTREME’.

Regarding the colours, it must be recalled that whilst colours are capable of conveying certain associations of ideas and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (09/12/2010, T-282/09, Carré convexe vert, EU:T:2010:508, § 23). In the present case, the relevant public will not perceive any specific message indicative of origin in the use of the colour red in the first letter ‘X’.

The earlier mark also contains some figurative elements, namely a red triangle (which may be perceived as a play arrow) and some parallel horizontal lines with different thicknesses (which may be interpreted as the power level of a battery or as meaningless). Therefore, if identified with the cited meanings these figurative elements have a limited distinctive character, while, if considered meaningless, they have an average distinctive character. In any case, these figurative elements are secondary within the sign because of their ancillary position and smaller size. In this regard, it must 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). This is particularly relevant in the earlier mark, since it is expected that the relevant consumers will refer to the sign by its verbal element ‘XTREME’ rather than by describing its figurative elements.

The contested sign contains the meaningless term ‘EXTREMES’, where the letter ‘X’ is slightly bigger than the remaining letters, and the secondary element ‘BATTERIES’ placed under the former and in a much smaller size, being almost negligible. The latter will be associated by the vast majority of the relevant public with the equivalent Polish word ‘baterie’, as they are very close. Bearing in mind that the goods in question are batteries, the distinctive character of this element is at most weak.

The contested sign also contains some figurative elements, namely a circular element, which may be perceived as the top of a battery, a horizontal curvy line and a black rectangular background. Therefore, bearing in mind the goods in question and the ornamental function of some of these elements, they are all at most weak.

 

Visually, the signs coincide in the string of letters ‘*XTREME*’, which is the entire word element perceived in the earlier mark and almost all the letters of the first and most prominent word element of the contested sign, which only adds a first letter, ‘E’, and a final letter, ‘S’. The coinciding letter ‘X’ is more striking in both signs because of its bigger size. The signs differ in the secondary and at most weak element ‘BATTERIES’ of the contested sign, as well as in the respective colours, figurative elements and stylisations of the signs, as described above.

 

Therefore, taking into account the distinctiveness of the various elements, the signs are visually similar to a low degree.

 

Aurally, the letter ‘X’ in Polish is pronounced as ‘EKS’ and, consequently, the pronunciation of the signs coincides in the respective elements ‘XTREME’ of the earlier mark and ‘EXTREME*’ of the contested sign, with the only difference in the sound of the letter ‘S’ at the end of this element in the contested sign. Bearing in mind the secondary position and weak character of the element ‘BATTERIES’ in the contested sign, it will most likely not be pronounced by the relevant public.

 

Therefore, the signs are aurally highly similar.

 

Conceptually, the signs as a whole do not have any direct/clear meaning for the relevant public. Therefore, the conceptual comparison between the signs is not possible.

For part of the relevant public, the figurative elements contained in the respective signs, as well as the secondary element ‘BATTERIES’ of the contested sign, may have a certain semantic link with the goods in question, as explained above. To that extent, taking into account that these elements have a limited distinctive character, the signs are conceptually similar to 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 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 clear meaning for the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

 

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

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical and they target the public at large and business customers with a degree of attention that may vary from average to high.

From the perspective of the relevant public in question, the signs are visually similar to a low degree, aurally highly similar and conceptually either similar to a low degree or this comparison remains neutral. The distinctiveness of the earlier mark as a whole is normal.

 

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). In the present case, the very slight aural difference between the word elements ‘XTREME’ and ‘EXTREMES’ may pass unnoticed to the relevant public, even when paying a higher degree of attention in respect of the goods in question.

 

Considering all the above, and the interdependence principle mentioned above, there is a likelihood of confusion on the part of the vast majority of the Polish‑speaking part of the public. 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.

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 433 402. It follows that the contested trade mark must be rejected for all the contested 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.

 

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

 

Michal KRUK

Marta GARCÍA COLLADO

Helena GRANADO CARPENTER

 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.