OPPOSITION Nо B 3 123 120

 

Panasonic Life Solutions Elektrik Sanayi Ve Ticaret Anonim Sirketi, Abdurrahmangazi Mah. Ebubekir Cad. No:44 Sancaktepe, Istanbul, Turkey (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Niko Group NV, Industriepark West 40, 9100 Sint-Niklaas, Belgium (applicant), represented by An De Vrieze, Industriepark-west 40, 9100 Sint-Niklaas, Belgium (employee representative).

On 30/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 3 123 120 is rejected in its entirety.

2. The opponent bears the costs.

 

REASONS

 

On 04/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 203 523 ‘Niko @home’ (word mark). The opposition is based on German trade mark registration No 30 513 882 (figurative mark) and international trade mark registration designating Italy No 1 111 618 (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.

 

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 international trade mark registration designating Italy No 1 111 618.

 

a)  The goods and services

 

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

The contested goods and services are the following:

 

Class 9: Dimmer switches; switches, electric; electrical switches; light switches; touch switches; wireless switches; electrical switch assemblies; electric switch plates; switch plates [electric]; toggle switches [electric]; domestic switches [electric]; push switches (electrical -); electric light switches; switching apparatus (electric -); electrical switching apparatus; decorative switch plate covers; dimmer switches for lights; push button switches (electrical -); electronic touch sensitive switches; apparatus and instruments for switching electricity; electrical sockets; socket outlets (electric -); connector sockets (electric -); remote control sockets; multi-outlet socket blocks; electric power supply sockets; sockets, plugs and other contacts [electric connections]; detectors; infrared detectors; proximity detectors; leak detectors; motion detectors; radar detectors; sensors and detectors; passive infrared detectors; sensors; sensor switches; sensor controllers; electrical sensors; electronic sensors; infrared sensors; passive infrared sensors; light sensors; motion sensors; touchscreen sensors; on-off sensors; covers for electric outlets; electric outlet covers; computer software for the control of lighting; dimmers [regulators] (light -), electric; electric light dimmers; light dimmers; lighting dimmers; light dimmers [regulators], electric; light regulators [dimmers], electric; lighting control apparatus; lighting control software for use in commercial and industrial facilities; regulators [dimmers] (light -), electric; computer software for the remote control of electric lighting apparatus; computer software for use in remote meter monitoring; computer software for use in remote meter reading; downloadable computer software for remote monitoring and analysis; electrical remote control apparatus; remote controls for electronic products; home automation devices; home automation software; home automation systems; smart home software; electrical outlet plates; electrical outlets; electrical power outlet boxes; television outlets; apparatus and instruments for transmitting data; apparatus and instruments for processing data; apparatus for the transmission of data; electrical and electronic apparatus for the transmission of data; electrical and electronic instruments for the transmission of data; intelligent gateways for data pre-processing; intelligent gateways for real-time data analysis; wireless communication devices for voice, data, or image transmission; electronic access control system for buildings; software to control building environmental, access and security systems; access control apparatus (electric -); access control devices; access control installations (electric -); access control systems (electric -); access control units (electric -); biometric access control systems; electrical access control apparatus; electronic access control systems for interlocking doors; apparatus for monitoring electrical energy consumption; electric control devices for energy management; energy control devices.

Class 11: Sockets for electric lights; apparatus and installations for lighting; apparatus and instruments for lighting; apparatus for lighting; electric apparatus for lighting; electric indoor lighting installations; electric indoor lighting apparatus; electric lighting apparatus; electric lighting installations; installations for electric lighting; led light strips; led mood lights; light installations; lighting installations; lighting apparatus; lighting apparatus and installations; lighting transformers; luminaires for outdoor lighting; mood lights; outdoor electrical lighting fixtures; outdoor lighting; residential lighting fixtures.

Class 42: Design of lighting systems; design and development of data processing software; electronic data storage; recording data relating to energy consumption in buildings; measuring the environment within buildings; advisory services relating to energy efficiency; advisory services relating to the use of energy; design and development of software for control, regulation and monitoring of solar energy systems; development of energy and power management systems; programming of energy management software.

Some of the contested goods and services are clearly identical or similar to goods on which the opposition is based. For example the contested switches, electric in Class 9 are identical to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity in the same class as the latter includes, as a broader category, the former. Furthermore, the contested electronic data storage in Class 42 is similar to the opponent’s computers in Class 9 because they coincide in distribution channels, relevant public and are, in addition, complementary.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to the goods of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to identical are directed at the public at large and at professionals with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c)  The signs

	Niko @home
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 verbal element ‘VIKO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The very slight stylisation of the verbal element of the earlier mark will definitely not distract the consumer’s attention from the word itself. It has only a decorative function within the sign and, therefore, its impact on the assessment of likelihood of confusion is reduced.

The verbal element ‘Niko’ of the contested sign, contrary to the opponent’s opinion, will be understood by a substantial part of the relevant public as a short form of a person’s given name. As it is not related to the goods and services at issue, this element is also distinctive.

The additional verbal element of the contested sign, ‘home’, is a rather basic English word meaning ‘the place or a place where one lives; a house or other dwelling’ (information extracted from Collins English Dictionary on 28/04/2021 at https://www.collinsdictionary.com/dictionary/english/home). On account of its widespread use in commerce and advertising throughout the European Union, it is reasonable to assume that it will also be understood by the relevant Italian public. Bearing in mind that the relevant goods are home appliances/installations, their parts or components, or components used in relation to home appliances/installations, and the relevant services may also somehow be related to such appliances/installations, the element ‘home’ is at best weak for those goods and services, as it describes their purpose or destination. In the case that such a connection cannot be made in relation to some of the goods and/or services in question, the Opposition Division will assume such a link resulting in a weak character of the element ‘home’ which is the best scenario under which the opposition can be examined.

The element ‘@home’ in the contested sign, taken as a whole, is likely to be associated with something digital, electronic or technologically advanced otherwise and located, or occurring at one’s place of residence. This is because the symbol ‘@’ that precedes the verbal element ‘home’ will be perceived as referring to one’s address, albeit it is mainly used in email addresses and other forms of electronic communication. Besides its possible connection to at least the communication-related goods and services in Classes 9 and 42, this symbol as such has a little trade mark significance per se and, therefore, only a limited impact, if any, on the comparison of the signs.

As a whole, the element ‘@home’ will in all likelihood point to the idea that the relevant goods and services, for example electrical and electronic apparatus, sensors and software, lighting installations, services related to energy saving etc., are intended for home automation systems or – more generally – for household use. The distinctiveness of this element, therefore, is considered weak for the relevant goods and services.

In terms of dominance, neither of the signs has any dominant element.

Visually and aurally, the signs coincide in the letters ‘*IKO’ of their distinctive verbal elements ‘VIKO’ and ‘Niko’ and the sound of these letters. The signs differ in the initial letters of those verbal elements, ‘V’ versus ‘N’, and in the additional element of the contested sign, namely ‘@home’, as well as in their sound.

Furthermore, as the signs have different lengths (one verbal element/four letters in the earlier mark versus two verbal elements/eight letters in the contested sign) and numbers of syllables (two syllables versus at least four syllables), their rhythms and intonations also differ significantly.

It is important to emphasise that the visual and aural similarities between the signs are in their distinctive verbal elements ‘VIKO’ and ‘Niko’. Due to their lengths, the public will easily be able to perceive all of their single letters and, therefore, the difference in their initial letter will lead to a different overall impression of those verbal elements. This finding is supported by the fact that 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. On the basis of the above, the difference in the initial letters of the signs will not go unnoticed by consumers and will play a significant role in their overall impression.

Finally, the same number of letters in the particular elements of the marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Considering all the above, in particular the distinctiveness of the coinciding and differing elements of the signs from the perspective of the relevant public, as well as the fact that the initial letter of the elements where the coincidence is found is different, the signs are found to be visually and aurally similar to a low degree.

Conceptually, although the public under analysis will perceive the meanings of the elements of the contested sign as explained above (irrespective of their degree of distinctiveness), the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

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 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

 

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 (recital 11 of the EUTMR). 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).

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 undertaking or economically linked undertakings.

As concluded above, the contested goods and services are assumed to be identical to the opponent’s goods and they target the public at large and professionals, whose degree of attention varies from average to high. The earlier trade mark has a normal degree of inherent distinctiveness.

The signs in dispute are visually and aurally similar to a low degree, whilst conceptually they are not similar, as explained above in section c) of this decision. The similarities between the signs result from the presence of the same letters ‘*IKO’ in the distinctive verbal elements of both signs, ‘VIKO’ and ‘Niko’. However, the differing initial letter of those verbal elements will definitely not go unnoticed by the relevant public, even if displaying only an average degree of attention. Furthermore, although the additional element ‘@home’ of the contested sign is weak and has limited impact on the perception of the signs, its presence in the contested sign helps to create a different overall impression vis-à-vis the earlier trade mark. Moreover, the conceptual difference between the signs cannot be disregarded either, as it is the distinctive element, ‘Niko’ that has a significant impact on the semantic perception of the contested sign by the relevant public. This is because the public will immediately grasp this verbal element as referring to a person and thus will easily differentiate the contested sign from the earlier trade mark, where no concept can be identified.

All in all, the differences between the signs are clearly perceivable on visual, aural and conceptual levels and are sufficient to enable the relevant public, not only professionals but also the public at large, including where the public’s degree of attention is average, to safely distinguish between them. When encountering the conflicting signs, the relevant public will mentally register the differences between them. Therefore, a likelihood of confusion between the signs can safely be ruled out.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

The opponent referred to a previous decision of the Office (08/02/2020, B 3 075 731, versus ) to support its arguments. 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 case referred to by the opponent is not relevant to the present proceedings. It is evident that the signs in that case displayed more similarities and their differences were hidden in the middle of their elements, where the public normally pays less attention. It follows from the above that the circumstances of the above case differ from those in the present case, which justifies a different outcome. Therefore, the opponent’s reference to a previous decision of the Office must be set aside.

In its submissions, the opponent also referred to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration. However, bearing in mind all the relevant circumstances of the case, the Opposition Division finds that, contrary to the opponent’s view, the differences between the signs are sufficient to exclude likelihood of confusion.

Considering all the above, there is no likelihood of confusion (including likelihood of association) on the part of the public in the relevant territory.

The opponent has also based its opposition on German trade mark registration No 30 513 882 (figurative mark), registered for the following goods:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; apparatus for recording, transmission and reproduction of sound and images; magnetic data carriers, recordable discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; switches, sockets, fuse boxes, electrical timers.

The other earlier right invoked by the opponent is less similar to the contested sign due to its stylisation and figurative aspects. More specifically, this earlier mark consists of the three letters ‘V*KO’ and three dots between the letters ‘V’ and ‘K’. Taking into account that the relevant consumers tend to read the marks, at least part of the relevant public will perceive the earlier mark as a word ‘VIKO’ with a stylised depiction of a letter ‘I’. However, even if taking this part of the relevant public into consideration, for which the word ‘VIKO’ has no meaning and is distinctive to an average degree, there is no likelihood of confusion with respect to this earlier mark, for the same reasons as already given above. This holds true irrespective of the perception and degree of distinctiveness of the differing elements in the contested sign in which the verbal element ‘Niko’ will be understood as short for a male given name ‘Nikolas’. In addition, this earlier mark covers the same scope of goods as the earlier mark already compared above. Therefore, the outcome cannot be different, and no likelihood of confusion exists with respect to this earlier mark.

Therefore, the opposition must be rejected in its entirety. 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

The Opposition Division

Andrea VALISA Martin MITURA Solveiga BIEZA

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.