OPPOSITION No B 3 117 246

Eolis Medi@ Company, 11a, Rue Michel Lentz, 6944 Niederanven, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

MSA Technology, LLC, 1000 Cranberry Woods Drive, 16066 Cranberry Township, United States of America (applicant), represented by Reed Smith LLP, Von-der-Tann-Straße 2, 80539 München, Germany (professional representative).

On 23/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 246 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 163 107 is rejected in its entirety.

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

REASONS

On 28/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 163 107 for the word mark ‘GRID’. The opposition is based on international trade mark registration designating the European Union No 1 363 666 for the word mark ‘GRIDCOP’. 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, inter alia, the following:

Class 9: Checking (supervision) apparatus and instruments; software [recorded programs].

Class 42: Scientific and technological services as well as research and design services relating thereto; design and development of computers and software; technical analysis and design of security systems.

Following the limitation requested by the applicant on 19/06/2020, the contested goods and services are the following:

Class 9: Gas detectors for detecting the presence of gas; software for use with gas detection, gas calibrators, vapor, gas, fire, and danger alarms, thermal imagining cameras, respiratory protective apparatus, namely, self-contained breathing apparatus and parts thereof, hearing protection, namely, electronic hearing protection and communications systems associated with radio communications and telemetry, personal alert safety systems (pass), fall detection systems and apparatus, physiological monitoring equipment, and location determination and geo-fencing apparatus; all the afore-mentioned goods in the field of safety products.

Class 42: Software as a service (SaaS) services, namely, hosting software for use by others in connection with gas detection; calibration, consulting services in the field of gas detection; computer software consultancy, cloud computing, computer programming, data conversion of computer programs and data, maintenance of computer software, and quality control of safety products and installed software safety services; all the afore-mentioned services in the field of safety.

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 applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and 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.

The contested goods and services contain the following limitations: ‘all the afore-mentioned goods in the field of safety products’ in Class 9 and ‘all the afore-mentioned services in the field of safety’ in Class 42. While these limitations have been duly taken into account in the below comparison (in relation to each contested item), to avoid repetition they will not be expressly mentioned, but will be considered included by way of reference.

Contested goods in Class 9

The contested software for use with gas detection, gas calibrators, vapor, gas, fire, and danger alarms, thermal imagining cameras, respiratory protective apparatus, namely, self-contained breathing apparatus and parts thereof, hearing protection, namely, electronic hearing protection and communications systems associated with radio communications and telemetry, personal alert safety systems (pass), fall detection systems and apparatus, physiological monitoring equipment, and location determination and geo-fencing apparatus are included in the broad category of, or at least overlap with, the opponent’s software [recorded programs]. Therefore, they are identical.

The contested gas detectors for detecting the presence of gas are at least highly similar to the opponent’s checking (supervision) apparatus and instruments to the extent that those goods are of the same nature and fulfil a similar purpose since detection is usually intended as a check. Furthermore, they are provided by the same undertakings through the same distribution channels to the same public.

Contested services in Class 42

The contested computer software consultancy, computer programming are included in the board category of, or at least overlap with, the opponent’s design and development of software. Therefore, they are identical.

The contested calibration, consulting services in the field of gas detection are included in the broad category of, or at least overlap with, the opponent’s scientific and technological services as well as research and design services relating thereto. Therefore, they are identical.

The opponent’s scientific and technological services and research and design relating thereto; technical analysis and design of security systems are services provided in relation to the theoretical and practical aspects of complex fields of activities. These services are provided by members of professions such as physicists, engineers, or computer programmers. Technological services, in particular, capture the extremely wide field of the provision of expert advice and assistance in the practical appliance of science - that is, the facilitation of the use of technology by enterprises and other end users. This will involve the processes and functions of technology, including software, hardware, networks, telecommunications and electronics. However, the contested quality control of safety products and installed software safety services are essentially various quality control services. Quality control is defined as ‘a system of maintaining standards in manufactured products by testing a sample of the output against the specification’ (information extracted from Oxford English Dictionary on 14/07/2021 at https://www.lexico.com/definition/quality_control) and involves activities such as data collection and analysis through which the degree of conformity to predetermined standards and criteria are exemplified. If this process finds the quality to be unsatisfactory, attempts are made to discover the reason for this. Therefore, these contested services can overlap with the opponent’s broad categories of services such as scientific and technological services and research and design relating thereto; technical analysis and design of security systems. Even if they do not strictly overlap, these broad categories of services are at least similar, as they include services which have the same ultimate purpose and nature, target the same consumers through the same commercial channels, and may be provided by the same specialists.

The contested cloud computing includes computing activities revolving around the practice of using a network of remote servers hosted on the internet to store, manage, and process data, rather than a local server or a personal computer. These contested services are at least similar to the opponent’s design and development of computers and software as they have the same nature, insofar as they are all IT-related services, and they coincide in provider, relevant public and distribution channels.

The contested maintenance of computer software is at least similar to the opponent’s design and development of computers and software as they may have the same nature and they can coincide in provider, relevant public and distribution channels.

The contested software as a service (SaaS) services, namely, hosting software for use by others in connection with gas detection is similar to the opponent’s software [recorded programs] in Class 9. Software as a service (SaaS) is a model for the distribution of software where customers access software over the internet. The software could be hosted by its producers or made available to clients on the internet and licensed on a subscription basis. The goods and services at issue target the same public and may come from the same companies. In addition, they usually coincide in distribution channels, and they are in competition.

The contested data conversion of computer programs and data is similar to the opponent’s design and development of computers and software as they usually coincide in provider, relevant public and distribution channels.

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 and 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 and services purchased.

c) The signs

GRIDCOP	GRID
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). This applies by analogy to international registrations designating the European Union. 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 of the signs are meaningful in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion since the signs are more similar overall if there is a conceptual similarity between them. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both signs are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question deviates from the usual way of writing since both signs are written in upper case, which is a fairly common way of depicting words.

The contested sign is the word ‘GRID’. This is an English word, which means, inter alia, ‘a network of cables or pipes for distributing power, especially high-voltage transmission lines for electricity’ (information extracted from Oxford English Dictionary on 14/07/2021 at https://www.lexico.com/definition/grid). As the relevant goods and services are not electricity-related, the word ‘GRID’ is not descriptive, allusive or otherwise weak for the relevant goods and services in Classes 9 and 42 and it is, therefore, distinctive.

Although the earlier mark is a single verbal element, ‘GRIDCOP’, the relevant consumers, when perceiving a verbal sign, will break it down into elements 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). Therefore, the relevant public will break it down into the words ‘GRID’ and ‘COP’. The initial word, ‘GRID’, has the meaning and degree of distinctiveness as described above. The word ‘COP’ will be understood by the relevant public as, inter alia, ‘a police officer’ (information extracted from Oxford English Dictionary on 16/07/2021 at https://www.lexico.com/definition/cop). Since this word is not descriptive, allusive or otherwise weak in relation to the relevant goods and services in Classes 9 and 42, it has an average degree of inherent distinctiveness.

Visually and aurally, the signs coincide in the word ‘GRID’ (and its sound), which is the entire contested sign and the earlier mark’s first verbal component. They differ in the second verbal component ‘COP’ of the earlier mark, which has no counterpart in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The word ‘GRID’ is the first verbal component of the earlier mark and, therefore, it will catch the consumers’ attention first when they encounter that sign.

The earlier mark reproduces the entire contested sign, and the coinciding word is in a prominent position at the beginning of the earlier mark. Therefore, also bearing in mind the above assertions on the degree of distinctiveness of the signs’ elements, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same meaning conveyed by the word ‘GRID’ but differ in the concept conveyed by the word ‘COP’ of the earlier mark. Therefore, taking into account the above assertions on the degree of distinctiveness of the signs’ elements, the signs are conceptually similar to an average 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 meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 marks, and the degree of similarity between the marks, and between the goods or services identified. It must be appreciated globally, taking into account all the 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).

The goods and services are partly identical and partly similar to varying degrees. The distinctiveness of the earlier mark is normal. The goods and services target the public at large and the professional public. The public’s degree of attentiveness may vary from average to high.

The signs are visually, aurally and conceptually similar to an average degree on account of their coinciding word ‘GRID’, which is the contested sign’s sole verbal element and the earlier mark’s first verbal component. This word is equally distinctive in both signs. In addition, marks are similar when they are at least partly identical in one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55). The signs differ in the second word of the earlier mark, ‘COP’, which is less important in the overall impression created by that sign than the first word, as explained in detail above. Consequently, the differences between the signs are not sufficient to outweigh the visual, aural and conceptual similarities produced by the coinciding word ‘GRID’.

Taking into account all the above, and especially the similarities between the signs and the identity and similarity between the goods and services, it is considered that there is a likelihood of confusion in the form of a likelihood of association. 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 and/or services covered are from the same or economically linked undertakings.

The relevant goods and services in Classes 9 and 42 belong to a market sector in which it is common to create sub-brands, namely main brand variations that include additional verbal elements or delete some words. Indeed, due to the use of the identical word ‘GRID’, 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 and/or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous decisions of the Office to support its arguments, for example (27/01/2020, B 3 076 473, feco v fecorda; 26/06/2020, B 3 088 697, LOIS v Loistin). 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, the previous cases referred to by the applicant are not relevant to the present proceedings. This is because in the cases referred to by the applicant the signs consisting of seven letters are meaningless and cannot be dissected, which is not the case here.

Considering all the above, there is a likelihood of confusion on the part of 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 international trade mark registration designating the European Union No 1 363 666. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Liliya YORDANOVA

Anna PĘKAŁA

Justyna GBYL

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.