OPPOSITION No B 2 924 093

ACSYS Lasertechnik GmbH, Leibnizstrasse 9, 70806, Kornwestheim, Germany (opponent), represented by PKL Legal Rechtsanwaltsgesellschaft mbH, Glashütter Str. 104, 01277 Dresden, Germany (professional representative)

a g a i n s t

Power World (H.K.) Limited, Room 2103 Futura Plaza, 111 How Ming Street Kwun Tong KL, Hong Kong, Hong Kong Special Administrative Region of the People's Republic of China (applicant) represented by Agency Arnopatents, Brivibas street 162/2-17, 1012 Riga, Latvia (professional representative).

On 14/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 924 093 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 779 705 .The opposition is based on German trade mark registration No 302 0100 50 5044, ACSYS. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant submitted observations on 30/03/2018 which included a request that the opponent prove the use of its mark. By letter dated 17/04/2018, the applicant was informed that its request for proof of use was inadmissible as it had not submitted the request by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the opponent is not required to prove use of its mark and the evidence submitted in this regard does not fall to be assessed.

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

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

Class 7: Mechanical tools, machines and machine tools as well as plants and systems composed of mechanical tools, machines, machine tools for material treatment by means of laser and laser technology, in particular for the treatment by laser, in particular laser lettering, laser digitizing, laser filling, laser engraving, in particular laser deep engraving and 3D-laser engraving, laser marking, laser micro treatment, laser polishing, laser cutting, laser welding, laser segmenting, laser scaling, laser structuring; spare parts and parts as well as accessories for the aforementioned goods (included in class 7).

Class 9: Scientific, nautical, surveying, weighing, measuring apparatus, tools and instruments; Lasers, not for medical purposes; camera based measuring apparatus, tools and instruments; apparatus, tools and instruments for optical part detection; apparatus, tools and instruments for (also online) depth measurement; precision measuring apparatus, tools and instruments as well as parts from precision measuring apparatus, tools and instruments; data processing tools and computers, in particular computers (hardware), notebooks and laptops (hardware), display screens and monitors (hardware); data processing tools and plants and systems composing of data processing tools and plants; computer-program and software (recorded); computer-program and software (downloadable); electronic publications (downloadable); downloadable image files; plants and systems composed of aforementioned goods; spare parts and parts as well as accessories for the aforementioned goods (included in class 9); all aforementioned goods in this class for material treatment by means of laser and laser technology, namely laser lettering, laser digitizing,laser filling, laser engraving, in particular laser deep engraving and 3D-laser engraving, laser marking, laser micro treatment, laser polishing, laser cutting, laser welding, laser segmenting, laser scaling, laser structuring

The contested goods are the following:

Class 7: Mixing machines; brushes for vacuum cleaners; washing apparatus; machines and apparatus for cleaning, electric; vacuum cleaners; dust exhausting installations for cleaning purposes; dust removing installations for cleaning purposes; cleaning appliances utilizing steam; apparatus for drawing up beer under pressure; wine presses; whisks, electric, for household purposes; fruit presses, electric, for household purposes; robots [machines]; cowlings [parts of machines]; finishing machines; metalworking machines; handling machines, automatic [manipulators]; wind turbines; Wind-powered electricity generators; Hydroelectric installations for generating electricity; Barking machines; Paint stripping apparatus [machines]; Gardening machines (Powered -); Power supply apparatus [generators]; Winding machines; Peeling machines (Electric -) for use in the preparation of food; Peeling machines.

Class 9: Computers; laptop computers; smartglasses; smartwatches; tablet computers; computer hardware; cellular phones; mouse [computer peripheral]; sound transmitting apparatus; headphones; theft prevention installations, electric; 3D spectacles; accumulators, electric, for vehicles; battery boxes; anode batteries; chargers for electric batteries; batteries, electric; galvanic batteries; solar batteries; Electronic power supplies.

Some of the contested goods (e.g computers; laptop computers; computer hardware) are identical or similar to goods on which the opposition is based (e.g computers (hardware), notebooks and laptops (hardware)). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 deemed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high depending on the price and the specialised nature of the goods in question.

3. The signs

ACSYS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark consists of the word ‘ACSYS’, which does not exist as such in the relevant territory.

It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57)

To this extent, although the mark is composed of one verbal element, the relevant public is likely to perceive an allusion to the word ‘system’, which has the same meaning in English and German, in the final three letters of the word mark. Due to its position in the sign together with letters which are meaningless in context, the allusion is not such that it materially affects its distinctiveness in respect of the goods.

The contested sign is a figurative mark made up of a stylised representation of the word ‘poweraxis’. The English verbal elements ‘power’ and ‘axis’ are discernible (disjunctively) in the contested sign, despite the lack of a space between them. The verbal element ‘power’ will be understood by the relevant public as referring to energy, strength in general (https://www.duden.de/rechtschreibung/Power) or, with a view to the goods at hand, an energy source, being a relatively known English word, the meaning of which is reinforced or clarified by its letter ‘O’, which depicts the image of a battery. Bearing in mind that the relevant goods are powered by electricity, this element is weak. The verbal element ‘axis’ is a recognisable English word without a clear meaning for the relevant public in the context of the goods. It is therefore distinctive.

The mark is depicted in a stylised, black font, apart from the letter ‘x’ which is depicted in white against a black background. The figurative elements are not particularly distinctive and it should be noted, in this regard, that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in their letter ‘a’, though it is positioned very differently. It is the first letter of the earlier word mark which is a relatively short sign, and the sixth letter of the contested sign, itself a relatively lengthy, figurative mark. They differ in all of the remaining letters except for the final ‘s’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. The stylisation and the figurative device of the contested sign have no mutual counterpart and contribute to the visual differences between the signs, albeit having a reduced impact in the contested sign.

Therefore, it is concluded that the signs are not visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ac‑sys’ of the earlier sign and ‛ax‑is’ of the contested sign, pronounced respectively as two identical syllables, but positioned very differently. The pronunciation differs in the sound of the letters ‛power’ of the contested mark, which have no counterparts in the earlier sign and which will also be pronounced as two syllables. Although this first element is weaker, it constitutes the beginning of the long sign, and the part which is likely to be emphasised in speech.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the earlier sign has no meaning, though it contains an (indirect) allusion to the word ‘system’. The contested sign contains the word ‘power’ as previously defined, with a clear meaning for the relevant public which is reinforced by the image of a battery. The contested sign also contains the word ‘axis’ (primarily a line of symmetry) which may be understood by the relevant public as an English word without a clear meaning in relation to the goods, but which does not connote the word ‘system’. As the signs will be associated with a dissimilar meaning, the signs are conceptually not 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 is fanciful 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

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).

Although the signs are aurally similar to an average degree, the structure and appearance of the respective signs influences the effect of the clear differences between them. The contested sign is a figurative juxtaposition of two discernible verbal elements, one of which is weak for the relevant public in the context of the goods, while the earlier word mark is made up of a single, fanciful verbal element (albeit one which alludes in part to another meaningful word). They are visually dissimilar and evoke different concepts to the attentive consumer. Furthermore, the visual differences have more of an impact as the goods are more likely to be ordered on sight.

The very different overall visual impression given by the marks is sufficient to exclude any likelihood of confusion on the part of the public, even assuming that the goods are all identical or similar. Therefore, the opposition must be rejected.

COSTS

According to Article 109(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 applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Jose Antonio GARRIDO

Keeva DOHERTY

Natascha GALPERIN

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.