OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 443 532
Teka Industrial, S.A., Cajo, 17, 39011 Santander (Cantabria), Spain (opponent), represented by Díaz Ungría, S.L., Avda. Concha Espina nº 8 6º D, 28036 Madrid, Spain (professional representative)
a g a i n s t
Soli Tek Industry OÜ, Pärnu mnt. 499, 76401 Laagri, Estonia (applicant), represented by Jurex, T. Kosciuškos g. 24, 01100 Vilnius, Lithuania (professional representative).
On 28/10/2015, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
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 goods and services
The goods and services on which the opposition is based are the following:
Community trade mark No 1 207 703
Class 37: Installation, maintenance, assembly and repair of all kinds of drainage equipment, cookers and sinks.
Community trade mark No 5 014 824
Class 9: Electric irons, vacuum cleaners, polishing machines, electric apparatus for polishing floors, electric apparatus for ironing trousers.
Spanish trade mark No 1 770 460
Class 19: Non-metallic sinks; building materials; natural and artificial stones; cement; lime; mortar; plaster; gravel; stoneware or cement pipes; materials for the construction of highways; asphalt, pitch and bitumen; transportable homes; stone monuments; parquets; terraces; tiles; non-metallic reservoirs; stained glass.
Spanish trade mark No 1 926 046
Class 42: Research projects and technical opinions.
The contested goods and services are the following:
Class 9: Solar cells; photovoltaic inverters; solar modules.
Class 19: Roofing, not of metal, incorporating solar cells; non-metallic building facade elements.
Class 37: Installation and maintenance of photovoltaic installations; installation of electrical and generating machinery.
Class 42: Design of buildings; design of industrial plant; drafting and development of photovoltaic systems.
Some of the contested goods and services are identical to goods and services on which the opposition is based. 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 those of the earlier mark.
Earlier trade marks
The relevant territory is the European Union for the Community trade marks, and Spain for the Spanish trade marks.
The earlier trade marks all consist of the word ‘TEKA’ in stylised, bold, italic title case letters, with the horizontal stroke of the letter ‘T’ extending all the way along the upper part of the word and a large dot above the letter ‘T’.
The contested sign consists of the word ‘SOLI’ in standard turquoise letters and the word ‘TEK’ in standard dark-grey letters, both in upper case. Between these words is a figurative element, a hexagon composed of turquoise and dark-grey intersecting geometrical shapes. According to the description of the mark submitted by the applicant, this figurative element is a stylised letter ‘S’ whose centre is a turquoise rhombus. However, the Opposition Division considers that the letter ‘S’ is hardly perceptible and that this element is more likely to be perceived as abstract.
Visually, the signs are similar to the extent that they both contain the letters ‘TEK’. However, they differ in all their additional elements; namely the last letter, ‘A’, the dot and the use of italic and stylised title case letters in the earlier marks, and the verbal element ‘SOLI’, the figurative element and the colours in the contested sign. It must be pointed out that although the letter ‘T’ is in upper case in both signs, the letters are still significantly different due to the extending horizontal stroke in the earlier marks. The signs also differ because although the letters ‘TEK’ are present in both signs, they come at the beginning of the earlier marks but at the end of the contested sign.
Aurally, the pronunciation of the signs is the same in the sound of the letters /T-E-K/, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the last letter, /-A/, of the earlier marks and the first four letters, /S-O-L-I/, of the contested mark. The pronunciation of the signs also differs because of the different positions of the letters ‘TEK’. Furthermore, the earlier marks are made up of two syllables and the contested sign of three. The letters in common, ‘TEK’, are part of the disyllabic element ‘TEKA’ in the earlier marks but constitute the second verbal element of the contested sign forming just one syllable.
Conceptually, for part of the public in the relevant territories, neither of the signs has a meaning. Since a conceptual comparison is not possible for these consumers, the conceptual aspect does not influence the assessment of the similarity of the signs.
However, it cannot be excluded that some elements may be associated by some consumers with various concepts. For example, because of the earlier marks’ phonetic identity with the Spanish word ‘teca’, some Spanish-speaking consumers may identify them with the South East Asian leafy tree used for timber in shipbuilding and making furniture. The word ‘SOLI’ of the contested sign may be perceived as meaning ‘salts’ in Slovak or be understood by Italian-speaking consumers as meaning ‘suns’ or ‘only, alone’. It is also likely that some consumers would associate the word ‘TEK’ of the contested sign with ‘technology’ or ‘technical’, because of its phonetic identity with the short form ‘TECH’, frequently used in trade marks to refer to these concepts. The figurative element of the contested sign does not convey any clear concept. Since one of the signs will not be associated with any meaning or the signs will be associated with different meanings, the signs are not conceptually similar for consumers who perceive one or more of the meanings given above.
Taking into account the abovementioned visual and aural 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.
The earlier marks have no element that could be clearly considered more distinctive than other elements. However, the word ‘TEKA’, as explained above, may be associated by Spanish-speaking consumers with a South East Asian leafy tree used for timber in shipbuilding and making furniture. Therefore, this element has a lower than average degree of distinctive character for some of the goods in Class 19, namely building materials and parquets.
The element ‘TEK’ of the contested mark may be associated by some of the relevant consumers with ‘technology’ or ‘technical’. As the relevant goods and services have technical or technological aspects, it is considered that this element is weak for all the relevant goods and services for those consumers who will understand the meaning of that element. That part of the relevant public 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 contested sign is composed of verbal elements and a figurative element of a largely decorative nature. The verbal elements ‘SOLI’ and ‘TEK’ (the latter for only some consumers) are considered more distinctive than the figurative element. Consequently, the additional figurative element has only a limited impact when assessing the likelihood of confusion between the marks.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in time in order to prove such a claim. Substantiation is defined by Rule 19(2) CTMIR and refers to proof of the existence, validity and scope of protection of the earlier mark(s) or right(s), as well as proof of the opponent’s entitlement to file the opposition. Once the parties have been notified of the admissibility of the opposition, the opponent has two months from the end of the cooling-off period in which to submit further evidence and arguments. If relevant to the opposition, the opponent must submit evidence of enhanced distinctiveness or any other aspect affecting the scope of protection of its earlier rights. Therefore, as the evidence of enhanced distinctiveness submitted by the opponent on 02/09/2015 was received after the time limit of 16/04/2015 set by the Opposition Division for the opponent to submit further evidence, the opponent’s claim must be dismissed.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for most of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal for all these goods and services and for all the relevant consumers. However, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as lower than average for some of the goods and services in question, namely for building materials and parquets in Class 19, for some Spanish-speaking consumers. Nevertheless, the marks have a normal degree of distinctiveness for these goods in Class 19 for those consumers for whom the marks have no meaning.
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 relevant goods and services are directed at the public at large and/or at business customers with specific professional knowledge or expertise. The degree of attention of the relevant consumers may vary from average to high depending on the degree of specialisation of the goods and services.
Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).
The signs are visually and aurally similar to the extent that they both contain the letters ‘TEK’. However, the Opposition Division considers that these coincidences are not sufficient to lead to a likelihood of confusion on the part of the relevant public. The additional differing elements are clearly perceptible and are sufficient to enable the consumers to avoid confusing the marks, even though some of these elements may have a lower than average degree of distinctiveness.
One of the main differences between the signs lies in the first word, ‘SOLI’, of the contested sign, which has a normal degree of distinctiveness. In addition, consumers generally tend to focus on the first element of a sign when encountering 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. Consequently, the fact that the first elements of the marks at issue, namely the word ‘TEKA’ in the earlier marks and ‘SOLI’ in the contested sign, are dissimilar has to be taken into account when assessing the likelihood of confusion between the marks.
Furthermore, the letters ‘TEK’ in the signs will be perceived differently, as they have an independent role in the contested sign but are part of the word ‘TEKA’ in the earlier marks. These letters are in different positions and different syllabic structures. Bearing in mind all the other differences, such as the figurative element and the colours in the contested sign, and the dot and the typographical stylisation in the earlier marks, it is considered that the overall impressions created by the signs are not similar.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
Cristina CRESPO MOLTÓ
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.