OPPOSITION Nо B 3 123 416

 

Fluke Corporation, 6920 Seaway Boulevard, 98203 Everett, United States of America (opponent), represented by HGF Limited, 1 City Walk, LS11 9DX Leeds, United Kingdom (professional representative) 

 

a g a i n s t

 

Anuland Limited, Dunmoylan, Shanagolden, Ireland (applicant), represented by Hanna Moore + Curley, Garryard House 25/26 Earlsfort Terrace, D02 PX51 Dublin 2, Ireland (professional representative).

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 123 416 is upheld for all the contested goods and services:

 

2.	European Union trade mark application No 18 205 212 is rejected in its entirety.

 

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

 

REASONS

 

On 08/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 205 212 (figurative mark). The opposition is based on European Union trade mark registration No 18 095 339, ‘FIELDSENSE’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

 

 

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

 

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

a) The goods and services

 

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

 

Class 9: Electrical testers, namely, voltage, current, frequency, continuity, and resistance testers.

The contested goods and services are the following:

 

Class 9: Electric and electronic monitoring instruments for agricultural use; electronic apparatus and instruments for soil analysis; electronic instruments and apparatus for soil analysis in the context of sporting facilities; software applications for use in agriculture; software applications for soil analysis.

Class 42: Design and development of computer software for use in agriculture; Soil analysing services; Soil testing services; scientific and technological services in the field of agriculture and research and design relating thereto.

Class 44: Agricultural services; information, advisory and consultancy services relating to agriculture.

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 opponent’s list of goods in Class 9 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 9

 

The contested electric and electronic monitoring instruments for agricultural use; electronic apparatus and instruments for soil analysis; electronic instruments and apparatus for soil analysis in the context of sporting facilities are all monitoring tools or machines used to analyse the soil or for use in agriculture. Even if the word ‘monitoring’ is not used in some terms, the term ‘soil analysis’ makes clear that the goods monitor variables in the soil to allow analysis of its content, presumably also on the growth of plants. It can also be inferred from the generally worded first term in the list, electric and electronic monitoring instruments for agricultural use, that all following terms are monitoring tools of some sort.

The opponent’s goods in Class 9 are measuring or monitoring devices allowing to analyse electrical currents. The variables ‘voltage, current, frequency, continuity, and resistance’ all describe the physical properties of an electric current.

As the opponent argued and proved with evidence, electrical current is measured to test soil quality for crops and plants. According to the documents submitted by the opponent in Exhibit 3 attached to its submissions of 25/11/2020, such measurements are used as proxy values to judge the soil quality in agriculture (for instance moist, salt content). It can be inferred from this that the opponent’s electrical testers could encompass either products which are deployed directly on the soil or products which are a part of a measuring or monitoring device used in agriculture to analyse the soil. Insofar, it makes no difference if the corresponding tool is referred to as electrical testers such as in the opponent’s list of goods or as electric and electronic monitoring instruments for agricultural use respectively electronic instruments and apparatus for soil analysis such as in the applicant’s list of goods.

Consequently, all the above mentioned goods under comparison, the opponent’s ‘electrical testers’ as well as the applicant’s contested soil analysis tools used in agriculture, namely electric and electronic monitoring instruments for agricultural use; electronic apparatus and instruments for soil analysis; electronic instruments and apparatus for soil analysis in the context of sporting facilities, encompass instruments and apparatuses for testing the electrical parameters of soil, e.g. through soil resistivity testing or ground conductivity testing, as this is mentioned and explained in detail in the opponent’s evidence.

Therefore, the contested electric and electronic monitoring instruments for agricultural use; electronic apparatus and instruments for soil analysis; electronic instruments and apparatus for soil analysis in the context of sporting facilities overlap with the opponent’s electrical testers, namely, voltage, current, frequency, continuity, and resistance testers. Therefore, they are identical.

The contested software applications for use in agriculture; software applications for soil analysis is the software which is used to operate the above mentioned tools for soil analysis which include the opponent’s ‘electrical testers’ as far as they are used for soil analysis, as explained above. It is thus complementary to the opponent’s electrical testers, namely, voltage, current, frequency, continuity, and resistance testers. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers will design and produce both the contested software and electrical testers, namely, voltage, current, frequency, continuity, and resistance testers and sell these to the same public. This is supported by Exhibit 4 submitted by the opponent, which shows that the applicant offers the monitoring device and a corresponding application for smartphones. Last but not least the goods serve the same needs and have thus the same purpose.

Taking all these factors into account, the contested software applications for use in agriculture; software applications for soil analysis and electrical testers, namely, voltage, current, frequency, continuity, and resistance testers are considered similar.

Contested services in Class 42

The contested soil analysing services; soil testing services; scientific and technological services in the field of agriculture and research and design relating thereto are services which may be offered by the same manufacturers which also produce the testing tools used for soil analysis. As explained above, the applicant’s soil analysis tools used in agriculture overlap with the opponent’s electrical testers, namely, voltage, current, frequency, continuity, and resistance testers. Therefore, they share the same distribution channels and are offered to the same public. It is likely that consumers who wish to have their soil analysed, for instance farmers, are likely to not do the analysis themselves but hire a company specialised in this field. The opponent’s evidence gives examples for that and while the companies mentioned in Exhibit 3 come from an different background (engineering, lightning protection) they can and do cater to the agricultural industry as well, which is proven by the opponent’s evidence. Therefore, the contested services are offered by the same entities as the opponent’s goods, through the same business channels to the same public. Moreover, they are complementary.

It must be borne in mind that services and goods are different in nature, since services are intangible whereas goods are tangible, meaning they differ in nature. Nonetheless, this is not sufficient to consider the contested services soil analysing services; soil testing services; scientific and technological services in the field of agriculture and research and design relating thereto to be dissimilar to the opponent’s goods in Class 9. Consequently, and for the reasons stated above, they are similar.

As regards the contested design and development of computer software for use in agriculture the opponent’s evidence shows that software which is used together with soil analysis monitoring tools is offered together with such tools (as shown in Exhibit 4). In addition, software ‘for use in agriculture’ is usually highly specific software. It is therefore likely that the manufacturers of any tools used in agriculture that are operated by a software develop this software themselves. Furthermore, such a software serves the same purpose and its design is offered through the same retail channels to the same public. Therefore, the contested design and development of computer software for use in agriculture are similar.

Contested services in Class 44

The contested agricultural services include a variety of services, among them vermin and pest control for agriculture. As mentioned above, the opponent’s goods in Class 9 encompass monitoring devices used in agriculture. Although goods and services are different in nature in this case they are applied in the same field, namely agriculture. Consequently, they target the same public and they might be offered by the same entities. In addition, given that soil electricity analysis is required to add the correct amount of nutrients to a field and determine whether crops can be planted in a specific area of land, as the opponent’s evidence explains, the opponent’s devices and agricultural services are complementary. In sum, agricultural services are similar to a low degree with the opponent’s goods.

Regarding the contested information, advisory and consultancy services relating to agriculture, these are similar to a low degree to the opponent’s goods in Class 9 as well because a producer of a monitoring device for the use in agriculture is likely to also provide these contested services relating to agriculture given that the sense of a monitoring device is to provide information and advice to users (farmers and agricultural companies) on how to best manage their fields. Consequently these services may provided by the same entities through the same channels and target the same public.

b) Relevant public — degree of attention  

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, some of the goods and services found to be identical or similar are directed at the public at large (for instance, electrical testers) while the majority of them is directed at business customers with specific professional knowledge or expertise (for instance, electric and electronic monitoring instruments for agricultural use).

  

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

 

c) The signs

 

FIELDSENSE
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 common element ‘FIELDSENSE’ is a term composed of the English terms ‘FIELD’ and ‘SENSE’ and, therefore, meaningful in certain territories, for example in those countries where English is understood. A conceptual overlap in one element renders the signs more similar and thus increases the likelihood of confusion for a public which understands the meaning of that common element. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in Ireland and Malta.

The earlier mark is a word mark consisting solely of the term ‘FIELDSENSE’. The fact that the earlier mark is registered in upper-case letters only is irrelevant. The protection of a word mark concerns the word as such as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as in the present case.

The contested sign is a figurative sign consisting of the word element ‘FieldSense’, which displays a slightly stylised font which visually separates the element ‘Sense’ from the element ‘Field’. This visual separation is underscored by the fact that the letter ‘S’ at the beginning of the term ‘Sense’ is written in uppercase. The barely perceptible stylisation of the typeface itself is of a purely decorative nature and therefore has little impact on the overall perception of the sign by the consumers under scrutiny.

The figurative device on top of the verbal element in the contested sign will be perceived by at least part of the public under scrutiny as a stylised wave. As such it is a symbol for measuring and science in general and thus alludes to the purpose of the measuring devices in Class 9 and soil testing /analyzing services in Class 42 as well as the other science-related goods and services (such as the software applications for soil analysis in Class 9 and scientific and technological services in the field of agriculture and research and design relating thereto in Class 42). The figurative device is therefore of a below average distinctiveness for these goods and services. It does not have any particular meaning in relation to the remaining services in Class 44 covered by the contested mark. Therefore, for this part of the public, it is distinctive to a normal degree with regard to these services, namely agricultural services; information, advisory and consultancy services relating to agriculture. For the remaining part of the public the figurative element will be perceived as an abstract geometric shape without a particular meaning. As such it bears no relationship with the goods and services and is thus normally distinctive for all goods and services covered by the contested mark. For reasons of economy of procedure, and taking into account that the signs are more similar if the figurative element does not introduce a conceptual difference, the Opposition Division will focus in the following on the part of the public under scrutiny which perceives the figurative element as abstract geometric shape and thus as normally distinctive.

In any case, and with regard to all goods and services covered by the contested sign, 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).

Even if the word element 'FIELDSENSE', which constitutes the earlier mark and is included in the contested sign, consists of only one word, it must be recalled that, in the General Court's view, the average consumer commonly perceives a mark as a whole and does not pay attention to the various details. He will nevertheless break down a word sign which he perceives into those word elements which convey a specific meaning to him or which are similar to words with which he is familiar (Case T-256/04 Respicur [2007] EU:T:2007:46, paragraph 57; Case T-146/06 Aturion [2008] EU:T:2008:33, paragraph 58). In case of the contested sign, the public under scrutiny will be even more prone to break down the verbal element as the two term ‘Field’ and ‘Sense’ are visually separated by the bold lettering of ‘Sense’ and the uppercase ‘S’ at the beginning of ‘Sense’.

In light of the above principle, the matching word element ‘FIELDSENSE’ is broken down by the public under scrutiny into the components ‘FIELD’ and ‘SENSE’. FIELD' means an area of land, used for growing crops or keeping animals, usually surrounded by a fence (information obtained at https://dictionary.cambridge.org/de/worterbuch/englisch/field on 13/05/2021) while ‘SENSE’ refers to the five physical abilities to see, hear, smell, taste, and feel but also means ’a general feeling or understanding:’ or, as a verb, ‘to feel or experience something without being able to explain exactly how’ (information obtained at https://dictionary.cambridge.org/de/worterbuch/englisch/sense on 13/05/2021).

The element ‘FIELD’ on its own might allude to the purpose of the goods and services of the contested sign but in its entirety, ‘FIELDSENSE’ is normally distinctive. It may be understood as a reference to the ability to ‘sense a field’ or have a ‘sense for a field’ which might lead one to the conclusion that the term refers to measuring devices for fields worked for agricultural purposes. However, the term remains an artificial term which does not, as such, exist in the English language, and does not convey any apparent, immediately perceivable meaning. While one might ultimately be able to find a connection to the goods and services at issue multiple mental steps are required to connect the term and the goods and services.

The contested sign has no element that could be considered clearly more dominant (visually more eye-catching) than other elements. Furthermore, as regards the visual impact of the figurative component of the contested sign, although it is placed above the term ‘FieldSense’ and occupies a large space in the sign, it does not overshadow said term, which remains clearly noticeable and readable.

Visually, aurally and conceptually, the signs coincide in their common verbal element ‘FIELDSENSE’. The signs only differ visually in the figurative device, which has a lesser impact on the overall impression, and in the very slight stylisation of the verbal element of the contested sign which is barely suited to distinguish the signs.

Therefore, from the point of view of the public under scrutiny, the signs are visually similar to an average extent, conceptually highly similar and aurally identical.

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.

 

e) Global assessment, other arguments and conclusion

In the present case, the goods and services were found to be identical or similar. The signs are visually similar to an average extent, conceptually highly similar and aurally identical. They are directed at both general and professional public with the degree of attention that will vary from average to high.

The distinctiveness of the earlier mark is normal.

  

The signs coincide in their verbal elements which are primarily perceived by the public under scrutiny while the differences between the signs are confined to barely distinctive (the stylisation of the verbal element of the contested sign) or secondary elements and aspects (the figurative element of the contested sign).

 

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).

 

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.

 

Indeed, it is highly conceivable that the relevant consumer will 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion in the form of a likelihood of association on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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.

 

It follows from the above that the contested trade mark must be rejected for all the contested goods and services, including those found to be similar to a low degree.

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

 

 

Monika CISZEWSKA

Christian STEUDTNER

Lidiya NIKOLOVA

 

 

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.