OPPOSITION No B 2 948 241

Gen Set S.p.A., Via Stazione 5, 27030, Villanova d’Ardenghi, PD, Italy (opponent), represented by Bugnion S.p.A., Via di Corticella 87, 40128, Bologna, Italy (professional representative)

a g a i n s t

Inmesol S.L., Crta. Fuente Alamo 2, 30153, Corvera (Murcia), Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez Nº 21-23, 5º A-B, 03002, Alicante, Spain (professional representative).

On 12/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 948 241 is partially upheld, namely for the following contested services:

Class 35: Wholesaling, retailing and sale via internet networks of

apparatus and instruments for conducting electricity.

2. European Union trade mark application No 16 728 313 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 16 728 313 for the figurative mark . The opposition is based on Italian trade mark registration No 1 042 771 for the figurative mark . The opponent invoked Article 8(1(b) EUTMR.

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 on which the opposition is based are the following:

Class 7: Electrical generator; motorized welding apparatus (to be used with

electrodes); direct current electric generator, in particular for welding machines; electric welding machine (electric machines for welding).

Class 9: Portable electric apparatus for wire welding, arc welding machine

using direct or alternating current; mask for welders; electrodes for welders.

The contested services are the following:

Class 35: Wholesaling, retailing and sale via internet networks of apparatus,

instruments and cables for conducting electricity.

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 services in Class 35

An electrode is ‘a conductor through which electricity enters or leaves an object, substance or region’ (https://en.oxforddictionaries.com/definition/electrode, consulted 04/07/2018). The opponent’s electrodes for welders in Class 9 are thus identical to apparatus, instruments for conducting electricity, as both are goods through which electricity is conducted. Retail services concerning the sale of particular goods (in this case Wholesaling, retailing and sale via internet networks of apparatus and instruments for conducting electricity) are similar to a low degree to those particular goods (in the case at hand, electrodes for welders), (judgment of 05/05/2015, T-715/13 Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they do display some similarities, in that they are complementary and the services are generally offered in the same places as those where the goods are offered for sale. Moreover, they are directed at the same consumer. Therefore, the contested Wholesaling, retailing and sale via internet networks of apparatus and instruments for conducting electricity is lowly similar to the earlier electrodes for welders.

The remaining contested services are wholesaling, retailing and sale via internet networks of cables for conducting electricity. As mentioned above, retail services concerning the sale of particular goods (in this case Wholesaling, retailing and sale via internet networks of apparatus and instruments for conducting electricity) are similar to a low degree to those particular goods. However, the goods of the opponent are clearly not identical to the cables for conducting electricity which are subject to the contested services, as they are generators, welding machines, electrodes etc., but not cables.

Therefore, the contested wholesaling, retailing and sale via internet networks of cables for conducting electricity and the opponent’s goods in Classes 7 and 9 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services 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.

The opponent argued that their goods in Classes 7 and 9 are highly similar to the contested services as they can be complementary, invoking Board of Appeal case of 29/08/2011, R - 1614/2010, ‘AVANSIS’ § 48. The Opposition Division notes that goods and services covered in said Board of Appeal decision differ from those of the current opposition. 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 in the present case, since even if the goods at issue were to be considered highly similar, they would still fail to reach the required level of identity.

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 lowly similar are specialised goods and services, directed at business customers with specific professional knowledge or expertise.

The goods and services at hand relate to electrical goods and the sale through various forms thereof. Goods and services which can have an impact on safety may result an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41). Therefore, the degree of attention in the present case may vary from average to high.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 is comprised of a verbal element, ‘GenSet’ in black, fairly standard typeface. The letters ‘Gen’ are in bold and consequently stand out slightly more than the letters ‘Set’. The verbal element ‘GenSet’ has no meaning for the relevant public and is, therefore, distinctive.

The earlier sign also features a stylised black lightning bolt to the left of the verbal element. As the goods covered by the mark relate to electrical generators and various kinds of electrically-run machines and apparatus, this figurative element is weakly distinctive.

The earlier sign has no element which would be more dominant (visually outstanding) than other elements.

When signs are composed of figurative and verbal elements, the verbal element 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. In the case at hand, the public will thus more readily refer to the mark by referencing the verbal element ‘GenSet’, rather than the weakly distinctive figurative element depicting a lightning bolt.

The contested sign is composed of various elements in white lettering, set against a square, blue background. The capital letter ‘G’ is clearly perceivable in a large, white typeface, followed by what will be perceived by part of the public as a stylised letter ‘S’, owing to the presence of the verbal element ‘GENSET’ immediately below these letters. Part of the public may not perceive the letter ‘S’, but rather see a stylised figurative feature for which no meaning would be immediately apparent.

Beneath the letter ‘G’ of the contested sign, the verbal element ‘GENSET’ features in white uppercase lettering and in a smaller typeface compared to the above-mentioned letters. As previously mentioned, this term is meaningless for the relevant public and has no relationship to the goods at issue, and is thus distinctive.

The final verbal element of the contested sign, ‘COMPONENTS’ is will be associated by the Italian public with the equivalent Italian word ‘componenti’, owing to the phonetic and visual proximity of the two words. ‘COMPONENTS’ and ‘componenti’ have the same meaning, namely ‘a part that combines with other parts to form something bigger’ (https://dictionary.cambridge.org/dictionary/english/component, consulted 10/07/2018). As such, the verbal element ‘COMPONENTS’ is weakly distinctive for the services at issue, as the goods which are subject to the retail or wholesale services (i.e. apparatus, instruments for conducting electricity) can be formed of components or even be components for other goods.

As previously stated, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. It follows that in the contested sign, the public will refer to the mark by the distinctive verbal element ‘GENSET’, as well as the letter ‘G’ or ‘GS’ if perceived by the public.

Even though the letters ‘GS’ (or the letter ‘G’ with an additional stylised figurative feature) are quite large, they do not overshadow the other elements, including the smaller words ‘GENSET COMPONENTS’; therefore, the sign has no element which would be more dominant (visually outstanding) than the other elements.

Visually, the signs coincide fully in the distinctive element of both signs, ‘GENSET’. As previously mentioned, the importance of this verbal element is greater than any figurative elements in the signs, as the public will not refer to the sign by referring to its figurative elements, but rather by the shared verbal element ‘GENSET’.

However, the signs differ in the additional letters ‘G’ and ‘S’ of the contested sign, which are distinctive and have no counterpart in the earlier sign. The elements of the contested sign are displayed on a blue background, whilst the verbal and figurative elements of the earlier sign are set against a white background. The lettering of the earlier sign is black, whilst that of the contested sign is white. The signs further differ in the verbal element of the contested sign ‘COMPONENTS’; however, as a weakly distinctive element, it has less impact on the overall impression of the signs. Additionally, the figurative element of the lightning bolt in the earlier sign has no counterpart in the contested sign; however, as a weakly distinctive element, it has less impact in the comparison of the signs.

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

Aurally, the pronunciation of the signs coincides in the element ‘GENSET’, present identically in both signs. This shared verbal element is distinctive in both signs. As previously covered, the public will more easily refer to the signs in question by their verbal element than by describing their figurative elements. It follows that when referring to the contested sign, the relevant public will pronounce the term ‘GENSET’, rather than the letters ‘G’ and stylised ‘S’ (despite their size) or the weak element ‘COMPONENTS’. In the case of the earlier sign, the figurative lightning bolt element will not be pronounced or referred to by the public aurally. The coincidence in the most distinctive verbal element, ‘GENSET’, that will be pronounced in both signs renders them aurally highly similar.

Conceptually, the signs coincide in the common verbal element ‘GENSET’, which has no meaning for the relevant public. The signs will be associated with different concepts. The presence of a lightning bolt in the earlier sign will convey the concept of electricity to the public, as previously stated. However, this concept is weakly distinctive for the goods at issue, which limits its overall impact. The verbal element ‘COMPONENTS’ of the contested sign will be understood as mentioned above and is also weakly distinctive and therefore its ability to serve as designation of commercial origin to the public and consequent impact on the comparison of signs is also limited.

Therefore, the impact of the conceptual dissimilarity on the assessment of likelihood of confusion is very limited, due to the weakness of the differentiating concepts.

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, despite the presence of the weakly distinctive figurative element depicting a lightning bolt, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As concluded above, part of the contested services have been found lowly similar to the opponent’s goods in Class 9.

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).

The signs have been found to be visually similar to an average degree and aurally highly similar. The different concepts invoked by the figurative lightning bolt and the verbal element ‘COMPONENTS’ (of the earlier and contested mark respectively) have limited impact in distinguishing the signs in the public’s mind, owing to their weakly distinctive nature. Furthermore, these elements will not be perceived by the public as badges of commercial origin. The services at issue are directed at a professional public, whose degree of attention will vary from average to high.

The marks fully coincide in the verbal element in both signs, ‘GENSET’, which has no meaning for the relevant public in relation to the goods and services offered under the signs and is thus distinctive. Although the contested sign features addition verbal elements which have no counterpart in the earlier sign, such as the weakly distinctive ‘COMPONENTS’ and the letters ‘G’ and ‘S’, as stated above, the public will more easily refer to the main verbal element ‘GENSET’ present identically in both marks, rather than describing any figurative elements contained therein. The lightning bolt in the earlier sign, which is weakly distinctive in any case, would therefore also not be verbalised by the public to refer to the earlier sign. The coincidence in the most distinctive verbal element that will be pronounced in both signs weighs in significantly in the assessment of the similarity between the signs and the consequent likelihood of confusion that could arise.

The visual differences between the signs include the blue background of the contested sign compared to the earlier sign’s white background, the different colours of the lettering in both signs and the presence of a weakly distinctive figurative element in the earlier sign. The average visual similarity between the signs coupled with the high aural similarity on account of the common distinctive element, ‘GENSET’, contained identically in both signs, is significant for the assessment of the likelihood of confusion. Furthermore, the letter ‘G’ or ‘GS’ (when perceived) refer to the common element ‘GENSET’ and therefore this difference is not sufficient to exclude likelihood of confusion.

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).

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.

In the case of similar goods and the sale thereof, it is reasonable to have a sub-brand for sale purposes, which would share the distinctive element of the sign. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the professional Italian public and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 1 042 771 for the contested services found to be lowly similar to the opponent’s goods.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to the goods of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Ewelina SLIWINSKA

Liliya YORDANOVA

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.