OPPOSITION No B 2 273 368

Correct Power Institute GmbH, Fürstenberger Straße 70, 34431 Marsberg, Germany (opponent), represented by Adares Patent- und Rechtsanwälte Reininger & Partner, Schumannstr. 2, 10117 Berlin, Germany (professional representative)

a g a i n s t

IEP Technologies LLC, 417-1 South Street, Marlborough, Massachusetts 01752, United States of America (applicant), represented by Patentanwälte Pinter & Weiss OG, Prinz-Eugen-Str. 70, 1040 Vienna, Austria (professional representative).

On 27/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 273 368 is upheld for all the contested goods and services.

2. European Union trade mark application No 11 950 516 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 950 516. The opposition is based on, inter alia, European trade mark registration No 11 286 317. 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 trade mark registration No 11 286 317.

1. The goods and services

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

Class 9: Measuring, signalling, checking (supervision) apparatus and instruments; Apparatus and instruments for regulating and controlling electric current; Fire-extinguishing apparatus; Alarms; Electric installations for the remote control of computer centres and of hardware and software systems for minimising energy consumption; Data processing equipment and computers; Computer peripheral devices; Computer software.

Class 11: Apparatus for refrigerating, drying, ventilating; Air conditioning installations.

Class 40: Contract manufacture of hardware systems, for others; Contract manufacture of air conditioning installations, for others; Air conditioning of rooms; Rental of air conditioning apparatus.

Class 42: Contract manufacture of software systems, for others.

The contested goods and services are the following:

Class 9: Safety equipment for suppression, isolation and venting of explosions of combustible dusts or vapors in process industries.

Class 39: Installation and maintenance of safety equipment in the field of explosions of combustible dusts or vapors in process industries.

Class 42: Research and design services in the field of safety equipment for suppression, isolation and venting of explosions of combustible dusts or vapors in process industries.

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 safety equipment for suppression, isolation and venting of explosions of combustible dusts or vapors in process industries serve to detect explosions and prevent them before major damage can occur. They overlap with or are included in the opponent’s broader category of signalling apparatus and instruments that include warning devices against a damage. Therefore, they are identical.

Contested services in Class 39

The contested installation and maintenance of safety equipment in the field of explosions of combustible dusts or vapors in process industries are similar to the opponent’s signalling apparatus and instruments. They can have the same relevant public, distribution channels and commercial origin. It is common that the companies selling the goods also offer installation and maintenance services independently.

Contested services in Class 42

The contested research and design services in the field of safety equipment for suppression, isolation and venting of explosions of combustible dusts or vapors in process industries are similar to the opponent’s signalling apparatus and instruments. They can coincide in relevant public and commercial origin since companies manufacturing these goods are normally the ones involved in the research and design. Furthermore, they can be complementary.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar are directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be relatively high as the goods and services at issue are specialised. They have technical nature and concern safety.

3. The signs

IEP	IEP TECHNOLOGIES
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Both marks are word marks.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘TECHNOLOGIES’ of the contested sign will be associated with the plural of technology ‘the branch of knowledge that deals with the creation and use of technical means and their interrelation with life, society, and the environment, drawing upon such subjects as industrial arts, engineering, applied science, and pure science’. Bearing in mind that the relevant goods and services are related to safety equipment, it is considered that this element is non-distinctive as referring to the characteristics of the goods and services at issue.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘IEP’. However, they differ in the word ‘TECHNOLOGIES’ of the contested sign that as mentioned above is non-distinctive.

The earlier mark is identical to the first element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IEP’, present identically in both signs. The pronunciation differs in the sound of the word ‘TECHNOLOGIES’ of the contested sign that as mentioned above is non-distinctive.

Therefore, the signs are highly similar.

Conceptually, the element ‘IEP’ has no meaning for the relevant public. The word ‘TECHNOLOGIES’ will be perceived as mentioned above. As this element is non-distinctive, it is considered that the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the Court of Justice’s case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 and of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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).

Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high level 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 goods and services are partly identical and partly similar.

The marks are visually and aurally highly similar. In particular, the earlier mark is fully encompassed in the contested sign as its first element (the initial part of the sign is the one that catches more consumer’s attention) and has an independent distinctive role within it. The marks differ in the word ‘TECHNOLOGIES’ of the contested sign that is non-distinctive.

It is considered that the dissimilarities between the marks are not sufficient to overcome the similarities between the marks.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 11 286 317. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European trade mark registration No 11 286 317 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Beatrix STELTER

Francesca CANGERI SERRANO

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.