OPPOSITION No B 3 089 445

HT S.p.A., Via Conegliano 73/B, 31058 Susegana (Treviso), Italy (opponent), represented by Barzanò & Zanardo Roma S.p.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)

a g a i n s t

GS Yuasa International Ltd., 1, Inobaba-cho, Nishinosho, Kisshoin, Minami-ku, Kyoto-shi, 601-8520 Kyoto, Japan (applicant), represented by Newburn Ellis LLP, Theresienhof, Theresienstraße 1, 80333 München, Germany (professional representative).

On 11/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 445 is upheld for all the contested goods.

2. European Union trade mark application No 18 038 600 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 038 600 ‘HT Element X Alloy’. The opposition is based on European Union trade mark registration No 13 752 043 . 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.

a) The goods

The goods on which the opposition is, inter alia, based are the following:

Class 9: Heat-resistant and chemical-resistant parts, including panels, housing parts for solar energy-generating installations and energy-converting installations (electricity), in particular ceramic parts therefor.

The contested goods are the following:

Class 9: Batteries; rechargeable batteries; batteries for vehicles; batteries for off-grid electrical storage; batteries for backup power; accumulators (batteries); electric storage batteries.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘including’ and ‘in particular’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested batteries; rechargeable batteries; batteries for vehicles; batteries for off-grid electrical storage; batteries for backup power; accumulators (batteries); electric storage batteries are similar to the opponent’s heat-resistant and chemical-resistant parts, including panels, housing parts for solar energy-generating installations and energy-converting installations (electricity), in particular ceramic parts therefor as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

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 contested goods found to be similar target the general and professional public and the goods of the earlier mark target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	HT Element X Alloy
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Some elements of the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as that of Ireland, Malta and the United Kingdom.

The verbal element ‘HT’ of both signs has no meaning for the relevant public in relation to the relevant goods and is, therefore, distinctive.

The earlier mark’s figurative element, consisting of three right-leaning vertical bars in red, orange and yellow, has no relation with the relevant goods and is, therefore, distinctive.

The earlier mark’s verbal elements ‘ADVANCED HEATING SOLUTIONS’ will be perceived as a message informing the reader that the solutions for heating offered are ahead of the times in their development, knowledge and progress. These elements are weak for the relevant goods since this message informs the reader about the quality and intended purpose or the field of application of these goods.

The component ‘Element’ of the contested sign refers to, inter alia, one of the fundamental or irreducible components making up a whole (information extracted from Collins Online Dictionary on 31/07/2020 at https://www.collinsdictionary.com/dictionary/english/element).

As regards the element ‘X’ of the contested sign, it will be perceived, inter alia, as the letter as such or denoting any unknown, unspecified or variable factor or the symbol for ten in Roman numerals (information extracted from Collins Online Dictionary on 31/07/2020 at https://www.collinsdictionary.com/dictionary/english/x).

In its arguments, the opponent claimed that the verbal elements ‘ELEMENT X’ would be associated with the chemical symbol of an element. However, the Opposition Division considers that as ‘X’ is not the symbol of any chemical element, the public will not associate these words with such a meaning.

The element ‘Alloy’ of the contested sign will be understood as a metal that is made by mixing two or more types of metal together (information extracted from Collins Online Dictionary on 31/07/2020 at https://www.collinsdictionary.com/dictionary/english/alloy).

Therefore, the public will see the expression ‘Element X Alloy’ as something unspecified in relation to the composition or the characteristics of the goods, namely, that a component of the batteries is made of a kind of alloy. Therefore, it has a below average degree of distinctiveness at most.

The earlier mark’s figurative element, consisting of three right-leaning vertical bars in red, orange and yellow, and the verbal element ‘HT’ of the earlier mark are the co-dominant elements. These are the most eye-catching when compared to the much smaller verbal element ‘ADVANCED HEATING SOLUTIONS’.

However, it should be pointed out 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).

Moreover, 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 the letters ‘HT’. However, they differ in the weak and non-dominant verbal elements ‘ADVANCED HEATING SOLUTIONS’ of the earlier mark and in the elements of a below average distinctiveness ‘Element X Alloy’ of the contested sign. The signs also differ in the slightly stylised typeface, figurative elements and colours of the earlier mark.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‛HT’, present identically in both signs. The pronunciation differs in the sounds of the below average distinctive verbal elements ‘Element X Alloy’ of the contested sign and in the weak verbal elements ‘ADVANCED HEATING SOLUTIONS’ of the earlier mark. However, due to their smaller size and weak character, these letters are not likely to be pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342). Moreover, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and they tend to shorten marks containing several words.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the signs are aurally similar at least to an average degree, even if every verbal element is pronounced and they are aurally similar to an above average degree when the verbal element ‘ADVANCED HEATING SOLUTIONS’ is not pronounced.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. 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.

d) 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 some weak elements in the mark, as stated above in section c) of this decision.

e) 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 goods are similar and target the professional public. The level of attention is considered to vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to a below average degree, aurally similar to an average degree or even similar to an above average degree, in case the verbal elements ‘ADVANCED HEATING SOLUTIONS’ in the earlier mark are not pronounced, and they are not conceptually similar, albeit due to a weak element and a below average distinctive element.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as 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).

In the present case, the signs coincide in the distinctive verbal element ‘HT’ which is also a dominant element of the earlier mark. The differences residing in the figurative elements, colours and stylisation, as well as in the weak verbal elements of the earlier mark and below average distinctive elements of the contested sign are not sufficient to offset this coincidence which, indeed, may lead the public to think that the contested sign is a parallel line of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 752 043. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Valeria ANCHINI

Victoria DAFAUCE MENENDEZ

Sandra IBAÑEZ

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.