OPPOSITION Nо B 3 122 305

Powercell Sweden AB, Ruskvädersgatan 12, 418 34 Göteborg, Sweden (opponent), represented by Awa Sweden AB, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden (professional representative)

a g a i n s t

Wanke Energy Technology Co., Ltd., Rm.1708, Hanshi Bldg., No.1786 Binsheng Rd., Changhe St., Binjiang Dist., Hangzhou City, Zhejiang, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 31/03/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 122 305 is upheld for all the contested goods, namely
	Class 9: Inverters [electricity]; accumulators, electric; electric installations for the remote control of industrial operations; transmitters of electronic signals; measuring apparatus; materials for electricity mains [wires, cables].
2.	European Union trade mark application No 18 199 615 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3.	The applicant bears the costs, fixed at EUR 620.

REASONS

On 26/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 199 615, ‘Powerlution’ (word mark), namely against some of the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 17 246 133, ‘POWERCELLUTION’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 246 133.

a) The goods

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

Class 7: Motors and engines, parts and components thereto; generators and fuel conversion apparatus for internal combustion engines.

Class 9: Fuel cells and fuel cells stacks; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; power supply units; fuel cells systems consisting of fuel cells, power modules and fuel converters; converters for fuel cells and fuel processors.

Class 12: Parts and components for vehicles included in the class.

The contested goods are the following:

Class 9: Inverters [electricity]; accumulators, electric; electric installations for the remote control of industrial operations; transmitters of electronic signals; measuring apparatus; materials for electricity mains [wires, cables].

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 9

The contested inverters [electricity] are devices for converting a direct current into an alternating current. As a result, they supply the respective electricity consuming devices with a current with the necessary parameters. Hence, they fall into the broad category of the opponent's apparatus and instruments for controlling electricity. Therefore, the goods are identical.

The contested accumulators, electric are included in the broad category of the opponent's apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested electric installations for the remote control of industrial operations fulfil their intended purpose, inter alia, through exercising control on the electricity used in the industrial operations. Thus, these contested goods overlap with the opponent’s apparatus and instruments for controlling electricity. Therefore, they are identical.

The contested materials for electricity mains [wires, cables] and the opponent’s apparatus and instruments for conducting electricity are, if not identical because of an overlap, at least similar, because the goods are complementary. Moreover, they have the same distribution channels, target the same public and usually they are produced by the same manufacturers.

The contested transmitters of electronic signals are used in the measurement of different parameters of fuel cells and systems related thereto. They are similar to a low degree to the opponent´s fuel cells systems consisting of fuel cells, power modules and fuel converters. These goods are complementary, they coincide in their distribution channels and end users.

The contested measuring apparatus are used, inter alia, for the measurement of the electricity. As such they are similar to a low degree to the opponent’s apparatus and instruments for controlling electricity. They have the same distribution channels, target the same public and usually they are produced by the same manufacturer.

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 to varying degree are directed at the public at large (e.g. electric accumulators) and at professionals (e.g electric installations for the remote control of industrial operations). The degree of attention is expected to vary between average and higher than average, depending on the price, specialised nature or terms and conditions of the goods purchased.

c) The signs

POWERCELLUTION	Powerlution
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).

Although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they 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, 06/10/2004, T-356/02, VITAKRAFT, EU:T:2004,ECR II-3445, § 51).

Based on the above, it is likely that the relevant public will perceive in the beginning of both signs the word ‘POWER’ because it is a widespread English word that will be understood throughout the relevant territory (10/12/2013, T‑467/11, 360 Sonic Energy, EU:T:2013:633, § 47). In the context of the protected goods, it could be regarded as a synonym of strength or of electricity (information extracted from Cambridge Dictionary on 19/03/2021 at https://dictionary.cambridge.org/dictionary/english/power?q=power_1). In the context of the relevant goods the term may be seen as laudatory or as indication of a characteristic, related to electricity. Therefore, this verbal component is of reduced or no distinctiveness.

The ending of the earlier mark, ‘CELLUTION’, will be perceived as meaningless and therefore distinctive by a part of the public. However, another part of the public, especially the English-speaking professionals, could perceive therein the word ‘cell’ which, per se, is of reduced (if of any) distinctiveness since it describes some of the goods in question, for example fuel cells, or alludes to others (e.g. apparatus for accumulating electricity). However, this word is incorporated in the sign and, given its pronunciation, may be perceived together with the ending ‘-ution’ as an imaginative (and thus distinctive) wordplay from the words ‘cell’ and ‘solution’.

The contested sign, besides the component ‘Power’, consists of the ending ‘lution’ which is meaningless and therefore distinctive.

Both signs are word marks and therefore they do not have elements that could be considered more dominant (visually outstanding) than other elements.

Visually and aurally, the signs coincide in the letters ‘POWER***LUTION’, and in their sounds. However, they differ in the additional letters ‘CEL’ of the earlier mark, and their sounds, which are placed in the middle of the sign where the public pays less attention.

In some parts of the relevant territory, in Spain for example, the doubling of the ‘L’ will lead to a difference in pronunciation in comparison with the single ‘L’ in the contested sign. Nevertheless, the fact remains that at least the sounds of ten letters out of fourteen in the earlier mark and eleven in the contested sign, will be pronounced identically, creating a significantly similar aural overall impression.

Therefore, also taking into account the distinctiveness factor, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the element ‘POWER’ which, however, is of reduced or no distinctiveness and, therefore, leads to only a low degree of conceptual similarity.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive or weak element(s) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods were found to be partially identical and partially similar to varying degrees. The signs are visually and aurally similar to at least an average degree and conceptually similar to a low degree.

The inherent distinctiveness of the earlier mark is normal, the degree of attention of the relevant public is between average and higher than average. It should be noted that 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).

The compared signs, when considering their overall impression, display important visual and aural similarities due to the fact that all letters of the contested sign are identically contained in the earlier mark. The similarity is reinforced by a certain conceptual similarity as well as by the fact that the only difference between the signs – the letters ‘CEL’ of the earlier mark - are placed in the middle of the sign, where the consumer normally pays less attention. This, combined with the relatively significant length of both signs, make the impact of the sole difference very limited, also considering that the relevant consumer only rarely has the chance to make a direct comparison between the signs.

Considering all the above, there is a likelihood of confusion on the part of the public, even when composed of professionals displaying a higher than average degree of attention and even with respect to goods found to be similar to a low degree only.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 246 133. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 17 246 133 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

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

 

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

 

 

 

The Opposition Division

 

 

Martina GALLE

Claudia SCHLIE

Angela DI BLASIO

 

 

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.