OPPOSITION No B 2 559 485
Reo AG, Brühler Str. 100, 42657 Solingen, Germany (opponent), represented by LS‑MP von Puttkamer Berngruber Loth Spuhler Partnerschaft von Patent- und Rechtsanwälten mbB, Alpha-Haus Garmischer Strasse 35, 81373 München, Germany (professional representative)
a g a i n s t
Thermo Electron (Karlsruhe) GmbH, Dieselstrasse 4, 76227 Karlsruhe, Germany (applicant), represented by HGF Limited, 1 City Walk, Leeds LS11 9DX, United Kingdom (professional representative).
On 30/08/2017, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods
European Union trade mark application No
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 Union trade mark registration No 11 056 686.
The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (see provision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Electrotechnical apparatus, laboratory, testing, measuring, switching and experimentation apparatus; Monitoring apparatus, electric switching, regulating and control apparatus, and combinations thereof and parts therefor, electronic status indicators for error detection and diagnosis, electronic apparatus and computers for recording measurements, switchboards, electrotechnical control and regulating apparatus, transformers, variable voltage transformers, in particular pillar-type and rotary variable voltage transformers, toroidal transformers, inductive components, fixed transformers, planar transformers, speed governors, chokes, storage chokes, interference suppression chokes, reels and coils, electric converters, electrical power supplies, rectifiers, rectifier columns, electronic apparatus, in particular control and regulating apparatus and optoelectronic apparatus for identifying components, in particular for automation, and for sorting and organising components, electric control and regulating apparatus in connection with electronic circuits, voltage stabilisers with a magnetic, transformer or electronic base; Electric resistors, tubular resistors, variable resistors, toroidal resistors, sliding resistors and braking resistors; Electric control apparatus for conveying technology and for oscillating conveyors of all kinds, Frequency converters, Thyristors and Thyristor controls, coupling modules, Electric transformers, Electric start-up devices for engines, vibrating solenoids, vibrating solenoid drives, Transducers, Electric filters and accessories (included in class 9), Mains filters, Acceleration sensors, Transformers and inductive resistors of all kinds, in particular for rail vehicles, electric testing installations for electric rail systems, parts thereof included in Class 9; Apparatus and instruments for generating and transforming electricity, namely photovoltaic/solar installations, photovoltaic/solar modules, photovoltaic/solar cells, inverters, direct current cables, tracking systems based on solar radiation; Electronic components being parts for solar installations, solar cells for electricity generation, solar modules for electricity generation, solar power installations, photovoltaic installations for electricity generation, solar wafers, solar cells and modules; Electronic and electrotechnical components for solar power systems (included in class 9), namely solar cells, solar modules, charge regulators, batteries, inverters for photovoltaic applications and racks therefor; Electrotechnical and electronic installations, apparatus and equipment for power and water supplying based on photovoltaic components or in combination with other conventional, regenerative energy carriers (included in class 9); Mobile, network-independent, small, container-type, electric power plants, consisting of solar power generators and battery storage units (included in class 9); Frames of steel, aluminium and plastic for solar power systems, apparatus and instruments for electrical engineering and building technology, communications technology and environmental technology; Apparatus and instruments for conducting, distributing, transforming, accumulating, regulating and/or controlling electricity.
The contested goods are the following:
Class 9: Apparatus for recording, transmission or reproduction of data.
The contested apparatus for recording, transmission or reproduction of data includes, as a broader category, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
Earlier trade mark
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.
The element ‘DRIVE’ is meaningful in certain territories, for example in those countries where English is understood. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The element ‘REO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, the relevant public will in all likelihood perceive the contested mark as an invented expression comprising the words ‘RHEO’ and ‘DRIVE’.
The element ‘DRIVE of the contested sign will be associated with ‘an electronic storage device’. Bearing in mind that the relevant goods are technology-related, this element is non-distinctive for these goods, namely for apparatus for recording, transmission or reproduction of data.
While the element ‘RHEO’ of the contested sign may convey a meaning for the specialised professional public, it will not be understood by the public at large. Therefore, it is the more distinctive element in the contested sign, thus attracting the attention of the relevant public.
Visually and aurally, the distinctive component ‘RHEO’ in the contested sign coincides with the earlier sign, ‘REO’, in three out of four letters, so that all the letters of the earlier mark are reproduced in the contested sign in the same sequence. However, the signs differ in the letter ‘H’ and the weak element ‘DRIVE’ of the contested mark, which have no counterparts in the earlier mark. The additional letter ‘H’ in the contested sign does not result in a striking difference in the pronunciation of the signs for the relevant public.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, although the word ‘DRIVE’ in the contested mark has a meaning for the public in the relevant territory, this element is non-distinctive and cannot indicate the commercial origin of the contested mark. The attention of the relevant public will be attracted by the additional fanciful verbal element, which has no meaning. Since the earlier mark has no meaning either for the relevant public, 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.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The signs are aurally and visually similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The goods are identical.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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). In the present case, the goods are identical.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Considering all the above, there is a likelihood of confusion at least on the part of the English-speaking part of the general public, because the main difference between the signs is confined to a non-distinctive element, ‘DRIVE’. The additional letter ‘H’ in the distinctive element ‘RHEO’ of the contested sign is not sufficient to exclude a likelihood of confusion, in particular as the pronunciation of that letter is more or less silent when positioned after a consonant. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining 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 Union trade mark registration No 11 056 686. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier European Union trade mark registration No 11 056 686 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is also no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Loreto URRACA LUQUE
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.