OPPOSITION No B 3 111 097

Battery Supplies NV, 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

EmergoPlus, Informaticastraat 20, 4538 BT Terneuzen, Netherlands (applicant), represented by Taylor Wessing N.V., Kennedyplein 201, 5611 ZT Eindhoven, Netherlands (professional representative).

On 08/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 097 is upheld for all the contested goods.

2. European Union trade mark application No 18 152 021 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 152 021 (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: Lithium ion batteries; lithium batteries; lithium secondary batteries; chargers for electric batteries; accumulators, electric; batteries; batteries for electric vehicles.

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

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 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.

Chargers for electric batteries are identically contained in both lists of goods (including synonyms).

The contested accumulators, electric; batteries; batteries for electric vehicles include, as broader categories, or overlap with, the opponent’s batteries, namely starter batteries for cars and trucks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

A lithium battery is a type of battery used for low‑power, high‑reliability, long‑life applications, such as clocks, cameras and calculators (information extracted from Collins English dictionary on 02/03/2021 at https://www.collinsdictionary.com/dictionary/english/lithium-battery). Indeed, lithium batteries are widely used in portable consumer electronic devices, but also in electric vehicles ranging from full sized vehicles to radio controlled toys. Accordingly, the contested lithium ion batteries; lithium batteries; lithium secondary batteries are similar to the opponent’s batteries, namely starter batteries for cars and trucks, as they are all apparatus for accumulating electricity. They can also coincide in producers, distribution channels and relevant public.

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 or similar 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 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.

The verbal elements present in the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The verbal element ‘XTREME’ of the earlier mark will be perceived as a misspelling of the English word ‘extreme’. Indeed, consumers are accustomed to seeing, in advertising, and in other commercial communications, words used in an abbreviated or simplified way, and they will not consider the verbal element ‘xtreme’ as a material deviation from the correct form ‘extreme’ (07/06/2019, R 1445/2018‑1, Xtreme (fig.) / Xtreme, § 40). The word ‘extreme’ refers to the quality of ‘effective in the utmost degree; exceedingly intense or powerful in operation’ and, therefore, the verbal element ‘XTREME’ is not particularly distinctive of the goods at issue, which are starter batteries for cars and trucks and battery chargers.

Notwithstanding, the fact that the verbal element ‘XTREME’ might be descriptive or of weak distinctive character for the relevant public does not necessarily imply that that element cannot constitute a dominant element provided that, because, in particular, of its position in the sign or its length, it is capable of making an impression on consumers and of being remembered by them (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 54 and the case-law cited). In this case, having regard to the understanding of the element ‘XTREME’ as meaning ‘extreme’, from which it follows that the letter ‘X’ is not a divisible and separate component despite its stylization, and a single letter per se is not particularly distinctive, the most immediate understanding the relevant public will have of the earlier mark is that it contains the 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 (very likely to be perceived as a play arrow) and a simple styled indication of the power level of batteries, as described by the applicant. Taking into account the goods in question, which are batteries and battery chargers, these figurative elements have a limited distinctive character. Furthermore, they 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 verbal elements ‘Power’, depicted in bold letters, and ‘Xtreme’, immediately after. The fact that the initial letters of these words are depicted in upper‑case letters contributes to this perception. The word ‘power’ is widely used in relation to the goods at issue (i.e. batteries and battery chargers) throughout the European Union and is considered a basic English word. Therefore, the consumers will understand ‘Power’ as ‘energy, especially electricity, that is obtained in large quantities from a fuel source and used to operate lights, heating, and machinery’ (information extracted from the Collins English Dictionary on 03/03/2021 at https://www.collinsdictionary.com/dictionary/english/power) and, consequently, as referring directly to the purpose of the relevant goods in Class 9. Bearing this in mind, the element ‘Power’ is deemed descriptive (25/05/2020, R 2184/2019‑5, FORCE POWER (fig.) / FORSEE POWER (fig.) et al.§ 37, 38) and, therefore, non‑distinctive. Furthermore, the concept of ‘Power’ is intimately related to the term ‘extreme’ (see definition above) and also to the figurative element depicted on top of the earlier mark (i.e. an indication of the power level of batteries).

The contested sign also contains a figurative element in the form of a circular shape made up of four parts, depicted in shades of red, which seem to be separated by a some white broad bands in the form of a styled ‘X’, as pointed out by the applicant. This figurative element does not convey any meaning and is, therefore, distinctive. It must be recalled, however, that in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

The verbal element ‘XTREME’ is the dominant element of the earlier mark, as it is the most eye-catching.

The Opposition Division considers that the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the element ‘XTREME’, which is the only verbal element of the earlier mark and the second verbal element of the contested sign. The signs differ in the first verbal element of the contested sign, ‘Power’, which is, however, non‑distinctive. Although the signs also differ in their figurative elements, as described above, as well as in the stylisation of their letters and the mirror effect of the earlier mark, they have some features in common, namely the use of shades of red.

Therefore, taking into account the above principles and assertions on the distinctiveness and dominance of the various elements, the signs are visually similar to a below‑average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘XTREME’, present identically in both signs, and differs in the first verbal element of the contested sign, ‘Power’, which is, however, non‑distinctive.

Therefore, taking into account the above principles and assertions on the distinctiveness of the various elements, the signs are aurally similar to an above‑average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a very similar meaning, on account of the coinciding verbal element ‘XTREME’, and taking into account the impact of the remaining elements of the signs, as outlined above, the signs are conceptually highly 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.

The applicant claims that the earlier trade mark is devoid of any distinctive character in relation to the goods in Class 9. In support of its claim, the applicant indicates some references to the opponent’s website and catalogue to conclude that the opponent uses the word ‘xtreme’ to describe the characteristics of its sold batteries. In this regard, it should be recalled that when dealing with the distinctiveness of the earlier mark as a whole, it should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’. Therefore, the applicant’s claim in this regard must be set aside.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

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 or similar and they target the public at large and business customers with a degree of attention that may vary from average to high.

The signs are visually similar to a below‑average degree, aurally similar to an above‑average degree and conceptually highly similar.

The applicant claims that the signs have different beginnings. Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases (16/05/2007, T‑158/05, Altrek, EU:T:2007:143). Indeed, the contested sign begins with the element ‘Power’, which is, however, non‑distinctive. Furthermore, the integral reproduction of the element ‘XTREME’ in the contested sign and the fact that it constitutes the sole verbal component of the earlier mark outweighs this difference overall.

It also must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

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, it is probable 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).

On account of the interdependence of the factors, there is a likelihood of confusion on the part of the relevant public inasmuch as they might think that the identical and similar goods under the contested sign, which reproduces the sole verbal element of the earlier mark, come from the same undertaking or from economically-linked undertakings. Furthermore, although the signs differ in their figurative elements, they coincide in the shades of red, a graphic aspect which could potentially create a certain link between them.

That conclusion is not called into question by the applicant’s argument alleging that the verbal component ‘XTREME’ may have a weak distinctive character and the references to some previous decisions of the Office that tackle this issue.

Even a finding that the earlier mark has a weak distinctive character would not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited; 11/02/2015, T-395/12, Solidfloor The Profesional’s choice (fig.) / SOLID floor (fig.), EU:T:2015:92, § 45).

Therefore, although the earlier mark has a low distinctiveness, the identity and similarity of the goods at issue and the degree of similarity between the signs at issue, considered cumulatively, prove to be sufficient to justify the conclusion that there is a likelihood of confusion even for the more attentive public.

The applicant refers to previous decisions of the Office to support its arguments that the signs at issue are not confusingly similar. 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.

The previous cases referred to by the applicant are not relevant to the present proceedings. In particular, the cases in question deal with signs that do not coincide in the verbal element ‘XTREME’, unlike in the present case. For instance, in the case between the signs and ‘SAILING SERIES’ (opposition No B 2 153 511), the verbal element ‘EXTREME’ of the earlier mark was not contained in the contested sign; in the case between the signs and ‘Z 3.0 extreme power’ (opposition No B 1 776 619), the conflicting elements ‘xtreme’ versus ‘extreme’ did not contain the same letters and the additional and different elements present in the signs were clearly perceivable and apt to exclude any likelihood of confusion. The remaining cases referred to by the applicant do not contain the same letters ‘XTREME’ either but, in general terms, confront the words ‘EXTREME’ versus ‘EXTREM’, ‘EXTREME’ versus ‘XTREME’, ‘EXTREME’ versus ‘Xtreamr’ and ‘EXTREME’ versus ‘skillxtrem’. Therefore, the previous decisions are not comparable.

Considering all the above, there is a likelihood of confusion on the English‑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

Chantal VAN RIEL

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.