OPPOSITION No B 2 555 236

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

S&O Handelsgesellschaft mbH, Speckstr. 3, 33775 Versmold, Germany (applicant), represented by Dr. Stracke, Bubenzer & Kollegen, Marktstr. 7, 33602 Bielefeld, Germany (professional representative).

On 25/07/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 555 236 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 843 602, namely against all of the goods in Class 11 and some of the services in Class 35. The opposition is based on international trade mark registration No 1 095 452 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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 earlier international registration on which the opposition is based.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 08/05/2015.

Earlier trade mark No 1 095 452 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 19/09/2012. Therefore, the request for proof of use is inadmissible.

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.

1. 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-emiting diodes, LED lamps and LED floor lamps and parts thereof, lighting systems and installations and parts thereof made with light-emiting diodes.

Class 42: Scientific, technological, technical and industrial research provided by engineers; testing of materials; laboratory work for others, namely testing of materials and research and development; research and development for others; research and development of new products in the field of wafers and semiconductors for optoelectronic components, radiofrequency (RF) components, power components and derived activities; research and development of new products in the field of silicon wafers and semiconductors for integrated circuits and derived activities; research and development of new products in the field of transferring microelectronic circuits or microsystems on all media and derived activities; engineering services and engineering work in the field of semiconductor wafers and semiconductors for optoelectronic, radiofrequency (RF) and power components and derived activities; engineering and appraisals (engineering work) in the field of silicon wafers and semiconductors for integrated circuits and derived activities and the transfer of microelectronic circuits or microsystems on all media and derived activities; research for the development of new products in the field of semiconductor wafers for the manufacture of electronic devices, transistors, diodes, photodiodes, light-emitting diodes and photodiode detectors; technical support and assistance services, namely technical advice for the development of new products in the field of semiconductor wafers for the manufacture of electronic devices, transistors, diodes, photodiodes, light-emitting diodes and photodiode detectors; developing photovoltaic applications; developing photovoltaic systems and units; developing solar power stations; design and development of lighting apparatus.

The contested goods and services are the following:

Class 11: Lighting apparatus; lamps; arc lamps; ceiling lights; electric light fittings; sockets for electric lights; lightbulbs; lamps (electric -); luminous tubes for lighting; light diffusers; lamp reflectors; LED luminaires; LED light bulbs.

Class 35: Wholesaling and retailing, including via the internet, and bringing together of goods, for others, in the fields of apparatus for lighting, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images, compact discs, DVDs and other digital recording media, electric lighting fixtures, lightbulbs, LED lights.

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 11

The contested lighting apparatus are identically contained in both lists.

The contested lamps; arc lamps; ceiling lights; lightbulbs; lamps (electric -); luminous tubes for lighting; light diffusers; lamp reflectors; LED luminaires; LED light bulbs are included in the broad category of the opponent’s lighting apparatus. Therefore, they are identical.

The contested sockets for electric lights are devices intended to hold electric light bulbs and hence constitute an important component for the proper functioning of the lighting apparatus. In this sense, these goods are complementary to each other, they are often provided by the same manufacturers producers of electric material, they share the same distribution channels and the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer. Therefore, they are similar.

The contested electric light fittings are a broad category of products which consist of extra parts that may serve several purposes such as improving or completing the earlier lighting apparatus. To this extent, this broad category covers goods which are complementary to the opponent’s lighting apparatus as well as goods of a more ancillary nature which may contribute to make the lighting apparatus become better is some way. In this sense, these goods may be produced by, or under the control of, the ‘original’ manufacturer, target the same public and share the same distribution channels. Therefore, they are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesaling and retailing, including via the internet, and bringing together of goods, for others, in the fields of apparatus for lighting, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; compact discs, DVDs and other digital recording media, electric lighting fixtures, lightbulbs and LED lights are similar to a low degree to the opponent’s lighting apparatus, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity and digital recording media. In this sense, the contested lighting fixtures, lightbulbs and LED lights are included within the opponent’s broader lighting apparatus as well as the compact discs and DVDs which are included in the earlier broader term digital recording media.

The contested wholesaling and retailing, including via the internet, and bringing together of goods, for others, in the fields of apparatus for recording, transmission or reproduction of sound or images are not similar to the earlier 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 in Class 9 and lighting apparatus, lighting fixtures and electric lamps; lighting equipment and systems, lighting equipment and systems made with light-emiting diodes, LED lamps and LED floor lamps and parts thereof, lighting systems and installations and parts thereof made with light-emiting diodes in Class 11. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The contested wholesaling and retailing, including via the internet, and bringing together of goods, for others consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled for all the goods at issue in the present case, as explained above, since a part of the goods are only either similar or dissimilar.

In this sense, the contested wholesaling and retailing, including via the internet, and bringing together of goods, for others, in the fields of apparatus for recording, transmission or reproduction of sound or images, and the opponent’s scientific, technological, technical and industrial research provided by engineers; testing of materials; laboratory work for others, namely testing of materials and research and development; research and development for others; research and development of new products in the field of wafers and semiconductors for optoelectronic components, radiofrequency (RF) components, power components and derived activities; research and development of new products in the field of silicon wafers and semiconductors for integrated circuits and derived activities; research and development of new products in the field of transferring microelectronic circuits or microsystems on all media and derived activities; engineering services and engineering work in the field of semiconductor wafers and semiconductors for optoelectronic, radiofrequency (RF) and power components and derived activities; engineering and appraisals (engineering work) in the field of silicon wafers and semiconductors for integrated circuits and derived activities and the transfer of microelectronic circuits or microsystems on all media and derived activities; research for the development of new products in the field of semiconductor wafers for the manufacture of electronic devices, transistors, diodes, photodiodes, light-emitting diodes and photodiode detectors; technical support and assistance services, namely technical advice for the development of new products in the field of semiconductor wafers for the manufacture of electronic devices, transistors, diodes, photodiodes, light-emitting diodes and photodiode detectors; developing photovoltaic applications; developing photovoltaic systems and units; developing solar power stations; design and development of lighting apparatus in Class 42 do not coincide in either of their scopes. Indeed, the contested services, as explained above, consist in bringing together, and offering for sale apparatus for recording, transmission or reproduction of sound or images, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the earlier services in Class 42 which concern scientific, technological, technical and industrial research and the provision of technical support and assistance in relation to these fields. Therefore, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other. Although the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Thus they are dissimilar.

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, similar and similar to a low degree are directed at both the public at large and business customers with specific professional knowledge. The degree of attention of the relevant public will vary from average to high, depending on the price of the relevant goods and services and on the frequency of their purchase.

3. The signs

SOITEC
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 mark consists of the six letter word mark ‘SOITEC’.

The contested sign is a figurative mark composed of two word elements. The first word element ‘SO’ is written in big black thick letters and the second word ‘TECH’ is reproduced in thinner red letters half the size of those of the first word element.

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The element ‘SO’ in the contested sign is the dominant element as it is the most eye-catching. In this sense, it is written in letters which are double the size of the letters in which the word element ‘TECH’ is written.

The abbreviation ‘TECH’ of the contested mark is a universally known abbreviation that identifies the concept of ‘technology’ (information extracted from Wordreference.com on 01/07/2016 at http://www.wordreference.com/definition/tech) which is likely to be understood by part of the relevant public. Bearing in mind that the relevant goods as well as the services relating to these goods are proper to the technological and electricity fields, this element is weak because it suggests that the goods (and services relating to these goods) have all been manufactured through specific engineering technology processes. In this sense, the part of the public that will understand its meaning will not pay as much attention to it. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue for this part of the public.

Visually, the signs coincide in their first two letters ‘SO’ and in the letter sequence ‘TEC’ placed from the fourth to the sixth position in the earlier mark and from the third to the fifth in the contested mark. However, they differ in the number of words of which each sign is composed, the earlier mark is a single word mark and the contested sign is composed of two words and in the third letter of the earlier mark ‘I’ and the last letter of the second word element of the contested mark ‘H’. In addition, the words in the contested mark are represented in different stylizations. The first word element ‘SO’ is written in big black thick letters and is the dominant element of the whole word combination in contrast with the second word element ‘TECH’, written in thinner red letters half the size of those of the first word element.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier sign will be either /SOI-TEC/ or /SO-I-TEC/. Therefore, the signs coincide in the sound of the letters ‘SO’ and in the letter sequence ‘TEC’, present identically in both signs. The pronunciation differs in the sound of the third letter of the earlier mark ‛I’ which has a slight impact in the length of this sign and in the letters ‘CH’ of the contested mark which for part of the public, such as the Spanish, will have a strong noise (as in the word ‘TECHO’ for example). Therefore, the trade marks have the same rhythms and intonations for part of the public.

Therefore, the signs are similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the weak element ‘TECH’ included in the contested sign will be understood as the common abbreviation of the concept ‘technology’ by a majority of the relevant public, as explained above. To this extent, the signs are not conceptually similar.

However, for the part of the public that will not associate the abbreviation ‘TECH’ with any meaning, neither of the signs has a meaning. In this case, since a conceptual comparison is not possible, 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.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The conflicting goods and services are identical, similar, similar to a low degree and dissimilar. The consumer’s level of attention will vary from average to high depending on the price of the relevant goods and services and on the frequency of their purchase.

Visually the signs have been found to be similar to a low degree, aurally similar to an average degree and not conceptually similar for the part of the relevant public that will identify the weak element ‘TECH’ as the common abbreviation of the word ‘technology’ in the contested mark. For the part of the public that will not associate the element ‘TECH’ with any meaning, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 current case, the level of similarity between the signs is enough to counterbalance the identity of some of the goods.

The opponent states that there is likelihood of confusion between the marks at issue because they coincide in the letters ‘S,O,T,E,C’ placed in the same order and only differ in the suppression of the letter ‘I’ in the contested trade mark.

Although the signs identically coincide in their initial syllable ‘SO’, the letter sequence ‘TEC’ is placed in different positions in each of the marks at issue, as indicated above. Furthermore, the coinciding letter sequence in the earlier mark forms part of a whole that results in the meaningless verbal element ‘SOITEC’ in contrast with the two different words that form the contested sign, each of which are clearly identified as independent elements because they are represented in different sizes and colours. All these different characteristics between the trade marks at issue result in two signs that have different structures and layouts.

Therefore, the resemblance that results from the presence of the common letters ‘SO’ or the letter sequence ‘TEC’ is offset by the indicated differences between the signs at issue.

Regarding the applicant’s statement concerning the weakness of the element ‘TEC’ of the earlier mark, there is no objective reason to justify that this element would be artificially dissected from the letters ‘SOI’ because the earlier mark will be read as the meaningless word ‘SOITEC’.

In this sense, it must be noted that the aforementioned coinciding letters will not be perceived independently in any of the signs, because they form part of either one or two words, depending on the signs, which will be seen instantly as a whole. In other words, in the present case, the coincidence in a string of letters is not enough for a finding of likelihood of confusion when the signs under comparison are taken as a whole, because they present sufficient dissimilarities to exclude such likelihood of confusion.

Furthermore, the part of the public that will pay less attention to the weak element ‘TECH’ in the contested mark, will not perceive the coinciding letter sequence ‘TEC’ within the words ‘SOITEC’ and ‘SO TECH’ respectively as an element performing an independent role in these marks and will not artificially dissect or extract it from each of these brands. This is even more applicable for the public who will perceive the element ‘TECH’ in the contested mark as a meaningless and, therefore, distinctive term.

In this sense, the marks at issue give sufficiently different impressions and will be perceived by the average consumer as a whole. Their different structure and number of independent elements (single word vs two independent terms) are decisive to conclude that these marks will be safely distinguished by the public.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Furthermore, the previous cases referred to by the opponent are not relevant to the present proceedings because, although the elements ‘TEC’ and ‘TECH’ are involved, neither of the trade marks concerned in these previous cases are composed of two independent words of considerably different sizes, laid out in different colours and, therefore, they do not reflect identical situations.

In addition, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Frédérique SULPICE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.