AX TECHNOLOGY | Decision 2435439 - Wheeler & Clinch Limited v. AX Technology Sp. z o.o. Spólka komandytowa

Date Published: Sep 25, 2017

OPPOSITION No B 2 435 439

Wheeler & Clinch Limited, 75-99 Nathan Way, West Thamesmead Business Park, London SE28 0BQ, United Kingdom (opponent), represented by Forresters, Sherborne House, 119-121 Cannon Street, London  EC4N 5AT, United Kingdom (professional representative)

a g a i n s t

AX Technology Sp. z o.o. Spólka komandytowa, ul. Modra 62, 71220 Szczecin, Poland (applicant), represented by Marcin Momot, ul. Pomarańczowa 35/1, 70-781 Szczecin, Poland (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 435 439 is partially upheld, namely for the following contested goods:

Class 9: Apparatus for recording, broadcasting or transmission of sound or images; apparatus for receiving and processing of data, sound or images; data processing apparatus; antennas; target surveillance apparatus [optical]; target surveillance apparatus [electronic]; target surveillance apparatus [telescopic]; target surveillance apparatus [electric]; disks, magnetic; optical discs; telephone socket outlets; transistor sockets; relay sockets; television outlets; plug boxes [electric]; moveable sockets; switched spurs [electric]; electric power supply sockets; masts for aerials; masts for wireless aerials; metal poles [aerials]; masts for wireless aerials; optical fibers; optical fibers; ribbon cable; audio cable; telephone wires; coaxial cables; electrical cables; electrical cables; usb cables; measuring cables; interface cables [electric]; telephone connecting cords; optical fibers; heat resistant electric wires; video cameras adapted for monitoring purposes; video cameras adapted for monitoring purposes; infrared cameras; frequency transformers; signal convertors; electroacoustic transducers; aerial converters; converters, electric; low noise converters; high frequency convertors; analogue to digital converters; television standards converters; ultrahigh frequency translator apparatus; ultrahigh frequency translator apparatus; cable television converters; dvd recorders; television recorders; sound recorders; digital video disc recorders; digital video recorders; film recorders; compact disc recorders; compact disc recorders; cd-rom writers; loudspeakers; apparatus for recording and reproduction of television signals; memory sticks; usb flash drives; amplifier tuners; electronic tuners; radio tuners; line tuners; video tuners; signal tuners; stereo tuners; radio receiving tuners; radio receiving tuners; amplitude modulation tuners; recording apparatus; apparatus for transmitting and receiving of television programmes; apparatus for transmitting and receiving of radio waves; apparatus for transmission and receiving of programmes by satellite; broadcasting equipment; stereo signal generator apparatus; portable sound recording apparatus; image intensifiers; apparatus for the transmission of images; apparatus for the transmission of images; video reproducing apparatus; amplifiers; frequency modulation apparatus; pulse code modulating processors; infrared detection apparatus; power resources; power modules; aerial mounts; television apparatus.

2.        European Union trade mark application No 12 876 363 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 876 363 for  namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 7 078 967 for and on the United Kingdom non-registered figurative trade mark. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

Remark:

In its observations received on 26/01/2017 the opponent also contests the goods in Classes 6 and 8, however, this argumentation cannot be taken into consideration since only the goods covered by Class 9 were challenged during the three months opposition period.

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

Class 8: Hand tools and hand operated implements.

Class 9: Telecommunication satellites; transponders, parabolic antennas; electrical safety devices, apparatus and instruments; cutout devices; isolation devices, apparatus and instruments; electric breakers; electricity conduits; circuit breakers; electrical circuit components; electric current control devices; electric control apparatus and installations; electrical access control apparatus and installations; electrical signs; electrical adjustment apparatus; electrical cabling and accessories; adaptors and couplers; telephone plugs and sockets; wall plates; electrical plugs and sockets; modular jacks and plugs; connectors; liquid level sensors; flow sensors and switches; relays, sensors and switches; parts and fittings for the aforesaid goods.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design and development of electrical parts; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design services.

The contested goods are the following:

Class 9: Apparatus for recording, broadcasting or transmission of sound or images; apparatus for receiving and processing of data, sound or images; data processing apparatus; antennas; target surveillance apparatus [optical]; target surveillance apparatus [electronic]; target surveillance apparatus [telescopic]; target surveillance apparatus [electric]; disks, magnetic; optical discs; holographic plates; circular slide rules; telephone socket outlets; transistor sockets; relay sockets; television outlets; plug boxes [electric]; moveable sockets; switched spurs [electric]; electric power supply sockets; masts for aerials; masts for wireless aerials; metal poles [aerials]; masts for wireless aerials; optical fibers; optical fibers; ribbon cable; audio cable; telephone wires; coaxial cables; electrical cables; electrical cables; usb cables; measuring cables; interface cables [electric]; telephone connecting cords; optical fibers; heat resistant electric wires; video cameras adapted for monitoring purposes; video cameras adapted for monitoring purposes; infrared cameras; frequency transformers; signal convertors; electroacoustic transducers; aerial converters; converters, electric; low noise converters; high frequency convertors; analogue to digital converters; television standards converters; ultrahigh frequency translator apparatus; ultrahigh frequency translator apparatus; cable television converters; dvd recorders; television recorders; sound recorders; digital video disc recorders; digital video recorders; film recorders; compact disc recorders; compact disc recorders; cd-rom writers; loudspeakers; apparatus for recording and reproduction of television signals; spectacles [optics]; memory sticks; usb flash drives; amplifier tuners; electronic tuners; radio tuners; line tuners; video tuners; signal tuners; stereo tuners; radio receiving tuners; radio receiving tuners; amplitude modulation tuners; recording apparatus; apparatus for transmitting and receiving of television programmes; apparatus for transmitting and receiving of radio waves; apparatus for transmission and receiving of programmes by satellite; broadcasting equipment; stereo signal generator apparatus; portable sound recording apparatus; image intensifiers; apparatus for the transmission of images; apparatus for the transmission of images; video reproducing apparatus; amplifiers; frequency modulation apparatus; pulse code modulating processors; infrared detection apparatus; power resources; power modules; wall mountings adapted for television monitors; aerial mounts; television apparatus.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in Class 9

The contested electrical cables, (mentioned twice), is identically contained in both lists of goods, (including synonyms).

The contested antennas include, as a broader category, the opponent’s parabolic antennas. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested transistor sockets; relay sockets; television outlets; plug boxes [electric]; moveable sockets; switched spurs [electric]; electric power supply sockets are included in, or overlap, the broad category of the opponent’s sockets. Therefore, they are identical.

The contested interface cables [electric]; heat resistant electric wires are included in the broad category of the opponent’s electrical cabling. Therefore, they are identical.

The contested telephone socket outlets is included in the broad category of the opponent’s sockets. Therefore, they are identical.

The contested stereo signal generator apparatus, which is ‘an apparatus which makes it possible to deliver an electric signal of given shape (voltage, intensity, sine, square wave ...) from a power supply’ and the contested frequency transformers; signal convertors; electroacoustic transducers; converters, electric; low noise converters; high frequency convertors; analogue to digital converters; television standards converters; ultrahigh frequency translator apparatus; ultrahigh frequency translator apparatus; cable television converters; amplifiers; amplifier tuners; electronic tuners; radio tuners; line tuners; video tuners; signal tuners; stereo tuners; radio receiving tuners; radio receiving tuners; amplitude modulation tuners; image intensifiers; frequency modulation apparatus; pulse code modulating processors are all devices used to transform, convert or deliver signals and to that extent they are included in the broad category of, or overlap, the opponent’s electrical adjustment apparatus which function is also to make modifications. Therefore, they are identical.

The contested target surveillance apparatus [optical]; target surveillance apparatus [electronic]; target surveillance apparatus [telescopic]; target surveillance apparatus [electric]; video cameras adapted for monitoring purposes; video cameras adapted for monitoring purposes; infrared cameras; infrared detection apparatus are monitoring and detection apparatuses that can be used for control and security purposes. To that extent, they are similar to the opponent’s electrical access control apparatus since they have a similar purpose and the method of use can coincide. Furthermore, they can coincide in producer, end user and distribution channels.

The contested apparatus for recording, broadcasting or transmission of sound or images; apparatus for receiving and processing of data, sound or images; data processing apparatus; dvd recorders; television recorders; sound recorders; digital video disc recorders; digital video recorders; film recorders; compact disc recorders (mentioned twice); loudspeakers; apparatus for recording and reproduction of television signals; recording apparatus; apparatus for transmitting and receiving of television programmes; apparatus for transmitting and receiving of radio waves; apparatus for transmission and receiving of programmes by satellite; broadcasting equipment; portable sound recording apparatus; apparatus for the transmission of images (mentioned twice); video reproducing apparatus; television apparatus are data processing apparatuses and the contested disks, magnetic; optical discs; CD-rom writers; USB flash drives; memory sticks that are hardware, are similar to the opponent’s design and development of computer hardware in Class 42 as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested telephone connecting cords are similar to the opponent’s telephone plugs and sockets since they are goods of a very similar nature that are manufactured by the same producers and that can be purchased at the same retail outlets. Finally, the relevant consumer also coincides.

The contested optical fibers (mentioned three times); ribbon cable; audio cable; telephone wires; coaxial cables; usb cables; measuring cables are all cables and wires. To that extent, they are similar to the opponent’s electrical cabling since they have a similar nature, they fulfil the same purpose of transmitting signals or current from one point to the other and the method of use is the same. Finally, producers and distribution channels are likely to coincide.

The contested power modules provide the physical containment for several power components. To that extent they are similar to the opponent’s electrical circuit components since they are complementary and both manufacturers and distribution channels can coincide. Finally, the end consumer will also be the same.

The contested power resources is similar to the opponent’s electric current control devices because they share similar purposes of providing and controlling power. Furthermore, manufacturers and distribution channels can also coincide.

The contested masts for aerials; masts for wireless aerials; metal poles [aerials]; masts for wireless aerials; aerial converters; aerial mounts are similar to the opponent’s parabolic antennas because manufacturers, points of sale and relevant public can coincide.

The contested holographic plates that are plates illuminated by a laser that give an object in three dimensions, the circular slide rules that are used for multiplication, division, exponents, roots, logarithms and trigonometry, the spectacles [optics] and the wall mountings adapted for television monitors are dissimilar to any of the opponent’s goods and services in Classes 8, 9 and 42 that are hand tools and hand operated implements, communications equipment, electrical apparatus, instruments and components; scientific and technological services, design and development of software, hardware and of electrical parts, installation, maintenance, repair and consultancy services. Indeed, they are goods and services of a different nature and with a different purpose. They do not have the same method of use and producers, distribution channels and relevant public will normally not coincide.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

3. The signs

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.

Bearing in mind the nature of the goods in question, the word ‘TECHNOLOGY’ in the contested sign is non distinctive since it will be understood as ‘the application of practical sciences to industry or commerce’ in certain territories where English is understood. As a consequence, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The letters ‘AX’ present in both signs have no meaning for the relevant public and are, therefore, distinctive.

The signs have no elements that could be considered clearly more dominant than other elements.

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 the letters ‘AX’, albeit reproduced in a different way. However, they differ in the word ‘TECHNOLOGY’ in the contested sign (which has no distinctive character), in the typeface used to represent the signs although rather standard and in the yellow and black colours of the contested sign that have no counterpart in the earlier mark which, instead, is depicted in grey. They also differ in their figurative elements which represent basic geometric shapes of a purely decorative nature.  

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AX’, present identically in both signs. Taking into consideration the lack of distinctiveness of the word ‘TECHNOLOGY’ in the contested sign, it is unlikely that consumers would pronounce it at all. Instead, they will intuitively use the element ‘AX’ to designate the sign. Therefore, the signs are aurally identical at least for a significant part of the public. In the unlikely event that part of the public would pronounce the element ‘TECHNOLOGY’ of the contested sign, the signs are aurally similar to an average degree for that part of the public.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘TECHNOLOGY’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, and thus the signs are not conceptually 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 has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (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).

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree, aurally identical for part of the public at least, and conceptually not similar. The only verbal element of the earlier mark which is exclusively constituted of the two letters ‘AX’ is entirely reproduced in the contested sign where it also plays the most distinctive role.

Therefore, the differences between the signs consisting in the word ‘TECHNOLOGY’ in the contested sign and in the graphic aspects, which in any case are neither elaborate or sophisticated, are not sufficient to overcome the degree of similarity between the signs.

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. It must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. Indeed, it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal (words and numbers) or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image.

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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference.

In the present case, apart from submitting case references, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade mark in United Kingdom. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Sandra IBAÑEZ

Pedro JURADO

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.