OPPOSITION No B 2 460 320

J.R. Sistemas De Seguridad, S.L., Calle Rosellon, 52-54, 08029 Barcelona, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Wichliński Dariusz, Wabcz 60 l.2, 86-212 Stolno, Poland (applicant), represented by Kancelaria Patentowa Invent Grzegorz Ćwikliński, ul. Hallera 7/9, 85-795 Bydgoszcz, Poland (professional representative).

On 10/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 460 320 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 078 101. The opposition is based on Community trade mark registration No 9 653 148. The opponent invoked Article 8(1)(b) CTMR.

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.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, measuring, signalling, checking (supervision), life-saving apparatus and instruments, data processing equipment and computers, computer programs, apparatus for recording, transmission or reproduction of sound or images; Fire-extinguishing apparatus; And in particular detectors, sirens, electric theft prevention installations, protection devices for personal use against accidents, alarms not included in other classes, together with components, accessories and spare parts therefor.

Class 35: Advertising; Business management; Business administration; Office functions; Franchise-issuing services in relation to commercial management assistance; Import, export, agency and sole agency services principally in relation to alarms and other devices for the protection, defence and security of persons and goods; Information and consultancy services in relation to the retailing and commercial retailing of such goods.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

The contested goods and services are the following:

Class 12: Hubs for vehicle wheels; Wheel rims [for automobiles]; Rims for vehicle wheels; Wheels for land vehicles; Wheels; Wheel rims [for automobiles]; Rims for vehicle wheels; Wheels for land vehicles.

Class 35: Administrative processing and organising of mail order services; Presentation of goods on communication media, for retail purposes; Advertising and sales promotion relating to goods and services, offered and ordered via telecommunications or electronic means; E-commerce services, Namely providing product information via telecommunications networks for advertising and sales purposes; Business administration for the processing of sales transactions via the internet.

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 ‘in particular’, 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’).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 12

The contested hubs for vehicle wheels; wheel rims [for automobiles]; rims for vehicle wheels; wheels for land vehicles; wheels; wheel rims [for automobiles]; rims for vehicle wheels; wheels for land vehicles are all wheels, wheel rims and wheel hubs for vehicles.

The earlier right has protection for goods in Class 9 (various scientific, nautical, surveying, electric, photographic, cinematographic, measuring, signalling, checking (supervision), life-saving apparatus and instruments, data processing equipment and computers, computer programs, apparatus for recording, transmission or reproduction of sound or images and fire-extinguishing apparatus), and services in Class 35 (services of advertising, business management, business administration, office functions, franchise-issuing services, import, export agency and information and consultancy services in relation to the retailing and commercial retailing) and 42 (scientific and technological services and research and design relating thereto, industrial analysis and research services and design and development of computer hardware and software).

None of these goods or services have any links with wheel and hubs for land vehicles nor with the wider vehicle industry in general. These goods and services have very different natures and purposes, and do not come from the same endeavours or indeed from the same market sectors or industries. They do not target the same users, are not sold or available through the same distribution channels and are not complementary. They are considered to be dissimilar.

Contested services in Class 35

The contested administrative processing and organising of mail order services are included in the broad category of the opponent’s office functions. Therefore, they are considered identical.

The contested advertising and sales promotion relating to goods and services, offered and ordered via telecommunications or electronic means are included in the broad category of the opponent’s advertising. Therefore, they are considered identical.

The contested e-commerce services, namely providing product information via telecommunications networks for advertising and sales purposes overlap with the opponent’s information services in relation to the retailing and commercial retailing of such goods (alarms and other devices for the protection, defence and security of persons and goods) because the opponent’s services can be amongst others via telecommunications networks whilst the applicant’s specification cover all goods and therefore implicitly includes alarms and other devices for the protection, defence and security of persons and goods. Therefore, they are considered identical.

The contested business administration for the processing of sales transactions via the internet is included in the broad category of the opponent’s business administration. Therefore, they are considered identical.

The contested presentation of goods on communication media, for retail purposes are similar to the opponent’s information services in relation to the retailing and commercial retailing of such goods (alarms and other devices for the protection, defence and security of persons and goods). Firstly, these services have the same broad purpose, namely providing information for retailing. Secondly, the opponent’s service can be presented via communication media whilst the applicant’s service covers all goods and therefore includes alarms and other devices for the protection, defence and security of persons and goods. Finally, these services may come from the same providers, target the same end users and may be in competition with one another. Therefore, they are considered similar.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark, reading from left to right and top to bottom, consists of a small figurative device made of lines and dots, a conjoined ‘JR’, the verbal elements ‘Sistemas de Seguridad’ and ‘Security Systems’ one above the other, separated by a horizontal line and in a much smaller font that the ‘JR’ element, and a curved line underneath all the above mentioned elements. All the elements are in blue, and the ‘JR’ has the effect of shadowing beneath the letters.

The contested sign consists of a black square in which appears a white trapezium, arranged diagonally and to the right of this and parallel to the longer base of the trapezium is a figure symbolising a lower case "r" in red. According to the applicant’s mark description filed with the applicant the white trapezium symbolises a lower case letter ‘j’.

Even assuming that the white trapezium could be perceived as a ‘j’, which from a purely visual point of view it does not, the most that could be considered as being similar would be that both signs contained representations of the letter ‘r’. However, even here the letters are presented in so different a manner or location they cannot be considered to be visually similar.

Therefore, as the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Aurally, assuming that a part of the relevant public would pronounce the contested sign as ‘JR’ then the signs coincide in the sound of those letters. However, it is probable that a part of the relevant public will not perceive the contested sign as containing a ‘J’, and for this part of the relevant public the contested sign would be pronounced as ‘R’ and therefore the signs coincide in the sound of that letter. The signs will differ in the sound of the remaining verbal elements of the earlier mark, namely ‘Sistemas de Seguridad’ and ‘Security Systems’.

Conceptually, the figurative element of the earlier mark has no meaning throughout the relevant territory. The conjoined ‘JR’ of the earlier mark may be understood in some parts of the relevant territory, for example the English speaking parts, as an abbreviation of junior (meaning the younger: used after a person's name to denote the younger of two bearing the same name in a family) (definitions taken from the Oxford English Dictionary online, oed.com). However, in other parts of the relevant territory it will have no particular meaning. The verbal element ‘Sistemas de Seguridad’ and ‘Security Systems’ of the earlier mark will be understood by the Spanish and English speaking public respectively as meaning methods or precautions undertaken to provide protection or safety. However, in other parts of the relevant territory they will have no particular meaning. Assuming that a part of the relevant public would perceive the contested sign as ‘JR’ then the English speaking part of that public will perceive that as already mentioned above, namely as an abbreviation of junior. For the remaining public it will have no particular meaning. Furthermore, for the part of the relevant public which will not perceive the contested sign as containing a ‘J’ then the contested sign will only have the concept of the letter ‘R’.

Consequently, for the part of the relevant English speaking public which sees both signs as having the concept of junior then the signs are conceptually similar (as the English speaking public will also understand the verbal element ‘Security Systems’).

For the part of the public who only sees different concepts in both signs (for example the Spanish public who understand the verbal element ‘Sistemas de Seguridad’ in the earlier mark and the concept of the ‘r’ in the contested sign) then the signs are conceptually not similar.

Finally, for the part of the public who only sees the concept of the ‘r’ in the contested sign then since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. 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.

The elements ‘Sistemas de Seguridad’ and ‘Security Systems’ of the earlier mark will be understood by the Spanish and English speaking public respectively as meaning methods or precautions undertaken to provide protection or safety. Bearing in mind that the relevant services include import, export, agency and sole agency services principally in relation to alarms and other devices for the protection, defence and security of persons and goods; information and consultancy services in relation to the retailing and commercial retailing of such goods in Class 35, it is considered that these elements are weak respectively for the Spanish and English speaking public. The part of the relevant public who understands the meaning of these elements will not pay as much attention to these weak elements as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue for these parts of the public. However, for the remaining public, these elements are of normal distinctiveness.

The conjoined ‘JR’ element in the earlier mark is the dominant element as it is the most eye‑catching.

The contested sign has no element that could be clearly considered more distinctive or more dominant (visually eye‑catching) than other elements.

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, despite the presence of, at least for a part of the relevant public, some weak elements in the mark as stated above in section c) of this decision.

5. 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 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 high.

6. Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 22).

The Court has also held that 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 (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 23).

The contested goods have been found dissimilar and the contested services have been found to be partly identical and partly similar. The earlier right is of normal distinctiveness.

The signs are similar to the extent that they coincide in, at most, two of their letters, namely ‘JR’, if indeed the ‘J’ is seen in the contested sign.

However, even assuming that the contested sign will be seen as the same letters, there are clear differences in the structure, presentation, typefaces, colours and the surrounding verbal and/or figurative elements. Furthermore, these are readily noticeable and quite obvious and reduce the similarity of these shared letters.

The Opposition Division would also like to mention that the Boards of Appeal have established that no likelihood of confusion may be found in those cases where although the same letters are represented, the graphical design in which the letter combinations appear strongly influences the end user’s perception and to a large extent the distinctive character of the signs rests in said graphical design (judgment of 18/11/2011, R 82/2011-4, , , et al vs. ‘ ’).

Finally, as the Court has stated, the likelihood of confusion must be appreciated globally, and whilst it is true that the earlier mark’s dominant element is the conjoined letters ‘JR’ and that at least for Spanish and English speaking public this is also the most distinctive element, it is also true that the signs have striking visual differences as detailed above. Furthermore, the services found to be identical or similar are directed at business customers with specific professional knowledge or expertise and therefore the degree of attention is considered to be high, which is another factor in favour of a finding of no likelihood of confusion.

Considering all the above and based on the overall impression given by the marks, the Opposition Division finds that there is no likelihood of confusion on the part of the public as the differences outweigh the similarities. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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.

The Opposition Division

Vita VORONECKAITĖ

Ric WASLEY

Gailė SAKALAITĖ

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.

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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.