OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 444 134
Soitec, Parc Technologique des Fontaines, Chemin des Franques, 38190 Bernin, France (opponent), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (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).
Class 9: Solar cells; photovoltaic inverters; solar modules.
Class 19: Roofing, not of metal, incorporating solar cells.
Class 37: Installation and maintenance of photovoltaic installations; Installation of electrical and generating machinery.
Class 42: Drafting and development of photovoltaic systems.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Semiconductor substrates for optoelectronics, microelectronics, micromechanics and derived activities; magnetic, optical, digital and electronic recording media; semiconductor wafers; semiconductors; silicon and semiconductor wafers for printed circuits, integrated circuits and derived activities; components for microelectronics, micromechanics and optoelectronics; semiconductor wafers for light-emitting diodes, radiofrequency (RF) components and power components; components for microelectronics, optoelectronics and micromechanics; substrates for microelectronics, optoelectronics and micromechanics, for flat screens, light-emitting diodes, integrated optical guides, sensors, integrated circuit cards (smart cards), radiofrequency (RF) and power components; transistors, microelectronic circuits, microsystems; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; lasers, not for medical purposes; control and lighting systems; diodes, photodiodes, light-emitting diodes, laser diodes, high performance semiconductor laser diodes, photodiode detectors, optical conductors, photocouplers, optical sensors, photoelectric barriers, light-emitting diode units; light gathering apparatus and devices combined with solar cells for producing electricity; light gathering apparatus and devices combined with solar cells for producing energy; solar cells for producing electricity; solar cell modules for producing electricity; solar energy installations (solar panels) for producing electricity; solar cells; solar cells for household use; solar cells for industrial use; photovoltaic appliances for producing electricity as well as installations consisting thereof; inverters for photovoltaic applications.
Class 11: Lighting apparatus, lighting fixtures and electric lamps; lighting equipment and systems, lighting equipment and systems made with light-emitting diodes, LED lamps and LED floor lamps and parts thereof, lighting systems and installations and parts thereof made with light-emitting diodes.
Class 37: Installation and repair of electric power stations.
Class 39: Distribution of electricity.
Class 40: Treatment of materials, namely mechanical, chemical and physical treatment and machining and gluing of material surfaces; treatment of substrates for microelectronics and optoelectronics, photovoltaics and micromechanics and all derived activities; treating semiconductor wafers and semiconductors; burnishing by abrasion of semiconductor wafers, transfer of layers of materials, semiconductors or components on any media; treating silicon wafers and semiconductor wafers; magnetization; burnishing by abrasion of silicon wafers and semiconductor wafers, transfer of layers of silicon, semiconductors or components on all media; production of solar power.
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.
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 applicant’s list of services in Class 40 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.
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 solar cells; photovoltaic inverters; solar modules are identically contained in the opponent’s list of goods in this class (including synonyms).
Contested goods in Class 19
The contested roofing, not of metal, incorporating solar cells are similar to the opponent’s solar cells for household use; solar cells for industrial use; solar cells for producing electricity in Class 9. These goods are complementary. Furthermore, they may target the same relevant public and have the same distribution channels and commercial origins.
The contested non-metallic building facade elements are solid wall elements that are used for housing, and for office and industrial buildings, as elements of building architecture. They are dissimilar to the opponent’s goods and services in Classes 9, 11, 37, 39 and 40, which are mainly electrical and electronic apparatus and instruments, photovoltaic goods and lighting apparatus, and services for the installation and repair of electric power stations, the distribution of electricity and the treatment of materials (mainly by industrial and metalworking processes, which are used to alter the physical, and sometimes chemical, properties of a material). They have different natures and purposes. Furthermore, they differ in their target public and distribution channels, and are manufactured/provided by different undertakings.
Contested services in Class 37
The contested installation of electrical and generating machinery overlaps with the opponent’s installation of electric power stations. Generating machinery converts mechanical energy to electrical energy. The term ‘power station’ could refer to a generating station for the generation of electric power. Therefore, these services are considered identical.
The contested installation and maintenance of photovoltaic installations are similar to the opponent’s installation of electric power stations. Photovoltaic installations are power systems designed to supply usable solar power by means of photovoltaics. Such installations consist of an arrangement of several components, including solar panels to absorb and convert sunlight into electricity. A power station is an industrial facility for the generation of electric power. Photovoltaic installations are also used by large power stations. These services have the same natures and purposes. Furthermore, they may target the same relevant public and have the same distribution channels and commercial origins, as large companies in the energy field may have both electric power stations and photovoltaic installations and, therefore, offer services related to these two different types of installation.
Contested services in Class 42
The contested drafting and development of photovoltaic systems are similar to the opponent’s photovoltaic appliances for producing electricity. They may have the same commercial origins, as, in this sector, the same companies often manufacture the appliances and draft and develop them. Furthermore, they may coincide in their distribution channels and relevant public.
The contested design of industrial plant is a highly specialised engineering service that involves configuring the layout of an industrial plant based on an analysis of the departments and services, and arranging them according to specialised fields. The contested design of buildings refers more broadly to architectural, engineering and technical applications related to the design of buildings. These services are dissimilar to the opponent’s goods and services in Classes 9, 11, 37, 39 and 40. They have different natures and purposes. Furthermore, they differ in their distribution channels, relevant public and commercial origins. They are not complementary or in competition.
Earlier trade mark
The relevant territory is the European Union.
The earlier mark is a word mark, ‘SOITEC’. The contested sign is a figurative mark consisting of the word ‘SOLI’, in standard upper case turquoise letters, and the word ‘TEK’, in standard upper case dark-grey letters. Between these words is a graphic element that depicts a hexagon composed of turquoise and dark-grey, intersecting geometric shapes. According to the description of the mark provided by the applicant, this figurative element is a stylised letter ‘S’ with a turquoise rhombus at its centre. However, the Opposition Division considers that the letter ‘S’ is barely perceptible and that this element is more likely to be perceived as abstract.
Visually, the signs are similar to the extent that they both include the letters ‘SO’ as their first two letters, and the letters ‘TE’ in the same order but in different positions (i.e. as the fourth and fifth letters in the earlier mark and as the fifth and sixth letters in the contested sign). The marks also include the letter ‘I’, which is the third letter in the earlier mark and the fourth letter in the contested sign. However, they differ in the letter ‘C’ of the earlier mark and in the letters ‘L’ and ‘K’ and the figurative elements of the contested sign.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SO*I’, present in both signs, and to that extent the signs are aurally similar. Moreover, the pronunciation of the signs coincides in the sounds of the element ‘TEC’, of the earlier mark, and ‘TEK’, of the contested sign, as the final letters, ‘C’ and ‘K’, of these elements are pronounced identically in most languages of the European Union. The pronunciation differs in the sound of the letter ‘L’, placed in the middle of the contested sign.
Conceptually, the element ‘SOLI’ of the contested sign might be perceived as meaning ‘salts’ in Slovak or might be understood, by Italian-speaking consumers, as ‘suns’ or ‘only, alone’. It is also likely that some consumers would associate the elements ‘TEK’, of the contested sign, and ‘TEC’, of the earlier mark, due to their identical pronunciations, with the word ‘TECH’, which is widely used as a shortened version of the word ‘technology’ (meaning the application of scientific knowledge for practical purposes, especially in industry; machinery and devices developed from scientific knowledge; the branch of knowledge dealing with engineering or applied sciences) or ‘technical’ (i.e. relating to the practical use of machines or science in industry, medicine, etc.). The figurative element of the contested sign does not convey any clear concept. Therefore, for the part of the public that would associate ‘TEC’, of the earlier mark, and ‘TEK’, of the contested sign, with the meanings of the word ‘technical’ or ‘technology’, the marks would be conceptually similar to that extent. For the part of the public that would associate a meaning with only the element ‘SOLI’ of the contested sign, the marks are not conceptually similar. For the part of the relevant public that would not associate the signs with any meanings, a conceptual comparison is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual, aural and, for part of the public, 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.
The elements ‘TEC’, of the earlier mark, and ‘TEK’, of the contested sign, will be perceived by part of the public as shortened versions of the word ‘technology’ or ‘technical’. Bearing in mind that the relevant goods and services are related to photovoltaic installations, it is considered that these elements are weak for these goods and services, as they refer to the fact that they have a technical nature or are related to technology. The part of the relevant public that 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 marks. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue for this part of the public.
The element ‘SOLI’ of the contested sign will be perceived by the Italian speaking-public to mean, inter alia, ‘suns’. Therefore, it is considered that this element is weak for the relevant goods and services to the extent that they are related to solar energy.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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, for part of the public, a weak element in the mark as stated above in section c) of this decision.
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 the public at large as well as at business customers with specific professional knowledge or expertise. Given the specialised nature of the goods and services in question, careful consideration is likely to be given before their purchase. Therefore, the degree of attention may vary from average to high.
Global assessment, other arguments and conclusion
According to settled 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.
The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case.
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa.
The goods and services are partly identical, partly similar and partly dissimilar.
The marks have significant similarities. In particular, from an aural point of view, the marks differ only in the additional letter ‘L’ of the contested mark. This differing letter is placed in the middle of the sign and, therefore, is more likely to go unnoticed by consumers. In this regard, 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
Visually, the marks also differ in their last letters, ‘C’ versus ‘K’, and in the figurative elements of the contested sign. In this regard, when a sign consists of both word and figurative components, as is the case in the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the figurative elements.
Although the elements ‘TEC’, of the earlier mark, and ‘TEK’, of the contested sign, are weak for a part of the relevant public, for the remaining part of the public, these elements will not be associated with any concept and will have a normal degree of distinctiveness. Similar reasoning applies to the element ‘SOLI’ of the contested sign, which is weak for only the Italian-speaking public and has a normal degree of distinctiveness for the remaining part of the relevant public.
Furthermore, taken as a whole, the earlier mark, ‘SOITEC’, is distinctive, since it has no direct meaning in relation to the goods and services at issue.
In addition, in the overall assessment of the likelihood of confusion, the distinctive character of the earlier mark or parts of it is only one of the factors to be taken into account (see judgment of 12/09/2012, T‑295/11, ‘duschy’, paragraphs 51 and 81; and judgment of 22/05/2012, T‑60/11, ‘Suisse Premium’, paragraph 32). Even if the element ‘TEC’ of the earlier mark was weak, the consumer would still perceive it as a part of the mark.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even if the relevant public has a high degree of attention. Therefore, the opposition is partially well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 095 452.
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 goods and 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.
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
Pedro JURADO MONTEJANO
Begoña URIARTE VALIENTE
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.