OPPOSITION Nо B 3 076 666

 

TCS Türcontrolsysteme AG, Geschwister-Scholl-Str. 7, 39307 Genthin, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte PartGmbB, Theodor-Heuss-Str. 1, 38122 Braunschweig, Germany (professional representative) 

 

a g a i n s t

 

NSS spółka z ograniczoną odpowiedzialnością, ul. Modularna 11, 02238 Warszawa, Poland (applicant), represented by Sylwia Owczarek, Powsinska 23/7, 02-920 Warszawa, Poland (professional representative).

On 08/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 076 666 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 962 824  (figurative mark). The opposition is based on the following earlier rights:

- German trade mark registration No 30 2015 109 101 ‘TCS’ (word mark)

- German trade mark registration No 39 725 955 ‘TCS’ (word mark)

The opponent invoked  Article 8(1)(b) EUTMR.

PROOF OF USE

 

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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.

 

 

a)  The goods and services

 

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

 

- Goods and services of German trade mark registration No 3020 1510 9101

Class 6: Building and construction materials and elements of metal; unprocessed and semi-processed materials of metal, not adapted for a specific use; metal hardware; doors, gates, windows and window coverings of metal; structures and transportable buildings of metal; statues and works of art of common metals; containers, and transportation and packaging articles, of metal; parts and fittings of all the aforesaid goods, included in the class.

Class 9: Recorded content; software; downloadable applications for use with mobile devices; Software for diagnostics and troubleshooting; software for building automation for networking, controlling, programming, regulating, maintenance, remotely controlling of apparatuses, in particular utensils for household purposes, heating installations, lighting devices, multimedia systems, aerators, shading devices, air-conditioning installations, alarm systems, surveillance systems, access control systems; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; devices for treatment using electricity; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; electric apparatus and equipment for controlling access; access control cards [encoded or magnetic]; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; parts and accessories for all before mentioned goods, as far as included in this class.

Class 37: Building, construction and demolition; rental of tools, plant and equipment for construction and demolition; mining extraction as well as oil and gas extraction; installation, cleaning, repair and maintenance services regarding door control systems and building automation systems including electrical systems for controlling, programming, regulating, maintenance, remotely controlling of utensils for household purposes, heating installations, lighting devices, multimedia systems, aerators, shading devices, air-conditioning installations, door control systems and devices for opening and shutting of windows, alarm systems and surveillance systems; pest control and extermination (except for agricultural, horticultural and forestry purposes), and disinfection; rental and hiring of objects in connection with the providing of the aforesaid services, as far as included in this class; information and consultancy relating to the aforesaid services, as far as included in this class.

Class 38: Telecommunication services; providing internet-based access via an application software [app]; rental, hire and leasing of objects in connection with the providing of the aforesaid services, as far as included in this class; information and consultancy relating to the aforesaid services, as far as included in this class.

Class 42: IT services, namely software development, programming and implementation, computer hardware development, hosting services, and software as a service [SaaS] and rental of software, rental of computer hardware and facilities, IT consultancy, advisory and information services, IT security, protection and restoration, data duplication and conversion services, data coding services, computer analysis and diagnostics, research, development and implementation of computers and systems, computer project management services, data mining, digital watermarking, computer services, technological services relating to computers, computer network services, updating of memory banks of computer systems, data migration services, updating websites for others, monitoring of computer systems by remote access; science and technology services; testing, authentication and quality control; design services; rental, hire and leasing of objects in connection with providing the aforesaid services as far as included in this class; information and consultancy relating to the aforesaid services, as far as included in this class; conducting technical project studies, including planning of door control systems and installations for building automation, namely for controlling, regulating, maintenance, remote control, programming of equipment and devices in buildings including heating installations, aerators, shading devices.

- Goods and services of German trade mark registration No 39 725 955

 

Class 6: Non-electric door closer and doorbells of metal, door fittings of metal and door opener of metal.

Class 9: Door control systems, namely electrical call systems, door phones, monitoring and call systems equipment, alarms, inter-phones and telephone installations, door video systems, video surveillance equipment, access control systems in the form of electronic devices for doors, electronic display and marking devices for access and door areas; all goods included in Class 09, spare parts and subassemblies for the aforementioned goods.

Class 42: Conducting technical project studies, in particular planning of door control devices; rental of door phones and electronic door control devices.

The contested goods and services are the following:

 

Class 9: Alarms; burglar alarms; galvanic cells; black boxes [data recorders]; reading devices; data processing equipment; infrared detectors; light diodes; copper wire, insulated; video screens; electronic key fobs being remote control apparatus; electronic access control systems for interlocking doors; theft prevention installations, electric; regulators [dimmers] (light -), electric; regulating apparatus, electric; measuring devices, electric; gasometers [measuring instruments]; sockets, plugs and other contacts [electric connections]; identity cards, magnetic; ducts [electricity]; electric installations for the remote control of industrial operations; connected bracelets [measuring instruments]; electronic interactive whiteboards; interactive touch screen terminals; electric cables; thermal imaging cameras; camcorders; encoded magnetic cards; encoded cards or keys; microphones; modems; monitors [computer hardware]; transmitters of electronic signals; objectives [lenses] [optics]; computer programs [downloadable software]; recorded computer programs; electricity conduits; temperature indicating apparatus; battery boxes; data processing apparatus; sound recording apparatus; monitoring apparatus, electric; global positioning system [GPS] apparatus; television apparatus; remote control apparatus; video telephones; detectors; smoke detectors; electric locks; solenoid valves [electromagnetic switches].

Class 35: Wholesaling and retailing of the following goods: alarms, anti-theft warning apparatus, electric batteries, black boxes (data recorders), readers, data processing equipment, infrared detectors, light-emitting diodes (LED), insulated copper wire, video screens, electronic key fobs being remote control apparatus, electronic access control systems for interlocking doors, electric theft prevention installations, electric light regulators (dimmers), electric control and regulating apparatus, electric measuring apparatus, gasometers (measuring instruments), sockets, plugs and other contacts (electric connections), magnetic identity cards, ducts (electricity), electric installations for the remote control of industrial operations, connected bracelets (measuring instruments), electronic interactive whiteboards, interactive touch screen terminals, electric cables, thermal imaging cameras, camcorders, encoded magnetic cards, encoded cards, encoded keys, microphones, modems, monitors (computer hardware), transmitters of electronic signals, objectives (lenses) (optics), computer programs (downloadable software), recorded computer software, electricity conduits, temperature indicators, accumulator boxes, data processing equipment, sound recording apparatus, monitoring apparatus, other than for medical purposes, global positioning system (GPS) apparatus, television apparatus, remote control apparatus, video telephones, detectors, smoke detectors, electric locks, solenoid valves (electromagnetic switches); business administration of consumer loyalty programs; updating and maintenance of data in computer databases; marketing in the framework of software publishing; negotiation of business contracts for others; search engine optimisation for sales promotion; organisation of trade fairs for commercial or advertising purposes; demonstration of goods; presentation of goods on communication media, for retail purposes; design of advertising materials; promotion of goods and services through sponsorship of sports events; advertising; bill-posting; radio advertising; television advertising; telemarketing services; business efficiency expert services; marketing services; commercial intermediation services; public relations services; layout services for advertising purposes; organization of exhibitions for commercial or advertising purposes; provision of an on-line marketplace for buyers and sellers of goods and services; administrative processing of purchase orders.

Class 42: Updating of computer software; consultancy in the field of computer security; computer software consultancy; consultancy in the design and development of computer hardware; providing information on computer technology and programming via a web site; installation of software; maintenance of software; monitoring of computer systems by remote access; monitoring of computer systems to detect breakdowns; recovery of computer data; software development in the framework of software publishing; conducting technical project studies; software as a service [SaaS]; duplicating computer programs; research and development for others; computer software design; computer system design; electronic data storage; advisory services relating to technology; computer technology consultancy; telecommunications technology consultancy; graphic design; rental of software; industrial design.

Class 45: Licensing of computer software [legal services]; legal services; monitoring of burglar and security alarms; tracking of stolen property; licensing in the context of software publication; copyright management.

The applicant claims that, since the contested mark was applied for services in Classes 35 and 45 “which are outside of the scope of protection” of the earlier marks, “classes 35 and 45 should be excluded from the assessment of the risk of confusion”. However, the Opposition Division notes that the Nice Classification serves only foradministrative purposes and, according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification. Therefore, the lack of coincidence in the number of the classes to which the goods or services refer is not a reason to exclude them from the comparison or to conclude that they are dissimilar prima facie.

In the present case, some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

 

b)  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 assumed to be identical are directed in part at the public at large and in part at professionals.

The degree of attention paid by them during the purchase of these goods and services is deemed to vary from average to higher than average. A higher than average degree of attention is likely to be paid in relation to, for instance, the contested services that are not frequently purchased and/or are expensive and/or can have important consequences for the purchaser (e.g. legal services). However, in relation to another part of the goods or services, nothing in their nature, their manner of purchase or average price requires that consumers are particularly attentive and observant when choosing such goods or services (e.g. sockets) Therefore, the degree of attention is considered to be average in relation to them.

c)  The signs

TCS
Earlier trade marks	Contested sign

 

As regards the relevant territory, the applicant claims that the relevant territory is the European Union. However, as the opponent notes, this statement is not correct. Where the earlier marks are national marks, the relevant criteria must be analysed for the relevant public in that particular EU Member State. The perception of similarity may differ from one Member State to another because of differences in pronunciation and/or meaning/understanding (See Guidelines for Examination in the Office, Part C Opposition). Since the earlier rights are German trade mark registrations, 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).

The signs are meaningless and of average distinctive character.

The applicant claims that the letters ‘BCS’ in the contested mark have the concept of ‘Best complex solutions”. However, the applicant has not submitted any evidence that could serve to demonstrate that consumers facing the combination of letters ‘BCS’ would attribute that or any other concept when seeing these letters. Therefore, the applicant´s claim is set aside.

The marks do not have any element more dominant (visually eye-catching) than others. As claimed by the opponent, the line underlining the contested mark is merely decorative, frequently used in trade marks in order to focus the attention of the reader, and void of distinctive character per se.

The marks compared are short signs (i.e. three-letter signs). The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Although the marks are short signs, the first letter will have an important impact on the relevant public, since reading takes place 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. In the present case, it is relevant to note that the marks compared differ in their first letter.

 

Visually, the signs coincide in the letters ‘CS’. They differ in their first letters ‘T’ and ‘B’ of the earlier and contested marks, respectively, and in the typeface of the contested sign. The differing letters ‘T’ and ‘B’ have completely different shape (i.e. one consists of two rounding shapes sticking to a vertical line and the T is a vertical line with a perpendicular smaller line on top). The marks are short signs in which, as explained above, small differences may frequently lead to a different overall impression. In addition, their differences are found in the part of the marks that first catches the attention of the reader, and that is therefore of greater weight.

The marks are visually similar to a low degree.

 

Aurally,  the pronunciation of the signs coincides in the sound of the letters ‘CS’ and differs in the sound of their first letters ‘T’ and ‘B’ in the earlier and contested signs, respectively (pronounced as ‘/te/’ and ‘/be/’, according to the German pronunciation) and are clearly perceived as the spelling of different letters.

The signs are aurally similar to a low degree.

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.

 

d)  Distinctiveness of the earlier marks

 

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim. Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

 

e)  Global assessment, other arguments and conclusion

 

The goods and services have been assumed to be identical. They are directed in part at the public at large and in part at professionals. The public´s degree of attentiveness during their purchase will vary from average to high.

The signs are visually and aurally similar to a low degree, and their conceptual comparison is not possible. The earlier marks are of average distinctive character. As explained above, the signs compared are short signs (i.e. three-letter marks) which differ in their first letter, namely the part where consumer´s attention is first focused.

The differing letters ‘B’ and ‘T’ are visually different (see detailed description above) and consumers have no reason confuse them from the visual perspective. From the aural perspective, these differing letters will be clearly perceived as the spelling of two different letters. Moreover, there is no reason to think that the goods and services are aurally purchased, so that this factor does not play a very specific role in our assessment.

The signs in dispute both have three letters; both are, consequently, short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The only different letter is visually different and clearly differentiated aurally in both marks. Consequently, the similarities between the marks are not sufficient to lead to a finding of likelihood of confusion in the present case (See Decision of 7 February 2001 – R 393/1999-2 – TBS/jbs).

Therefore, even assuming the identity of the goods and services of the conflicting signs , and even for the part of the public paying only an average degree of attention (and not the high degree also considered above), the marks present enough differences to avoid likelihood of confusion within the meaning of Article 8(1)(b) EUTMR in Germany, and the opposition must be rejected.

  

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

 

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, 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

 

 

Saida CRABBE

María del Carmen SUCH SANCHEZ

Manuela RUSEVA

 

 

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.