byTECNO | Decision 2654500
Date Published: Sep 28, 2017
OPPOSITION No B 2 654 500
Tekno GmbH, Robert-Bosch-Straße 26, 77656 Offenburg, Germany (opponent), represented by White & Case LLP, Valentinskamp 70 / Emporio, 20355 Hamburg, Germany (professional representative)
a g a i n s t
ByTecno SRL, Principe di Piemonte Nr. 199, 80026 Casoria (Napoli), Italy (applicant), represented by Teodoro Reppucci, Sottotenente Corrado Nr. 29, Avellino 83100, Italy (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 654 500 is partially upheld, namely for the following contested goods:
Class 9: Apparatus for recording, transmission or reproduction of images.
Class 16: Paper and cardboard; printed matter; bookbinding material, stationery and office requisites (except furniture); adhesives for stationery or household purposes, artists’ materials, paint brushes, instructional and teaching material, sheets, film and bags of plastic for packaging and wrapping.
2. European Union trade mark application No 14 400 981 is rejected for all the above goods. It may proceed for the remaining goods and services.
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 14 400 981, namely against all the goods in Classes 9 and 16. The opposition is based on German trade mark registration No 302 009 026 707. 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 goods
The goods on which the opposition is based are the following:
Class 2: Toners and ink for laser printers, printers and photocopiers, including filled toner and ink cartridges.
Class 9: Print-heads [parts of computer printers], photosensitive drums for processing images, print cassettes (empty toner cassettes).
Class 16: Paper, cardboard; printed matter; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; office requisites (except furniture); plastic material for packing.
The contested goods are, after a limitation made on 13/03/2017, the following:
Class 9: Scientific apparatus and instruments; Nautical; Surveying, Photographic; Cinematographic; Optical apparatus and instruments; Weighing; Measuring; Signalling; Checking (supervision) apparatus and instruments; Life-saving apparatus; Teaching; Apparatus and instruments for steering; Switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines; Data processing equipment, computers; Computer software; Fire-extinguishing apparatus, Loudspeakers, Amplifier, Antennas; USB flash drives; Flat irons; TV sets.
Class 16: Paper and cardboard; printed matter; bookbinding material, photographs, stationery and office requisites (except furniture); adhesives for stationery or household purposes, artists’ materials, paint brushes, instructional and teaching material, sheets, film and bags of plastic for packaging and wrapping; printer types, printing blocks.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 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.
Contested goods in Class 9
The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61).
Similarity will be found in only exceptional cases and requires that at least some of the main conditions for a finding of similarity, such as the same producer or public and/or complementarity, are fulfilled. Such exceptions are based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts. Depending on the product concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar.
In general, a variety of factors may be significant in each particular case. For instance, if the component is also sold independently, or if it is particularly important for the functioning of the machine, this will favour similarity.
Photosensitive drums for processing images are printer components, similar to toner cartridges. They capture the image to be printed on the page and also attract the toner to be placed on the page.
Apparatus for recording, transmission and reproduction of images includes printers.
The contested apparatus for recording, transmission or reproduction of images is therefore considered similar to the opponent’s photosensitive drums for processing images, since they are complementary and have the same relevant public, producers and distribution channels.
The contested scientific apparatus and instruments; nautical; surveying, photographic; cinematographic; optical apparatus and instruments; weighing; measuring; signalling; checking (supervision) apparatus and instruments; life-saving apparatus; teaching; apparatus and instruments for steering; switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines; data processing equipment, computers; computer software; fire-extinguishing apparatus, loudspeakers, amplifier, antennas; USB flash drives; flat irons; TV sets are dissimilar to all the opponent’s goods, which in Classes 2 and 9 are printer parts and fittings and in Class 16 are, inter alia, office supplies and packing materials. The goods belong to different areas of activity, are of different natures, and have different initial purposes and producers.
Contested goods in Class 16
Paper, cardboard, printed matter, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, office requisites (except furniture) are identically contained in both lists of goods.
The contested sheets, film and bags of plastic for packaging and wrapping are included in the broad category of the opponent’s plastic material for packing. Therefore, they are identical.
The contested bookbinding material overlaps with the opponent’s paper insofar as both categories include book repair paper for book binding. Therefore, they are considered identical.
The contested instructional and teaching material includes, as a broader category, or overlap with, the opponent’s printed matter. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Printers’ types are normally texts or graphics on paper produced by a printer and printing blocks are pieces of printed material used in printing techniques whereby the printer carves the design to be printed into a solid block, much like a stamp. Therefore, the contested printer types; printing blocks and all the opponent’s goods are considered dissimilar. The goods belong to different areas of activity, have different natures and initial purposes, and are not complementary.
The contested photographs are also considered dissimilar to all the opponent’s goods. Even though photos are printed on paper, this is not enough to consider them complementary. The goods belong to different areas of activity and have different natures, initial purposes, producers and distribution channels.
- 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 high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
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).
The earlier mark is a figurative sign, consisting of the slightly stylised word ‘TEKNO’ in blue title case letters, and, to the left of this word, a figurative element, also in blue, consisting of three stars with a semi-circle below them.
The contested mark is also a figurative mark, consisting of the word ‘by’ in grey lower case letters and the letters ‘TECNO’ in black, slightly italicised upper case letters. These words are surrounded by two elliptical lines, one on the upper right and one on the lower left side of the mark.
The element ‘TEKNO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The word ‘TECNO’ has no meaning, as such, for the relevant public and is, therefore, distinctive. However, this element will be understood, at least by part of the public, as relating to, for example, technology or techno music. At least for part of the public, the word is therefore allusive for goods having technological properties or making use of technological advances. Bearing in mind that the relevant goods are, inter alia, technological apparatus and instruments, paper goods and related products, and plastic materials for packaging, which might have technical characteristics (e.g. the pulp and papermaking industry is highly technological) or be developed using technology, this element is considered weak for all the relevant goods.
The first verbal element, ‘by’, of the contested mark has no meaning for the relevant public and is therefore distinctive. Part of the relevant public, however, will understand the meaning of this word, since it is a rather basic English word, and will therefore understand it as qualifying the word ‘TECNO’ in the mark, indicating the provenance of the mark and its products, and will perceive the mark, as a whole, as meaning ‘by technology’.
The figurative elements of the semi-circle and the stars in the earlier mark are also non-distinctive elements, as they are of a purely decorative nature.
The two elliptical lines, or arcs, in the contested sign are non-distinctive figurative elements of a purely decorative nature.
The element ‘TEKNO’ in the earlier mark is the dominant element as it is the most eye-catching.
The element ‘TECNO’ in the contested sign is the dominant element as it is the most eye-catching.
When signs consist of both verbal and figurative elements, in principle, 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).
Visually, the signs coincide in the letters ‘TE*NO’. However, they differ in the first verbal element ‘by’ in the contested mark, in the letters ‘K’ and ‘C’ in the middle of the word elements ‘TEKNO’ and ‘TECNO’ respectively, and in the signs’ graphic depictions. The earlier mark is distinctive for the relevant goods, while the element ‘TECNO’ in the contested mark is weak for at least part of the public, as explained above.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TEKNO’ (earlier mark) and ‘TECNO’ (contested mark). This is because the letter ‘K’ and the letter ‘C’ are pronounced identically in German. The pronunciation differs in the sound of the letters ‛by’ of the contested mark, which has no counterpart in the earlier sign. The earlier mark is distinctive, while the element ‘TECNO’ in the contested mark is weak for at least part of the public, as explained above.
Therefore, the signs are aurally highly similar.
Conceptually, the meaning of the contested sign has been discussed above. Although at least a part of the public in the relevant territory will perceive the meanings of the elements ‘by’ and ‘TECNO’ in 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, the signs are not conceptually similar.
For the part of the public that will not perceive a meaning in either of the signs, a conceptual comparison is not possible and 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.
- 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.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods found to be identical or similar target the public at large and business customers with specific professional knowledge or expertise. The degree of attention is deemed to be average to high, depending on the goods in question.
The signs are visually similar to an average degree and aurally highly similar, to the extent that they have in common the sequence of letters ‘TE*NO’ plus the visually different but aurally identical letters ‘K’ and ‘C’. However, they differ in the first verbal element ‘by’ of the contested sign, the stylisation of the marks, the non-distinctive figurative elements and the conceptual meaning of the contested sign, none of which has a counterpart in the earlier sign.
It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be 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 Meyer, EU:C:1999:323).
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).
Based on the principle of imperfect recollection, as well as the principle of interdependence between the relevant factors, that is, that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, it is considered that the established similarities between the signs are sufficient to cause the public to believe that the conflicting identical or similar goods come from the same undertaking or economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.
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.
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
Irina SOTIROVA | Lena FRANKENBERG GLANTZ | Plamen IVANOV |
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.