OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 171 935
Tesla Holding a.s., Poděbradská 56/186, 180 66 Praha 9 – Hloubětín, Czech Republic (opponent), represented by Cms Cameron Mckenna V.O.S., Palladium, Poříčí 1079/3a, 110 00 Prague, Czech Republic (professional representative)
a g a i n s t
Tesla Inductive Technologies S.L., Calle Casablanca 24, 29620 Torremolinos, Spain (applicant), represented by Segura & Maclean S.L., Calle Linaje 2 - 3º Izquierda, 29001 Málaga, Spain (professional representative).
Class 9: Magnetic coils.
Class 35: Wholesaling, retailing and sale via global computer networks of magnetic coils.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
Community trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 Czech trade mark registration No 238 345.
The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Machines; gear boxes and other gearings; transmission and other driving gears; transporters; conveyors; engines others than road vehicles engines; piston rings; carburetors; sparking plugs; sparking coils and connection cables; pumps and filters; cleaning machines incl. high pressure cleaning machines; bearings; springs; valves; electrical engines; electro-motors; electro-generators; wire distributors; winding stands; cable trailers; mechanically operable industrial stands; machine tools; cutting machines tools; milling machines; power shears; lathe tools; drilling machines; lathes; chucks; saws; punching machines; borers; metal; plastics and wood processing machines incl. scrapes thereof; molds; form plates; tools and other aids; grinding machines; grindinFng discs; dressing tools; welding machines; welders; gas welders; boilers; equipment and means for mechanization; robot implementation; and rationalization of technological processes; manipulators; robots; building machines; rescue mechanisms; pulley blocks, excavators; elevators; earthwork; geology; agriculture; forest and horticulture machines; agricultural implement; packing technology machines; packing machines; label machines; color markers; spray guns; pneumatic punching and binding machines; discarding machines; textile machines; sewing machines; electro-technical products for industry and household especially rotating appliances such as universal and special kitchen appliances (especially electric mills, whisks, kneading machines, fruit presses and centrifuges, knife grinders, meat cutters, graters, peelers, kitchen robots, mixers, cutters, slicers, can unsealing tools); mechanical parts and components; checking mechanisms for machines; engines and self-driving engines; conversion apparatuses; cranes; electric energy generators; finishing machines; drill chucks; drill points; drill heads; semi-products and tool insets; filtering machines; fuel conversion facilities for internal combustion engines; electrical engines other than for land vehicles, turbines other than for land vehicles; driving mechanisms other than for land vehicles; pumps (parts of machines and engines); valves; engines and machines starters; turbines (hydraulic) turbo-compressors; textile machines; cleaning appliances (especially electric vacuum cleaners, floor polishers, shampoo distributors, carpet beaters, furniture and parquet polishers, automatic washing machines, spin dryers and dryers, dishwashers); rotary irons; hobby machines; electric hair, beards and nail cutters incl. accessories and parts to all above indicated products.
Class 9: Electrochemical current supplies; passive components; especially resistors; thermal resistors; potentiometers; condensers; connectors; other connecting devices; small transformers; choke coils and other inductors; telecommunication relays; switches; printed wiring; protection elements: active components: cathode-ray tubes; X -ray tubes; other electron tubes; especially photomultiplier tubes; glow tubes; microwave electron tubes; diodes; transistors; thyristors including diacs and triacs; other discrete semi-conductor components; crystal units; piezoceramic equipment and devices; high frequency ceramics; electron tubes – camera tubes; transmitting tubes; cathode-ray tubes; storage; tubes microelectronic circuits; especially monolithic integrated circuits; hybrid integrated circuits; switching ICs; storage ICs; processors; (CPU); optoelectronic devices and equipment; especially photoelectric devices; light emitting components; displays; electroluminescent panels; microwave components and circuits; magnetic a electromagnetic devices and equipment; ferrite elements; various electronic elements; especially filters; ultra microtomes; microscopes incl. electronic microscopes; terrestrial; cable and satellite information transmission devices; local and integral telecommunication networks devices; remote signaling; control, and metering devices; mobile phone sets and accessories using GSM networks; optical fiberoptic data transmission devices; lasers and laser telecommunication and metering equipment; aerials, receivers and decoders for satellite data transmission; wire-bound communication systems accessories and equipment; especially telephone sets; public exchanges; intercommunication and conference equipment; communication facilities; videophones: radio- communication and television apparatuses and equipment especially radio and television transmitters; converters; aerials and aerial systems; radio-relay connections; radio-stations, radio connecting and controlling devices; industrial television; terrestrial terminals for satellite links; radio and television signal receiving and distributing devices; local and wire broadcasting apparatuses and equipment; TV and broadcasting and reporting vans; consoles; public address systems and interpreting equipment; mixing consoles and equipment; magnetic cards; radio-location and radio-navigation apparatuses and aids; radars; data stations; industrial electronics equipment especially electronic and electric signaling; safeguard and controlling devices and road and rail transport; shipping; air carriage and mine haulage equipment including acoustic and optical indication and signaling devices; electronic and electric burglar; fire and similar alarm systems; manufacturing automation; regulation and production control machines and equipment including voice-controlled systems; detectors; sensors; actuators; control units; special electronic devices for textile industry; especially filament breakage sensors; textile machine control units; one-purpose machines and equipment for production of electronic and electrical devises and components; especially electronic lithographs; electronic and electric instruments; oscilloscopes and oscillographs; analyzers; especially electronic microscopes; electric and electronic recorders; indicating, measuring, monitoring and testing instruments and devices including non-electric values measuring instruments; telecommunication measuring instruments; nuclear technology instruments and equipment; especially particle accelerators; radioactive emission indicators; measuring and monitoring instruments; nuclear resonance spectrometers; meteorological devices; ultrasonic devices; scientific and laboratory apparatuses; clock generators; especially electronic metronomes; weighing apparatuses; vacuum apparatuses; especially channel electron multipliers; vacuum interrupters; vacuum condensers; vacuum generation and measurement devices; mass spectrometers; ultra-vacuum devices; linear accelerators; microwave oscillators; coherent radiation generators; medical electronic instruments and devices for examination; diagnostic and therapeutic purposes including living organism functions stimulating instruments; microprocessors; electric and electronic equipment and accessories to vehicles, ships and aircrafts; special materials for use in electrical engineering and electronics especially semi-conductors; ferromagnetic elements; high pure chemical compounds; consumer electronics devices; especially radio and TV sets including the combination thereof with other equipment; monitors and displays; video-recorders; memo recorders; record players; reel and cassette recorders; video-cameras; reel and cassette players; video; video-players including laser digital players; recording media such as records, bands, cassettes, discs, tuners, and electronic amplifiers; electronic musical instruments; electronics watches of all types; cinema apparatuses; cameras; movie cameras; photoelectric accessories; TV games and toys; accessories to and components for consumer electronics; especially electro-mechanical, electromagnetic, and electro-acoustic converters; microphones, loudspeakers, and amplifiers; earphones and amplifiers; CD and DVD players; cables; recording media; especially records; tapes; cassettes; discs; machines and devices for data collection; transmission; processing and storing and their mutual combination; especially computers; servers; computer software and hardware incl. interactive multimedia applications; calculators; modems; terminals; printers; copy machines; scanners; facsimile machines and other office facilities; computer peripheral equipment; display units; diskette drives; memory cards; notebooks; indicators; electronic aids for poly-technical education and teaching incl. microcomputers and electronic kits and games; interactive set-top boxes for data reception and transmission; optical cables and their accessories; components, parts and accessories to all the above indicated goods; electric irons and gooses.
Class 10: Surgical, medical, dental and veterinary devices and instruments; artificial limbs, eyes and false teeth; orthopaedic aids; suture materials; medical diagnostics display devices including but not limited to X-ray and radiological systems; X-ray tubes and accessories; computer tomography; magnetic resonance and spectroscopic systems; ultrasound medical apparatuses; nuclear medical apparatuses; positron-emission tomography apparatuses; medical intervention devices and systems and medical diagnostic display; therapeutic and intervention system accessories including the accessories to and components of all previous devices and systems.
Class 11: Electric illumination sources especially incandescent lamps; discharge tubes; fluorescent tubes; lighting fitting; lightning equipment and their components; all types of heat consuming based on both direct and indirect heating systems; (especially electric and gas cookers; kitchen ranges; water heaters; kettles; heat guns; infra-red heaters; grills; sandwich-makers; toasters; welders; deep fryers; roast ovens; ovens; air heaters; electric fire; heater fans; air conditioners; water heat radiators for baths; curling irons; hair driers; microwave ovens; perm rods; vibration massage machines); cooling systems; refrigerators; freezers; ice-cream makers; steam generators; drying and ventilation systems; water distribution systems and sanitary facilities; incl. without limitation air-conditioning units; driers; dehumidifiers; humidifiers; range hoods and ventilation systems incl. accessories to and components of all the previous products.
Class 16: Paper-made advertisement items.
Class 18: Leather-made advertisement items.
Class 20: Plastics and wood-made advertisement items.
Class 21: Ceramics and glass-made advertisement items.
Class 24: Textile advertisement items.
Class 35: Electronic trading services; advertisement and promotional activities relating to the above indicated products.
Class 38: Telecommunication services; leasing out telecommunication and transmission facilities; internet and intranet communication services.
Class 42: Computer programming services; intellectual property licenses.
The contested goods and services are the following:
Class 9: Magnetic coils.
Class 35: Wholesaling, retailing and sale via global computer networks of magnetic coils.
Class 39: Transport; Packaging and storage of magnetic coils.
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 terms ‘especially’, ‘such as’, ‘including’, used in the opponent’s list of goods and services, 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 (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 magnetic coils are identical to the opponent’s choke coils and other inductors, because the opponent’s goods are included in or overlap with the contested goods or vice versa.
Contested services Class 35
The contested retailing and sale via global computer networks of magnetic coils are included and therefore identical to the opponent’s electronic trading services.
The contested wholesaling of magnetic coils is similar to the opponent’s electronic trading services. These services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.
Contested services Class 39
Transport services are not considered similar to any of the opponent’s goods in Classes 7, 9, 10, 11, 16, 18, 20 and 21 even if those can be the object of the transport. Transport services refer to a fleet of trucks or ships used to move goods from one place to another. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. The nature, purpose and method of use of these services and goods are different. They do not have the same distribution channels and they are not in competition. Therefore, they are dissimilar.
Packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to any of the opponent’s goods in Classes 7, 9, 10, 11, 16, 18, 20 and 21, even if those can be packed and/or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and they are not in competition. Therefore, these services are dissimilar.
The abovementioned transport services and packaging and storage services are also considered dissimilar to all the opponent’s services in Classes 35, 38 and 42. These services have nothing in common and they target different publics. They differ in purpose, nature and distribution channels. They are neither complementary nor in competition.
Earlier trade mark
The relevant territory is the Czech Republic.
The earlier mark is a word mark consisting of the word ‘TESLA’.
The contested sign is a figurative mark comprising the word ‘TESLA’ in black capital letters which are struck through with a white line in their lower part. The highly stylised but still recognisable central letter ‘S’ is particularly elongated with its extremities extending above and under the characters immediately following and preceding it. The inscription ‘INDUCTIVE TECHNOLOGIES’ in capital letters of a tiny size are placed under the last two letters (‘LA’) of the above described word.
Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘TESLA’. However, they differ in the stylisation of the contested sign and in the additional expression ‘INDUCTIVE TECHNOLOGIES’.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TESLA’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the expression ‛INDUCTIVE TECHNOLOGIES’ of the contested mark, which has no counterpart in the earlier sign.
Conceptually, the public for the relevant goods and services is a specialised public. Therefore, it is considered that it will perceive the term ‘TESLA’ in both signs as designating a ‘unit of energy measurement, unit of magnetic induction or magnetic flux density in the metre–kilogram–second system (SI) of physical units’ or as a reference to Nicola Tesla a world-renowned Serbian-American inventor and engineer who discovered and patented the rotating magnetic field, the basis of most alternating-current machinery. To that extent, the signs are conceptually similar.
The contested mark additionally includes the English indication ‘INDUCTIVE TECHNOLOGIES’ that will be understood as the application of practical sciences involving, electrical or magnetic induction to industry or commerce. The inclusion of this last concept in the contested sign does not alter the impression of conceptual similarity between the signs.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
As already mentioned above, the element ‘TESLA’ in both signs will be identified as designating a ‘unit of energy measurement, unit of magnetic induction or magnetic flux density in the metre–kilogram–second system (SI) of physical units’ or as a reference to Nicola Tesla a world-renowned Serbian-American inventor and engineer who discovered and patented the rotating magnetic field, the basis of most alternating-current machinery. Bearing in mind that the relevant goods and services are magnetic coils and wholesaling, retailing and sale via global computer networks of magnetic coils, it is considered that this element is weak since it indicates that they belong to the field of electromagnetic induction. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the marks.
The element ‘INDUCTIVE TECHNOLOGIES’ of the contested sign will be associated with ‘the application of practical sciences involving, electrical or magnetic induction to industry or commerce’. Bearing in mind that the relevant goods and services are related to the (electromagnetic) inductive industry it is considered that this element is weak.. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.
The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.
The element ‘TESLA’ in the contested sign is the dominant element as it is the most eye‑catching.
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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question, namely magnetic coils and wholesaling, retailing and sale via global computer networks of magnetic coils.
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 of a specialised nature and are directed at the at business customers with specific professional knowledge or expertise. The degree of attention is considered to be high.
Global assessment, other arguments and conclusion
The goods and services are partly identical, partly similar and partly dissimilar and the attention of the public is high.
The signs are visually, aurally and conceptually similar owing to the presence of the word ‘TESLA’ of the earlier mark which is entirely contained in the contested sign.
Additionally, ‘TESLA’ forms the most eye-catching or dominant element of the contested sign. Notwithstanding that the latter also includes the expression ‘INDUCTIVE TECHNOLOGIES’, which has no counterpart in the earlier mark, this element has only a negligible impact on the overall impression of the mark due to its very small size and weak character in relation to the goods and services of reference.
Although in section c) of this decision the term ‘TESLA’ has been found to be weak, this issue does not invalidate the fact that the marks produce a similar overall impression; indeed, they are similar from the three points of view taken into consideration (visual, aural and conceptual). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (judgment of 29/09/1998, C‑39/97, ‘Canon’), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 13/12/2007, T‑134/06, ‘Pagesjaunes.com’).
Furthermore, as regards the figurative element of the contested sign, it is considered that the relevant consumer will focus its attention on the word element of the mark. This is in line with the principles set forth by the Court of Justice, which confirms that when the sign consists 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, 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 (judgment of 14/07/2005, T-312/03, ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24). Therefore, consumers will refer to the contested sign by its verbal elements and the word ‘TESLA’ can be clearly identified therein as an independent stand-alone word that will catch the attention of consumers.
A complex mark and another mark which is identical or similar to one of the components of the complex mark can be considered to be similar only if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see, inter alia, judgment of 23/10/2002, T-6/01 ‘Matratzen’, paragraph 33; judgment of 13/04/2005, T-286/03 ‘Right Guard Xtreme Sport’, paragraph 60, 70-73; judgment of 07/07/2005, T-385/03 ‘Biker Miles’, paragraph 39). This applies also to the case at hand. As explained above, the word ‘TESLA’ is the most dominant element in the contested sign for the reasons set out above in more detail.
In spite of the fancy font and the additional expression ‘INDUCTIVE TECHNOLOGIES’ the relevant consumers might be led by the visual, aural and conceptual coincidence in the word ‘TESLA’ to believe that the identical and similar goods and services under the two marks come from the same or economically-linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Czech trade mark registration No 238 345.
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.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.
The opponent has also based its opposition on the following earlier trade mark:
Community trade mark registration No 3 411 758 for the word mark ‘TESLA’.
Since this mark is identical to the one which has been compared and covers the same or a narrower scope of goods and services in Classes 9, 10 and 11, the outcome cannot be different with respect to services for which the opposition has already been rejected.
This other earlier right also invoked by the opponent additionally covers the following goods in Class 28: games and playthings, including electronic kits and games as well as musical playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees and other electronic Christmas decorations. These goods are clearly different to the goods and services applied for in the contested trade mark. They differ in nature, intended purpose and commercial origin. Furthermore, they target a different public, do not share the same channels of distribution and are neither complementary nor in competition with each other. Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected; no likelihood of confusion exists with respect to these services.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.