Cyber Drive | Decision 2720251
Date Published: Sep 24, 2017
OPPOSITION No B 2 720 251
Wittenstein SE, Walter-Wittenstein-Str. 1, 97999 Igersheim, Germany (opponent), represented by Zimmermann & Partner Patentanwälte mbB, Josephspitalstr. 15 80331 München, Germany (professional representative)
a g a i n s t
Rozum Robotics Inc., 723 S Casino Center Blvd, 2nd fl, Las Vegas, Nevada 89101-6716, United States of America (applicant), represented by DR. Emil Benatov & Partners, Asen Peykov Str. No.6, 1113 Sofia, Bulgaria (professional representative).
On 18/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 251 is partially upheld, namely for the following contested goods and services:
Class 7: Electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; electric motors for toys; electric motors for use in cameras, namely, for use in positioning lenses in cameras; electric motors, and their parts, not for land vehicles; electric motors, not for land vehicles; electric starter motors; electricity generators that may also be used as electric motors for vehicles; gear boxes other than for land vehicles; gear motors not for land vehicles; gears for machines; gears, other than for land vehicles; motor starters; motors for airplanes; motors for boats; motors for medical machines and apparatus; motors for model vehicles and/or slot cars; motors other than for land vehicles; motors, namely, alternating current motors not for land vehicles; motors, namely, synchronous motors not for land vehicles; motors, other than for land vehicles; airplane motors; alternating current servo motors; asynchronous motors not for land vehicles; boat motors; brushes being parts of motors, generators and dynamos; compressors as parts of machines, motors and engines; drive system having two or more synchronous motors coupled through clutches to drive a common load; drives for motors; driving motors other than for land vehicles; electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; engines and motors for the generation of electricity; engines and motors for the generation of electricity; permanent magnet motors; power transmissions and gearing for machines; servo motors; servodrives for motors; speed governors for machines, engines and motors; starter motors; starters for motors; transmission gears for machines.
Class 9: Electronic controllers for producing control signals for electric actuators and motor shaft retention brakes; electric actuators; electric valve actuators; electrical controllers.
Class 42: Software development consulting in the field of controlling an electric motor; computer software development, computer programming and maintenance of computer software for controlling an electric motor; design and development of computer software for controlling an electric motor.
2. European Union trade mark application No 15 213 028 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 all the goods and services of European Union trade mark application No 15 213 028 for the figurative sign. The opposition is based on European Union trade mark registration No 379 727 for the word mark ‘cyber’. 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 and services
The goods on which the opposition is based are the following:
Class 7: Transmissions for machines; electric motors.
Class 9: Control and adjustment installations for the aforesaid goods.
Class 12: Motors, electric, for land vehicles.
The contested goods and services are the following:
Class 7: Electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; electric motors for toys; electric motors for use in cameras, namely, for use in positioning lenses in cameras; electric motors, and their parts, not for land vehicles; electric motors, not for land vehicles; electric starter motors; electricity generators that may also be used as electric motors for vehicles; gear boxes other than for land vehicles; gear motors not for land vehicles; gears for machines; gears, other than for land vehicles; motor starters; motors for airplanes; motors for boats; motors for medical machines and apparatus; motors for model vehicles and/or slot cars; motors other than for land vehicles; motors, namely, alternating current motors not for land vehicles; motors, namely, synchronous motors not for land vehicles; motors, other than for land vehicles; airplane motors; alternating current servo motors; antipollution devices for motors and engines; asynchronous motors not for land vehicles; boat motors; brushes being parts of motors, generators and dynamos; catalytic converters for motors and engines; compressors as parts of machines, motors and engines; drive system having two or more synchronous motors coupled through clutches to drive a common load; drives for motors; driving motors other than for land vehicles; electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; engines and motors for the generation of electricity; engines and motors for the generation of electricity; filters for motors and engines; parts of wind turbine motors, namely, compact drive systems; permanent magnet motors; power transmissions and gearing for machines; servo motors; servodrives for motors; speed governors for machines, engines and motors; starter motors; starters for motors; transmission gears for machines.
Class 9: Electronic controllers for producing control signals for electric actuators and motor shaft retention brakes; electric actuators; electric valve actuators; electrical controllers.
Class 42: Software development consulting in the field of controlling an electric motor; computer software development, computer programming and maintenance of computer software for controlling an electric motor; design and development of computer software for controlling an electric motor; development and implementation of software, hardware and technology solutions for the purpose of productization of electronic components and electronic systems; development and implementation of software, hardware and technology solutions for the purpose of testing of electronic components and electronic systems; testing of computer software for controlling an electric motor.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’ used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 7
The contested electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; electric motors for toys; electric motors for use in cameras, namely, for use in positioning lenses in cameras; electric motors; electric motors, not for land vehicles; electric starter motors; electricity generators that may also be used as electric motors for vehicles; motors for airplanes; motors for boats; motors for medical machines and apparatus; motors for model vehicles and/or slot cars; motors other than for land vehicles; motors, namely, alternating current motors not for land vehicles; motors, namely, synchronous motors not for land vehicles; motors, other than for land vehicles; airplane motors; alternating current servo motors; asynchronous motors not for land vehicles; boat motors; driving motors other than for land vehicles; electric motors for machines; electric motors for machines with a digital servo drive controller; electric motors for power tools; engines and motors for the generation of electricity; engines and motors for the generation of electricity; permanent magnet motors; servo motors; starter motors are included in the broad category of, or overlap with, the opponent’s electric motors. Therefore, they are identical.
The contested gear boxes other than for land vehicles; gear motors not for land vehicles; gears for machines; gears, other than for land vehicles; power transmissions and gearing for machines; transmission gears for machines are included in the broad category of the opponent’s transmissions for machines. Therefore, they are identical.
The contested their parts [electric motors], not for land vehicles; drive system having two or more synchronous motors coupled through clutches to drive a common load; drives for motors; servodrives for motors are similar to the opponent’s electric motors as they are can coincide in producer, in end user and are distributed via the same channels.
The contested motor starters; starters for motors are similar to the opponent’s electric motors, as they are complementary, can coincide in producer and end user.
The contested brushes being parts of motors, generators and dynamos; compressors as parts of machines, motors and engines; speed governors for machines, engines and motors are similar to the opponent’s electric motors as they can coincide in producer and end user.
The above reasoning does not apply to the contested catalytic converters for motors and engines; antipollution devices for motors and engines; filters for motors and engines; parts of wind turbine motors, namely, compact drive systems which are dissimilar to all the opponent’s goods in Classes 7, 9 and 12, since these contested goods are part of internal combustion engines fuelled by either petrol (gasoline) or diesel or gas or a device that converts motive power into electrical power for use in an external circuit. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable.
Contested goods in Class 9
Before starting the comparison of the contested goods in Class 9, the Opposition Division finds it appropriate to clarify the expression ‘for the aforesaid goods’ in the opponent’s list of goods in Class 9. In the opponent’s application for the earlier mark and subsequent communication with the Office concerning the classification of the goods sought to protect, the expression ‘for the aforesaid goods’ referred to the opponent’s goods now listed in Classes 7 and 12. In view of this, the opponent’s goods in Class 9 must be interpreted as covering the following goods: Control and adjustment installations for transmissions for machines, electric motors and motors, electric, for land vehicles.
The contested electronic controllers for producing control signals for electric actuators and motor shaft retention brakes; electric actuators; electric valve actuators; electrical controllers are similar to the opponent’s control and adjustment installations for the aforesaid goods (electric motors and motors, electric, for land vehicles). These goods may be produced by the same undertakings, they can be sold through the same distribution channels and target the same end users.
Contested services in Class 42
Although the contested software development consulting in the field of controlling an electric motor; computer software development, computer programming and maintenance of computer software for controlling an electric motor; design and development of computer software for controlling an electric motor have a different nature to the opponent’s electric motors in Class 7, such services are very closely related to the goods which are the subject of these advisory services. Actually, the provision of the contested services is highly important for the manufacture of the earlier goods, given that the services are required in order to determine precisely the type of bearings to be manufactured. The design process of the specific goods being so closely related to the manufacture of the goods as such means that the relevant public, i.e. specialists in the machine/vehicle industry, may perceive the goods and services having a common commercial origin. Therefore, these contested goods are similar to the opponent’s electric motors in Class 7.
The contested development and implementation of software, hardware and technology solutions for the purpose of productization of electronic components and electronic systems; development and implementation of software, hardware and technology solutions for the purpose of testing of electronic components and electronic systems do not have a close connection with the opponent’s goods in Classes 7, 9 and 12. They have different natures and purposes and are not provided through the same channels. Moreover, they are not in competition with each other and they are not interchangeable. Therefore, they are dissimilar.
- 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 found to be identical or similar consist of specialised goods and services directed at professionals or business customers with specific professional knowledge or expertise. The public’s degree of attention may vary from average to high, depending on the price, sophistication and specialised nature of the purchased goods and services.
- The signs
cyber | |
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 earlier mark is the word mark ‘cyber’. It is important to note that, in the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or in a combination thereof.
The word ‘cyber’ is a prefix related to computers and is a commonly used Internet-related prefix used in expressions such as ‘cyberspace’. This word is identical or very close to the equivalent prefix in all the languages of the European Union, such as ‘cyber/ciber/kyber/kiber’. Therefore, it is likely that the relevant public throughout the European Union will perceive it as referring to the culture of computers, information technology or virtual reality. However, it has no particular meaning in relation to the relevant goods; it is therefore distinctive to an average degree.
The contested sign is a figurative mark consisting of the words ‘CYBER’ and ‘DRIVE’ in bold, placed over two lines preceded by the letters ‘CD’ that will be perceived as the initial letters of the two words. The letter ‘D’ is stylised in that it features a hyphen in the middle of the curved line of the ‘D’.
The above considerations regarding the perception and the distinctiveness of the word ‘CYBER’ in the earlier mark apply equally to this element of the contested sign.
The element ‘DRIVE’ is an English word with several different meanings, such as ‘to operate a car or other vehicle and control its movement and direction’ or ‘the power supplied to a machine to make it work’. However, although part of the non-English-speaking public in the relevant territory may also understand the meaning of this word, for part of the non-English-speaking public ‘DRIVE’ will be perceived as a fanciful word without any meaning and, therefore, as distinctive. Since the letters ‘CD’ will be perceived as the abbreviation of the subsequent words ‘CYBER DRIVE’, this element of the contested sign will be perceived as secondary to these words.
However, the contested sign has no elements that could be considered clearly more visually dominant than other elements.
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.
In view of the above, the Opposition Division will first focus the comparison of the signs on the part of the non-English-speaking public that will perceive ‘DRIVE’ as a fanciful word.
Visually, the signs coincide in the word ‘CYBER’. However, they differ in the additional verbal element ‘DRIVE’ of the contested sign and in the additional letters ‘CD’ of the contested sign to which the public will attribute little importance, as it consists of the initial letters of the other two verbal elements of the sign, and in the stylisation. Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CYBER’, present identically in both signs. The pronunciation differs in the sound of the letters ‛DRIVE’ and, if at all pronounced, in the sound of the letters ‛CD’ of the contested sign, which have no counterpart in the earlier mark. However, regardless of whether or not ‛CD’ is pronounced in the contested sign, since they are the initial letters of the other two verbal elements of the sign, the signs are aurally similar to an average degree.
Conceptually, although the contested sign as a whole does not have any meaning for part of the public under analysis in the relevant territory, the element ‘CYBER’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to a high degree.
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
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 good/services covered are from the same or economically linked undertakings.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the goods and services at issue are partly identical, partly similar and partly dissimilar. They target the professional public and the degree of attention may vary from average to high. The signs are visually and aurally similar to an average degree and conceptually similar to a high degree.
The verbal element of which the earlier mark consists plays an independent distinctive role in the contested sign. Therefore, the differences between the signs, as explained above, are not sufficient to offset the commonalities.
Indeed, it is highly conceivable that the relevant non-English-speaking consumer, even that with a high level of attention, will perceive the contested mark as a sub-brand or 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). 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.
Considering all the above and taking into account 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), there is a likelihood of confusion.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 379 727. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar to the goods of the earlier trade mark.
The rest of the contested goods and services 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 and services 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
Sam GYLLING | Alexandra APOSTOLAKIS | Adriana VAN ROODEN |
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.