OPPOSITION No B 3 002 105

Eschenbach Optik GmbH, Schopenhauerstr. 10, 90409 Nürnberg, Germany (opponent), represented by Wolpert Rechtsanwälte, Kaiser-Friedrich-Promenade 87, 61348 Bad Homburg, Germany (professional representative)

a g a i n s t

Euromex Microscopen B.V., Papenkamp 20, 6836 BD Arnhem, Netherlands (applicant).

On 15/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 105 is upheld for all the contested goods, namely

Class 9: Microscopes.

2. European Union trade mark application No 17 154 717 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 154 717 (word mark ‘Novex’), namely against some of the goods in Class 9. The opposition is based, inter alia, on the German trade mark registration No 30 335 619 (word mark ‘noves’). 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.

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 German trade mark registration No 30 335 619.

1. The goods

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

Class 9: Scientific and optical apparatus and instruments and parts thereof as far as included in class 9; magnifying glasses; reading and vision aids.

The contested goods are the following:

Class 9: Microscopes.

The contested microscopes are included in the broad category of the opponent’s scientific and optical apparatus and instruments and parts thereof as far as included in class 9. Therefore, they are 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 found to be identical are directed at the public at large and business customers with professional knowledge and specialised expertise (such as laboratories).

The public’s degree of attentiveness may vary from average to high, depending on the price of the goods purchased (for instance, the degree of attention in relation to sophisticated high-end microscopes would be high).

3. The signs

noves	Novex
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).

Both signs are word marks. In the case of word marks, the word itself is protected; therefore the use of upper or lower case character is irrelevant.

The earlier mark consists of the verbal element ‘noves’ whereas the contested sign’s verbal element is ‘novex’. They have no meaning for the relevant public and are, therefore, distinctive. Being word marks, they have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

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.

Visually, the signs coincide in four out of five letters in identical order, that is to say the sequence of the letters ‘nove*’. They differ only in their ending ‘****s’ versus ‘****x’.

It is concluded that the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘N/O/V/E’, present identically in both signs. The pronunciation differs slightly in the sound of the element ‘X’ (pronounced in German as ‘ks’) of the contested mark and in the sound of the letter ‘S’ of the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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

In the present case, the contested goods have been found to be identical to the opponent’s goods. The relevant public consists of business consumers and of the public at large. The relevant public displays a degree of attention that may vary from average to high depending on the price of the goods.

Moreover, the signs are visually and aurally similar to a high degree. As both signs do not have a particular meaning, the conceptual comparison remains neutral.

As explained in detail in section c) above, the signs coincide in the string of letters ‘NOVE’ at the more important beginning of the signs. The signs differ only in their respective fifth letter. Thus, although the ending letter of the signs is different, its overall impact on the comparison is rather limited.

Furthermore, 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).

The applicant argues that as the (potential) customers of the two product groups are completely different, the likelihood of confusion can be excluded. However, the appreciation of likelihood of confusion depends on numerous elements, and, in particular, the degree of similarity between the marks and between the goods identified. In the case at hand as mentioned above, the goods are identical, therefore logically they coincide in the same field of business. Furthermore, the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

In its observations, the applicant argues that it owns several registrations with (or containing) the word ‘Novex’ in the Benelux trademark register and in domain names databases such as whois, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant further argues that it is the owner of a Benelux trade mark, and in respect of which seniority has been claimed.

In accordance with Article 39(2) EUTMR, seniority claims shall either be filed together with the EU trade mark application or within two months of the filing date of the application, and shall include the Member State or Member States in or for which the mark is registered, the number and the filing date of the relevant registration, and the goods and services for which the mark is registered. Therefore, as the applicant did not fulfil these conditions, the earlier Benelux mark has no relevance in this present case.

Furthermore, it should be taken into account that, in accordance with Article 39(2) EUTMR, seniority shall have the sole effect that, where the proprietor of the EUTM surrenders the earlier mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier mark had continued to be registered. Therefore, the effect of seniority is not the same, as the applicant seems to think, as that of priority, and the seniority of the earlier Benelux mark has no relevance in the present conflict between the EUTM application and the earlier German trade mark registration.

The applicant also argues that its EUTM has a long-standing use and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 335 619. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, that is the German trade mark ‘noves’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia MARTINI

Lars HELBERT

Denitza STOYANOVA-VALCHANOVA

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.