OPPOSITION No B 2 525 858

Sick AG, Erwin-Sick-Str. 1, 79183 Waldkirch, Germany (opponent), represented by Sick AG Christoph Ludewigt, Erwin-Sick-Str. 1, 79183 Waldkirch, Germany (professional representative)

a g a i n s t

SICS Swedish ICT AB, Isafjordsgatan 22, 164 40 Stockholm, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Box 7067, 402 32 Göteborg, Sweden (professional representative).

On 03/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 525 858 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; computer software; virtualization software; programs (computer -) [downloadable software]; computer software platforms; computer databases; sensors, detectors and sensor networks; measuring, detecting and monitoring instruments, indicators and controllers; optical fibers; measuring, counting, alignment and calibrating instruments; controllers (regulators).

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; science and technology services; research and development services; research and development in relation to automation; research and development in relation to and concerning sensor systems; research and development of instrument products including for measuring, analysis, testing, examination, investigation and evaluation; research and development of technology, for others; research and development of new products and computer software, for others; systems architecture; software development, programming and implementation; engineering services; technical analysis and project services; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; providing of design and simulation tools; design and simulation services; testing, authentication and quality control; processing and product development; design of products; prototype development; productisation, authentication and testing; evaluation, measuring, calibration and monitoring; network monitoring; industrial development and process development; systems design; design and development of system solutions.

2. European Union trade mark application No 13 542 212 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 542 212, namely against some of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 3 729 845 and international trade mark registration No 545 046 designating Austria, Benelux, Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovenia and Slovakia. The opponent invoked Article 8(1)(b) EUTMR.

The opposition was initially filed on the basis of two more additional earlier rights, namely German trade mark registrations No 1 141 265 and No 30 361 245. However, in its letter of 23/06/2015, the opponent withdrew the opposition on the basis of these earlier rights.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union figurative trade mark registration No 3 729 845 .

The contested application was published on 25/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 25/02/2010 to 24/02/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Scientific apparatus and instruments being laboratory equipment; surveying, optical, magnetic, inductive, capacitive, ultrasonic, measuring, signalling, control, regulating, checking (supervision) and teaching apparatus and instruments, not for medical purposes; industrial sensors, in particular optical, electronic, optoelectronic, photoelectric, acousto-electric, magnetic, inductive and capacitive sensors; light barriers, light scanners, light guide systems, light grids, positioners, distance meters, colour sensors; optical, electronic, optoelectronic, photo-electric, acousto-electric, magnetic, inductive and capacitive equipment and systems comprised thereof, in particular for automation engineering, in particular for the automatic inspection of flat and strip-shaped materials for the purpose of testing the properties of such materials or for fault detection, for detecting the colour, shape, position, contour, volume, distance, texture or surface finish of objects, for automatic identification, quality control, positioning, handling and control, for automation in the fields of manufacturing, quality assurance, warehousing, the flow of goods, sale, transport, laboratories, industrial installations, automobiles, traffic and public buildings; electronic position and length measuring instruments, electronic positioners, rotation angle sensors; electronic interface modules; linear actuators; code readers, in particular bar code readers, readers for two-dimensional codes and colour code readers; electronic, optical and opto-electronic image processing apparatus, in particular for automation technology and safety technology; optical, electronic, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and systems for the safety and monitoring of room areas, danger points and danger areas; light curtains; barriers and scanners with an electronic base, or for use in the field of infrared, visible or ultraviolet radiation or in the field of ultrasound; scanning apparatus (scanners, in particular laser scanners), spectrometers and sensors with a radius vector, for scanning defined surface and/or room areas; emission measuring, process analysis, process control, identification and data transmission apparatus with an electronic and/or opto-electronic and/or acousto-electric and/or hydrostatic and/or magnetic and/or inductive and/or capacitive base; flame ionisation detectors; gas speed measuring apparatus; gas flow measuring apparatus; ultrasonic gas meters; testing apparatus not for medical purposes; gas analysing apparatus; fluid analysers and measuring systems; apparatus, instruments and equipment for level measuring, torsion measuring, leak detection, conductivity measuring; spectrometers, photometers; electronic data processing equipment; computer programs (included in class 9), in particular for measuring and control technology.

Class 42: Development and calibration of the aforesaid electronic, optical, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and sensors; planning of technical systems.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/01/2016 to submit evidence of use of the earlier trade mark. On 10/12/2015, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

1. Affidavit signed by Dr. Christoph Ludewigt, Head of the Intellectual Property department of Sick AG since July, 2007.

2. Documents prepared by the opponent with sale numbers and number of pieces sold of Laserscanner of the LMS type, Flexi-Soft Controller modules and for the Business Unit Safety Services and Solutions, for years 2010 to 2014;

3. Printouts of invoices of the ERP invoice data system, printed on 07/12/2015 and 09/12/2015 by the head of the Central Unit Order management. The invoices are issued by the opponent’s subsidiary SICK Vertriebs GmbH, responsible of the opponent’s sales to customers in Germany. They are written in German, directed at customers in Germany, and dated between 2012 and 2014. They correspond to the sale of Laserscanner of the LMS type, Flexi-Soft Controller modules and the provision of inspection and hardware and software design services.

4. Picture of packaging’s with the sign ‘SICK’ depicted on it.

5. Annual reports 2012, 2013 and 2014, with sale numbers in Germany, Europe, Middle East and Africa, certified by the accountant firm Ernst & Young GmbH.

6. Product information brochures of Safety and Productivity services, dated February, 2013; Laser Measurement system of the LMS 100 Product family brochure dated 2010; Operating instructions for Flexi soft controller modules software and hardware, dated 2013 and 2010; SICK top products catalogue, dated 2014.

As far as the affidavit of Dr. Christoph Ludewigt is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In order to determine whether the use of the mark is genuine or not, all the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

In the present case, all the evidence is dated within the relevant period.

The invoices provided by the opponent show relatively high amounts of sales and they are addressed at clients in Germany, written in German and prices are indicated in Euros. Even if there is no reference to other countries, it should be bear in mind that Germany is the largest European market and technological centre. Moreover, the annual reports provide sale figures in Germany and other countries in the European Union. Therefore, the Opposition Division considers that the evidence filed relates to the relevant territory.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The invoices together with the product and services information brochures, annual reports and affidavit provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier marks. The volume of sales and promotional investment, in relation to the period and frequency of use, was deemed to be significant enough not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Some of the documents sent by the opponent, such as the product information brochures and the packaging bear the sign , but also the word ‘SICK’.

Since this word element is the most dominant and distinctive element of the earlier figurative mark as registered, it is considered that omission of the word element ‘Sensor Intelligence’ does not alter its distinctive character. Therefore, the evidence shows that the mark has been used as registered.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods and services:

Class 9: Surveying, optical, magnetic, inductive, capacitive, ultrasonic, measuring, signalling, control, regulating, checking (supervision) apparatus and instruments, not for medical purposes; industrial sensors, in particular optical, electronic, optoelectronic, photoelectric, acousto-electric, magnetic, inductive and capacitive sensors; light barriers, light scanners, light guide systems, light grids, positioners, distance meters, colour sensors; optical, electronic, optoelectronic, photo-electric, acousto-electric, magnetic, inductive and capacitive equipment and systems comprised thereof, in particular for automation engineering, in particular for the automatic inspection of flat and strip-shaped materials for the purpose of testing the properties of such materials or for fault detection, for detecting the colour, shape, position, contour, volume, distance, texture or surface finish of objects, for automatic identification, quality control, positioning, handling and control, for automation in the fields of manufacturing, quality assurance, warehousing, the flow of goods, sale, transport, laboratories, industrial installations, automobiles, traffic and public buildings; electronic position and length measuring instruments, electronic positioners, rotation angle sensors; electronic interface modules; electronic, optical and opto-electronic image processing apparatus, in particular for automation technology and safety technology; optical, electronic, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and systems for the safety and monitoring of room areas, danger points and danger areas; light curtains; barriers and scanners with an electronic base, or for use in the field of infrared, visible or ultraviolet radiation or in the field of ultrasound; scanning apparatus (scanners, in particular laser scanners), spectrometers and sensors with a radius vector, for scanning defined surface and/or room areas; emission measuring, process analysis, process control, identification and data transmission apparatus with an electronic and/or opto-electronic and/or acousto-electric and/or hydrostatic and/or magnetic and/or inductive and/or capacitive base; gas speed measuring apparatus; gas flow measuring apparatus; ultrasonic gas meters; testing apparatus not for medical purposes; gas analysing apparatus; fluid analysers and measuring systems; apparatus, instruments and equipment for level measuring, torsion measuring, leak detection, conductivity measuring; electronic data processing equipment; computer programs (included in class 9), in particular for measuring and control technology.

Class 42: Development and calibration of the aforesaid electronic, optical, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and sensors; planning of technical systems.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 3 729 845.

1. The goods and services

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

Class 9: Surveying, optical, magnetic, inductive, capacitive, ultrasonic, measuring, signalling, control, regulating, checking (supervision) apparatus and instruments, not for medical purposes; industrial sensors, in particular optical, electronic, optoelectronic, photoelectric, acousto-electric, magnetic, inductive and capacitive sensors; light barriers, light scanners, light guide systems, light grids, positioners, distance meters, colour sensors; optical, electronic, optoelectronic, photo-electric, acousto-electric, magnetic, inductive and capacitive equipment and systems comprised thereof, in particular for automation engineering, in particular for the automatic inspection of flat and strip-shaped materials for the purpose of testing the properties of such materials or for fault detection, for detecting the colour, shape, position, contour, volume, distance, texture or surface finish of objects, for automatic identification, quality control, positioning, handling and control, for automation in the fields of manufacturing, quality assurance, warehousing, the flow of goods, sale, transport, laboratories, industrial installations, automobiles, traffic and public buildings; electronic position and length measuring instruments, electronic positioners, rotation angle sensors; electronic interface modules; electronic, optical and opto-electronic image processing apparatus, in particular for automation technology and safety technology; optical, electronic, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and systems for the safety and monitoring of room areas, danger points and danger areas; light curtains; barriers and scanners with an electronic base, or for use in the field of infrared, visible or ultraviolet radiation or in the field of ultrasound; scanning apparatus (scanners, in particular laser scanners), spectrometers and sensors with a radius vector, for scanning defined surface and/or room areas; emission measuring, process analysis, process control, identification and data transmission apparatus with an electronic and/or opto-electronic and/or acousto-electric and/or hydrostatic and/or magnetic and/or inductive and/or capacitive base; gas speed measuring apparatus; gas flow measuring apparatus; ultrasonic gas meters; testing apparatus not for medical purposes; gas analysing apparatus; fluid analysers and measuring systems; apparatus, instruments and equipment for level measuring, torsion measuring, leak detection, conductivity measuring; electronic data processing equipment; computer programs (included in class 9), in particular for measuring and control technology.

Class 42: Development and calibration of the aforesaid electronic, optical, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and sensors; planning of technical systems.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; computer software; virtualization software; programs (computer -) [downloadable software]; computer software platforms; computer databases; sensors, detectors and sensor networks; measuring, detecting and monitoring instruments, indicators and controllers; optical fibers; apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; electric and electronic components; printed electronics; measuring, counting, alignment and calibrating instruments; controllers (regulators).

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; science and technology services; research and development services; research and development in relation to automation; research and development in relation to and concerning sensor systems; research and development of instrument products including for measuring, analysis, testing, examination, investigation and evaluation; research and development of technology, for others; research and development of new products and computer software, for others; systems architecture; software development, programming and implementation; engineering services; technical analysis and project services; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; providing of design and simulation tools; design and simulation services; testing, authentication and quality control; processing and product development; design of products; prototype development; productisation, authentication and testing; evaluation, measuring, calibration and monitoring; network monitoring; industrial development and process development; systems design; design and development of system solutions.

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.

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 ‘particularly’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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, EU:T:2003:107).

Contested goods in Class 9

When comparing the contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments and the opponent’s surveying, optical, magnetic, inductive, capacitive, ultrasonic, measuring, signalling, control, regulating, checking (supervision) apparatus and instruments, not for medical purposes, they are deemed identical because the opponent’s goods are included in, or partially overlap with, some of the contested goods.

Computer software; virtualization software; programs (computer -) [downloadable software]; computer software platforms; computer databases are identical to the opponent’s computer programs (included in class 9), in particular for measuring and control technology because either they are synonyms, are category of goods which overlap, or the contested goods are included in the opponent’s broader category.

Sensors, detectors and sensor networks; measuring, detecting and monitoring instruments, indicators and controllers; measuring, counting, alignment and calibrating instruments; controllers (regulators) overlap with the opponent’s optical, measuring, signalling, control or checking (supervision) apparatus and instruments, not for medical purposes and therefore, they are identical.

Optical fibers are bundle of glass threads, each of which is capable of transmitting messages modulated onto light waves. Hence, they are widely use in fibre-optic communications, where they permit transmission of data over longer distances and at higher bandwidths than wire cables. These goods are included in the opponent’s broader category optical instruments, not for medical purposes, and therefore, they are identical.

Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; electric and electronic components; printed electronics are dissimilar to all the opponent’s goods and services since they have clearly different nature and purpose. The fact that the contested goods could be used as components of some of the opponent’s goods is not enough to render the goods similar. They are neither complementary nor in competition with each other. They are distributed through different channels and have a different commercial origin.

Contested services in Class 42

Development and calibration of the aforesaid electronic, optical, opto-electronic, acousto-electric, magnetic, inductive and capacitive apparatus and sensors include hardware and software development services as well as hardware calibration services of the above-mentioned apparatus and sensors. Therefore, the contested design and development of computer hardware and software; creation of control programs for automated measurement, assembly, adjustment, and related visualisation; research and development services; research and development in relation to automation; research and development in relation to and concerning sensor systems; research and development of instrument products including for measuring, analysis, testing, examination, investigation and evaluation; research and development of technology, for others; research and development of new products and computer software, for others; testing, authentication and quality control; software development, programming and implementation; providing of design and simulation tools; design and simulation services; systems architecture; processing and product development; design of products; prototype development; productisation, authentication and testing; evaluation, measuring, calibration and monitoring; industrial development and process development; systems design; design and development of system solutions; network monitoring partially overlap with the opponent’s services. They are identical.

The contested scientific and technological services and research and design relating thereto; industrial analysis and research; science and technology services; engineering services; technical analysis and project services overlap with the opponent’s planning of technical systems and are therefore, identical.

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 partially at the public at large such as computer software and partially at business customers with specific professional knowledge or expertise as for instance ultrasonic apparatus and instruments. The degree of attention, due to the high degree of specialization of part of the goods and services, will vary form average to high.

3. The signs

	SICS
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 earlier sign consists of the word element ‘SICK’ in bold characters and underneath the word element ‘Sensor Intelligence’ in standard character of smaller size, followed by a dot. The contested sign is the word ‘SICS’.

‘SICK’ of the earlier sign will be perceived by the English speaking public a suffering from illness of any kind (ww.oed.com); the word ‘Sensor’ will be understood by the relevant public as, inter alia, a device which detects or measures physical properties or changes and provides a corresponding output or measurement in response; as regards the word ‘Intelligence’, it will be perceived by the relevant public as quickness or superiority of understanding. The expression ‘Sensor Intelligence’ will be perceived, as a whole, as referring to the superiority of understanding of sensors. Bearing in mind the nature of relevant goods and services, this expression has a weak distinctive character as it refers to the capacity of the goods to performance their activity with superiority, indicating characteristics of the intended purpose of the relevant services. The element ‘SICK’ is therefore the most distinctive element of the earlier sign.

Moreover, the word element ‘SICK’ is, due to its size and representation in bold characters, the dominant element in the earlier sign as it is the most eye-catching.

The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘SIC’ and differ in their last letters, ‘K’ of the earlier mark and ‘S’ of the contested sign. Furthermore, they differ in the non-dominant word elements ‘Sensor Intelligence,’ of the earlier sign, which has a low distinctive character in relation to the relevant goods and services. Therefore, the signs are visually similar to an average degree.

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 ‘SIC’, present in both signs. The pronunciation differs in the sound of the additional letter ‛S’ of the contested sign, and in the case that the letter ‘K’ in the earlier sign is pronounced independently from the letter ‘C’ also in the sound of this letter. The word element ‘Sensor Intelligence’, for reasons of language economy and since it is placed in a secondary position within the sign, will not be pronounced by the majority of the relevant public. The signs have in this case, a similar length, rhythm and intonation and are considered aurally similar to a high degree.

Conceptually, while the relevant public in the technological field will perceive the meaning of all the words which compose the earlier sign or at least part of it, the other sign lacks any meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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, despite the presence of a weak element in relation to the relevant goods and services as described above in paragraph c).

5. Global assessment, other arguments and conclusion

Part of the contested goods and services has been considered identical to the opponent’s goods and services. They are directed partially at the public at large and partially at a professional public, whose level of attention will vary from average to high.

The signs are visually similar to an average degree to the extent that they share the first letters ‘SIC’. Moreover, they are aurally similar to a high degree at least for the part of the public who will pronounce the letters ‘CK’ of the earlier sign and ‘C’ of the contested sign identically, and will not pronounced the laudatory expression ‘Sensor Intelligence’. As mentioned above, the pronunciation of the signs have a similar length, rhythm and intonation.

Considering all the above, and in particular, the high degree of aural similarity, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even for that part of the public with a high degree of attention, and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the international trade mark registration No 545 046 designating Austria, Benelux, Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovenia and Slovakia, for the word mark ‘SICK’, which is registered for the following goods and services:

Class 9: Scientific apparatus and instruments for use in laboratories, surveying, optical, measuring, signalling, controlling, regulating, monitoring (inspection) and teaching apparatus and instruments, particularly optical, electronic, opto-electronic, photo-electric and acousto-electric apparatus, particularly for automatic inspection of two-dimensional materials and materials in the form of bands for checking or examining the quality or properties of such materials or for identifying defects, color, shape, position, texture or quality of the surface of objects using image processing methods with a view to identification, quality control, positioning, handling and control, for automation in the fields of production, quality assurance, warehousing, product flow, sale, transport, laboratories, circulation, installations and public buildings; opto-electronic apparatus for protecting and monitoring premises, dangerous places and dangerous regions; electronically-operated barriers and barriers operated by means of infrared visible and ultraviolet radiation, or ultrasonic means; sensors, scanning apparatus operating by means of a beam scanning surfaces and/or spaces; spectrometers and detectors; computer programs (included in this class), particularly for measuring, controlling and regulating technique; electronic apparatus for emission measurement, process analysis, process control, identification and data transmission, operated opto-electronically and/or acousto-electrically; electronic apparatus for data processing.

Class 42: Advice for independent representatives and the staff of foreign companies for use of optical, electronic, opto-electronic, photo-electric and acousto-electric apparatus and detectors; development and rental of the aforesaid apparatus and detectors; study projects for technical systems based on the aforesaid apparatus and detectors; all the aforesaid services by payment of a fee for third parties.

This other earlier right invoked by the opponent covers goods and services which are clearly different to those applied for in the contested trade mark for which the opposition has been already rejected, namely apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; electric and electronic components; printed electronics as they have a different nature and purpose. They are neither complementary nor in competition with each other. Moreover, they are distributed through different channels. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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

Inés GARCÍA LLEDÓ

Ana María MUÑIZ RODRIGUEZ

Jessica LEWIS

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.