OPPOSITION Nо B 3 115 669

Delta Electronics, Inc., 186 Ruey Kuang Road Neihu, 114 Taipei, Taiwan (opponent), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft mbB, Krenkelstr. 3, 01309 Dresden, Germany (professional representative)

a g a i n s t

Delta-Temp Group BVBA, Lange Ambachtstraat 13, 9860 Oosterzele, Belgium (applicant), represented by Kanzlei Kötz Fusbahn, Blumenstraße 7, 40212 Düsseldorf, Germany (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 115 669 is partially upheld, namely for the following contested goods and services:

Class 11: Central air conditioning installations; air-conditioning installations; cooling installations; combined heating and air conditioning apparatus; ventilating fans for commercial use; industrial heating installations; cooling apparatus and appliances; heating apparatus and installations; HVAC systems (heating, ventilation and air conditioning); central air-conditioning installations [for industrial purposes]; ventilating fans for industrial use; cooling apparatus; electric heating fans; air-conditioning apparatus; electrically-operated devices used in cooling; ventilation [air-conditioning] installations and apparatus; heating elements; industrial heaters; portable air conditioners; room heaters; electric space cooling apparatus; air conditioning apparatus for commercial use; heating apparatus; air cooling apparatus; heat pumps; heating installations; industrial heating apparatus; refrigerating apparatus; cooling installations and machines; commercial refrigeration units; hot air heating apparatus; refrigerating machines; room air fans; radial air fans; axial fans for air-conditioning; electric air conditioners; apparatus for ventilating; central type air conditioning apparatus; ice rink chiller systems; aeration apparatus; fans [air-conditioning]; ventilating fans; air conditioning installations for industrial purposes; mobile heating apparatus; industrial cooling installations; air conditioning apparatus for industrial use; cooling apparatus for liquids; mobile ventilating apparatus; turbine ventilators [ventilation apparatus]; axial fans; space heaters; mobile air conditioning apparatus; air freezing installations. Class 35: Wholesale services in relation to cooling equipment; retail services in relation to refrigerating equipment; wholesale services in relation to heating equipment; retail services in relation to heating equipment; retail services in relation to cooling equipment; wholesale services in relation to refrigerating equipment; wholesale services in relation to heaters; retail services in relation to heaters.

2.

European Union trade mark application No 18 168 206 is rejected for all the above goods and services. It may proceed for the remaining services.

3.	Each party bears its own costs.

REASONS

On 08/04/2020, the opponent filed an opposition against all the goods and services (Classes 11, 35, 40 and 41) of European Union trade mark application No 18 168 206 (figurative mark). The opposition is based on European Union trade mark registration No 10 662 021 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 17/12/2019.

The earlier trade mark was registered on 28/11/2015. Therefore, the request for proof of use is inadmissible.

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 on which the opposition is based are the following:

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; elevator door control brushless DC motors; brushless DC motors; AC servo motors; spindle motor; machine fly-wheels; control mechanisms for machines, engines or motors; starters for motors and engines; fans for motors and engines; wind turbines; wind power electricity generation equipments and apparatus; propellers for wind-powered electricity generators; pitch control system for wind turbine; yaw control system for wind turbine; gear box for wind turbine; energy recycle generator; electricity generators; heat exchangers [parts of machines]; blowing machines for the compression, exhaustion and transport of gases; AC motors; AC to DC motor; blower, including DC motor blower; air to air heat exchanger; liquid heat exchanger; smart heat exchanger; DC motors; stepping motor; electric air-conditioning compressor & its drive for vehicle; tower for wind turbine; braking system for wind turbine; industrial automation solution devices, namely AC servo motor, brushless DC motors and drives (BLDCM); belt-driving starter generator (BSG) for EV; energy recycle equipment, namely waste heat recycle system, kinetic energy recovery system (KERS), and exhaust airflow recycle generators; automatic vending machines; elevator operation apparatus; integrated starter generator (ISG) & its drive for EV; wind and solar energy generation kit; regulators [parts of machines]; pumps [parts of machines, engines or motors]; speed governors for machines, engines and motors; door openers, electric; door closers, electric.

Class 9: Data processing equipment; AC motor drives; active front end units (AFE), namely rectifiers and the controller thereof for providing bidirectional power exchange between AC and DC power and regenerating reusable power to the mains to reduce the cost of power; hybrid servo drives; elevator door control drives; elevator drives; brushless DC drives; AC servo drives; spindle drive; high -speed motion control card; print circuit board (PCB) with integrated circuit (IC); rotary optical encoders; programmable logic controllers; text/graphical display panels; display screens; human machine interfaces; HMI controller; machine vision controllers; temperature controllers; pressure sensors; timer/counter/tachometer; industrial fieldbus products; electric installations for remote control of industrial operations; electronic interface equipment for industrial machines; intercommunication apparatus; communication interface card; computers interfaces; couplers [data processing equipment]; industrial power supplies; CNC controllers; electric vehicle charging equipment and accessories; outdoor enclosure and accessories for power management apparatus (power rectifier, converter, transformer, current filter, distributor, breaker, monitor) and back-up power supplier; rectifier; control panel [electricity]; power inverter; voltage regulator; power regulator; battery storage; battery cabinet; battery chargers; electrical apparatus for the remote control of signals; power meter; watt meter; electricity materials [wires, cables]; electric switches; AC-DC adaptor; DC-DC adaptor; switching power supply; charger; junction boxes [electricity]; connectors [electricity]; plugs, sockets and other contacts [electric connections]; power inlet; solar junction box; duckhead; indicators [electricity]; electric monitoring apparatus; uninterruptible power supply (UPS); high voltage DC UPS (HVDC); power distribution cabinet (PDC); power distribution unit (PDU); distribution boards [electricity]; distribution consoles [electricity]; STS (static transfer switch); ATS (automatic transfer switch); electric regulating apparatus; EMS (software for environment management system); computer software for operating, controlling and/or managing industrial machines and electronic apparatus; computer software with the functions of cloud-tech computing, data processing, voice recognition and/or energy monitoring; computer programs (downloadable) for operating, controlling and/or managing industrial machines and electronic apparatus; computer programs (downloadable) with the functions of cloud-tech computing, data processing, voice recognition and/or energy monitoring; computer monitoring programs; rack; data center infrastructure product; container data center; modularized data center; hybrid container data center; electric apparatus for commutation; harmonic filter; activer power filter; static var compensator (SVC); static var generator(SVG); static synchronous compensator (STATCOM); energy storage system; capacitors; wind power converter; flashing lights; signal light; luminous signs; traffic light apparatus; neon signs; LED; electric dimmers regulators; lighting ballasts; automatic indicators of low pressure in vehicle tyres; indicator; inductors [electricity]; body control module (BCM) for vehicle; remote starter & passive keyless entry ( PKE ) for vehicle; lithium ion battery pack with management system; electric batteries for vehicles; electric power steering (EPS) controller for vehicle; air-conditioning controller; variable voltage drives; LCD digital signage display system; electronic notice boards; electronic bulletin boards; LED indoor/outdoor display system; DLP video wall display system; distributive vision control system; signal decoder; computers; interfaces [for computers]; computer peripheral devices; processors [central processing units]; microprocessors; data processing apparatus; minicon centralized vision control system; electronic pens [visual display units]; multi-media projector; electronic projector; projection screen; components and accessories for projectors; micro inverter (DC to AC); DC converter; data collector; PV panel optimizer (DC to DC); electric protection breaker; circuit breakers; voltage surge protectors; solar batteries; e-Tag; e-Signage; e-Reader; e-Paper device development kit, namely the application programming interface (API), software development kit (SDK), and the hardware device platform for the development of software suite using in the electronic reader devices; electronic tags for goods; display touch panel; touch panels; sensor device; touch input device; electronic publications [downloadable]; blower for computers; cross fan for computers; thermal apparatus for computers; DC fan for computer; fans controller; wind and solar control interface; solar panels for production of electricity; motors, gears and drives for orientating solar panels; electrical sensors for measuring solar radiation; heat dispatch cabinet for computers; air distribution unit for computers; DC driver; AC to DC driver; vapor chamber; magnetic / inductive components; optical transceivers; radio-frequency (RF) modules; integrated circuits and integrated circuits cores for using in wireless communications and wireless communication equipments and apparatus and digital signal processors; voltage controlled oscillator (VCO); solar cells; solar panels; solar inverters; solar maximum power point tracker; renewable energy and hybrid energy power management system, namely, a rack containing rectifier, current stabler, power distributor, power converter, transformer, monitoring module and battery to output the stable electric current for power supply after receiving/assembling the power resource from different origins (ie wind power, solar energy or renewable energy and power generator to form hybrid energy); turbine control interface; wind power inverter; wind power charger; wind power facilities monitoring system; industrial automation solutions; lighting power driver; lighting controller; two phase flow heat sink and thermal module; heat sink; start drivers for electric vehicles; vehicle control unit (VCU) for EV; hybrid control unit ( HCU) for EV; energy monitoring device; industrial automation solution devices, namely motion control network, ethernet communication devices, communication converters, variable frequency drives (VFD), machine vision inspection system; tire pressure monitoring system (TPMS ) for vehicle; all the aforesaid not including installation devices for security purposes related to electrical constructions, as securings and also not including installation devices for controlling electrical constructions, as switches and sockets.

Class 11: Apparatus for heating which are constituent parts of the goods stated in class 11, steam generating, cooking, refrigerating, drying, ventilating; precision cooling; streetlight; lighting fixture and installations, namely, industrial lights, agriculture lights, fishing lights, panel lights, light modules, can-lights, flooding lights, and architecture lights for purpose of illuminating the surface of constructions only, using basic light fixtures without aesthetic designs; light bulbs; projector lamps; luminous tubes for lighting; lighting apparatus for vehicles; lighting tubes; safety lamps; torches light; automobile lights; pocket lamps; air conditioners for vehicles; fans [air conditioning]; fans [parts of air conditioning installations]; heat exchangers; air conditioning apparatus; installations for air conditioning; air conditioning apparatus; ventilation installations and apparatus; air cooling apparatus; air cooling device; air conditioners for vehicles; beverages cooling apparatus; refrigerating apparatus and machines; refrigerating containers; ice machines and apparatus; refrigerators; refrigerating appliances and installations; refrigerating display cabinets; ventilation apparatus; ventilation [air-conditioning] installations for vehicles; air purifying apparatus and machines; ventilation hoods; ventilation fan; ventilation dryer; ventilation fan with heater; air reheaters which are constituent parts of the goods stated in class 11; air driers; drying apparatus; desiccating apparatus; drying apparatus and installations; air circulation equipment; air circulation fan; electric fans for personal use; range hoods; extractor hoods for kitchens; extractor machines for kitchens; air mover module; cooling appliances and installations; gas induced and mixed blower; cooling devices and machines; blower, including DC motor blower; air to air heat exchanger; liquid heat exchanger; smart heat exchanger; DC fan; AC fan; fan tray module; thermo-electric cooling (TEC) cooler device; TEC cooler module; energy recycle equipment, namely waste gas reheating apparatus; axial fans; blower fans; crossflow fans; fan and heat sink cooler or module; wind and solar hybrid energy outdoor/indoor lighting apparatus used for industrial lights, agriculture lights, fishing lights, panel lights, light modules, canlights, flooding lights, and architecture lights for purpose of illuminating the surface of constructions only, using basic light fixtures without aesthetic designs; fans for automotive air conditioning; lamps; electric lamps; fairy lights for festive decoration; searchlights; lamp reflectors; light diffusers, all used for industrial lights, agriculture lights, fishing lights, panel lights, light modules, can-lights, flooding lights, and architecture lights for purpose of illuminating the surface of constructions only, using basic light fixtures without aesthetic designs.

Class 12: Parts of electric vehicles (EV); electric motors for land vehicles; driving motors for land vehicles; engines for land vehicles; freewheels for land vehicles; gearing for land vehicles; traction motor for EV; traction motor drive for EV.

The contested goods and services are the following:

Class 11: Central air conditioning installations; air-conditioning installations; cooling installations; combined heating and air conditioning apparatus; ventilating fans for commercial use; industrial heating installations; cooling apparatus and appliances; heating apparatus and installations; HVAC systems (heating, ventilation and air conditioning); central air-conditioning installations [for industrial purposes]; ventilating fans for industrial use; cooling apparatus; electric heating fans; air-conditioning apparatus; electrically-operated devices used in cooling; ventilation [air-conditioning] installations and apparatus; heating elements; industrial heaters; portable air conditioners; room heaters; electric space cooling apparatus; air conditioning apparatus for commercial use; heating apparatus; air cooling apparatus; heat pumps; heating installations; industrial heating apparatus; refrigerating apparatus; cooling installations and machines; commercial refrigeration units; hot air heating apparatus; refrigerating machines; room air fans; radial air fans; axial fans for air-conditioning; electric air conditioners; apparatus for ventilating; central type air conditioning apparatus; ice rink chiller systems; aeration apparatus; fans [air-conditioning]; ventilating fans; air conditioning installations for industrial purposes; mobile heating apparatus; industrial cooling installations; air conditioning apparatus for industrial use; cooling apparatus for liquids; mobile ventilating apparatus; turbine ventilators [ventilation apparatus]; axial fans; space heaters; mobile air conditioning apparatus; air freezing installations.

Class 35: Wholesale services in relation to cooling equipment; retail services in relation to refrigerating equipment; wholesale services in relation to heating equipment; retail services in relation to heating equipment; retail services in relation to cooling equipment; wholesale services in relation to refrigerating equipment; wholesale services in relation to heaters; retail services in relation to heaters.

Class 40: Rental of refrigerating apparatus; providing information relating to the rental of air conditioning apparatus; rental of cooling apparatus and installations; rental of heating apparatus; providing information relating to the rental of space cooling apparatus for industrial purposes; rental of electric fans for cooling; rental of air-conditioning apparatus; rental of space heating apparatus; rental of heating installations; rental of space cooling apparatus for industrial use.

Class 41: Providing ice rink facilities; providing skating rinks.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, 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.

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 11

The term ‘air conditioning’ can refer to any form of cooling, heating, ventilating or otherwise conditioning the air in an enclosed space, independent of outside conditions. Therefore, the contested central air conditioning installations; air-conditioning installations; combined heating and air conditioning apparatus; ventilating fans for commercial use; industrial heating installations; heating apparatus and installations; HVAC systems (heating, ventilation and air conditioning); central air-conditioning installations [for industrial purposes]; ventilating fans for industrial use; electric heating fans; air-conditioning apparatus; ventilation [air-conditioning] installations and apparatus; heating elements; industrial heaters; portable air conditioners; room heaters; air conditioning apparatus for commercial use; heating apparatus; air cooling apparatus; heating installations; industrial heating apparatus; hot air heating apparatus; room air fans; radial air fans; axial fans for air-conditioning; electric air conditioners; apparatus for ventilating; central type air conditioning apparatus; aeration apparatus; fans [air-conditioning]; ventilating fans; air conditioning installations for industrial purposes; mobile heating apparatus; air conditioning apparatus for industrial use; mobile ventilating apparatus; turbine ventilators [ventilation apparatus]; axial fans; space heaters; mobile air conditioning apparatus are, if not identical to the opponent’s air conditioning apparatus; installations for air conditioning (as they are identically contained in both lists or the opponent’s goods include, or overlap with, the contested goods), at least similar since they can have the same or a similar purpose, producers, relevant public and distribution channels.

The contested cooling installations; cooling apparatus and appliances; cooling apparatus; electrically-operated devices used in cooling; electric space cooling apparatus; cooling installations and machines; industrial cooling installations; cooling apparatus for liquids are identical to the opponent’s cooling appliances and installations; cooling devices and machines, 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 refrigerating apparatus; commercial refrigeration units; refrigerating machines; air freezing installations are identical to the opponent’s refrigerating apparatus and machines; refrigerating appliances and installations, 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 heat pumps are used to transfer heat energy from a source of heat to what is called a 'heat sink'. These goods often form part or feature of air conditioning systems (31/01/2017, R 1134/2016-1, SUMIT (fig.) / SUMMIT, § 49). Therefore, these goods at least overlap with the opponent’s apparatus for heating which are constituent parts of the goods stated in class 11. Therefore, they are identical.

The contested ice rink chiller systems are at least similar to the opponent’s refrigerating apparatus and machines; refrigerating appliances and installations since they have the same general purpose of regulating and maintaining the temperature. They also coincide in methods of functioning and can have the same manufacturers, distribution channels and relevant public.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the earlier mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The above principle applies also to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

The contested wholesale services in relation to cooling equipment; retail services in relation to cooling equipment are similar to an average degree to the opponent’s cooling appliances and installations; cooling devices and machines in Class 11, because the opponent’s goods are exactly the same as, include, or overlap with, the goods that are the subject of the contested services. Furthermore, these contested services are generally offered in the same places as those where the opponent’s goods are offered for sale, and they are directed at the same public.

The contested retail services in relation to refrigerating equipment; wholesale services in relation to refrigerating equipment are similar to an average degree to the opponent’s refrigerating apparatus and machines; refrigerating appliances and installations in Class 11, because the opponent’s goods are exactly the same as, include, or overlap with, the goods that are the subject of the contested services. Furthermore, these contested services are generally offered in the same places as those where the opponent’s goods are offered for sale, and they are directed at the same public.

The contested wholesale services in relation to heating equipment; retail services in relation to heating equipment; wholesale services in relation to heaters; retail services in relation to heaters are similar to an average degree to the opponent’s air conditioning apparatus; installations for air conditioning in Class 11, because the opponent’s goods include, or overlap with, the goods that are the subject of the contested services. Furthermore, these contested services are generally offered in the same places as those where the opponent’s goods are offered for sale, and they are directed at the same public.

Contested services in Class 40

All the contested services in this class are dissimilar to all the opponent’s goods in Classes 7, 9, 11 and 12, since they differ in nature, purpose, method of use, distribution channels and points of sale, and are neither complementary, nor in competition. In addition, they do not target the same consumers and do not come from the same kinds of undertakings.

Contrary to the opponent’s arguments, although the goods that are the subject of these contested services are air-conditioning, refrigerating and cooling apparatus and installations, for which the earlier mark is protected, this is not sufficient for a finding of similarity. Rental services and information services thereof 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.

However, this is not the case at issue. The entities offering rental services of air-conditioning, refrigerating and cooling apparatus and installations and information services thereof are different from the entities manufacturing said apparatus and installations.

Contested services in Class 41

The contested providing ice rink facilities; providing skating rinks have nothing in common with any of the opponent’s goods. They clearly differ in nature, have a different purpose and different methods of use. They are offered by different companies through different distribution channels and do not target the same consumers. Furthermore, they are neither complementary, nor in competition. Therefore, they are dissimilar.

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 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

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 earlier mark’s verbal element ‘DELTA’ is written in a not highly stylised black typeface except for the first and last letters that are depicted in a more fanciful way. However, as the average consumers try to read the letters and identify meaningful words, the word element ‘DELTA’ is easily recognisable and legible.

The contested sign also consists of the word ‘DELTA’, which is depicted in a standard dark blue typeface with a slight stylisation of its last letter ‘A’.

The common verbal element ‘DELTA’ will be understood as ‘the fourth letter in the Greek alphabet (Δ, δ), a consonant transliterated as ‘d’, or ‘the flat alluvial area at the mouth of some rivers where the mainstream splits up into several distributaries’ (information extracted from Collins English Dictionary on 20/05/2021 at https://www.collinsdictionary.com/dictionary/english/delta). Consumers in all Member States will understand these meanings (11/06/2014 – R 1172/2013-1 – DELTA / DELTA DORE (FIG. MARK) et al., § 33). Since these meanings are not related to the relevant goods and services, the common verbal element ‘DELTA’ is distinctive.

The contested sign’s verbal element ‘Temp’ is depicted in slightly stylised red typeface. A part of the public, for example a part of the German-speaking consumers will perceive it as an abbreviation of ‘Temperatur’, which is the German word for ‘temperature’. Bearing in mind that the relevant goods and the goods subject of the relevant services are related to regulating the temperature, the verbal element ‘Temp’ is weak for this part of the public. For the part of the public for which the verbal element ‘Temp’ is meaningless, it is distinctive.

Since a difference in an element with no or little distinctiveness will not contribute to differentiating the signs, the Opposition Division deems it appropriate to focus the comparison of the signs on the part of the German-speaking consumers that will perceive the contested sign’s verbal element ‘Temp’ as the abbreviation of the German word for temperature.

The earlier mark’s figurative element consists of a black triangle in the middle of which there is a combination of basic geometrical shapes in white.

The contested sign’s figurative element consists of three conjoined lines, which do not form any specific object. It is placed between the two verbal elements ‘DELTA’ and ‘Temp’ in a way that visually separates them.

Although not devoid of distinctiveness, the signs’ figurative elements, as described above, will have less impact than their verbal elements. 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).

The signs have no element that could be considered clearly more dominant than other elements. Contrary to the applicant’s arguments, the earlier mark’s figurative element, as described above, although slightly bigger than the verbal element and in the beginning of the sign, is not so visually outstanding as to overshadow the earlier mark’s verbal element.

Visually and aurally, the signs coincide in the distinctive verbal element ‘DELTA’ which is the sole verbal element of the earlier mark and the first verbal element of the contested sign. The signs differ in the contested sign’s verbal element ‘Temp’, positioned at the end of the sign, which is, however, weak.

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.

Furthermore, the signs differ visually in their slightly stylised fonts, colours and figurative elements, which, as explained above, will have less impact in the overall impression of the signs.

Therefore, contrary to the applicant’s arguments, 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. Irrespective of which of the abovementioned meanings will be attributed to the word ‘DELTA’, the signs coincide in this common element. Since the contested sign’s verbal element ‘Temp’ is weak and the signs’ figurative elements do not convey a particular concept, 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

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.

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).

As established above in section a) of this decision, the goods and services are partly dissimilar, partly identical and partly similar. As identity or 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 the dissimilar services cannot be successful.

The goods and services found to be identical or similar target the general and professional public, whose degree of attention may vary from average to high. The degree of distinctiveness of the earlier mark per se is normal.

The signs are visually and aurally similar to an average degree and conceptually highly similar, as they share the verbal element ‘DELTA’, which is the sole verbal element of the earlier mark and is included in the contested sign as an independent and distinctive element. Furthermore, this element is positioned at the beginning of the contested sign, which, as explained above, is the part that first catches the consumers’ attention. In an overall assessment of the marks, the impact of the signs’ figurative elements and the contested sign’s weak verbal element ‘Temp’ are not sufficient to counteract the similarities and to enable the relevant public to safely distinguish between the signs.

Therefore, and taking into account the interdependence principle, it is highly conceivable that the relevant public, even if highly attentive, could confuse the signs or believe that the identical or similar goods and services originate from the same or economically linked undertakings.

It cannot be excluded that, owing to the inclusion of the sole verbal element of the earlier mark in the contested sign, the relevant consumers might perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public that will perceive the contested sign’s verbal element ‘Temp’ as the abbreviation of the German word for temperature. This is sufficient if a significant part of the relevant public of the goods and services at issue may be confused as to the origin of the goods or services. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods and services are likely to be confused. 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 partly well founded on the basis of the opponent’s European Union trade mark registration No 10 662 021.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

The Opposition Division

Beatrix STELTER

Lidiya NIKOLOVA

Holger Peter KUNZ

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.