ELSA SOLUTIONS | Decision 1979874 - Elisa Oyj v. ELSA SOLUTIONS S.R.L.
Date Published: Oct 1, 2017
OPPOSITION No B 1 979 874
Elisa Oyj, Ratavartijankatu 5, 00520 Helsinki, Finland (opponent), represented by Roschier Brands, Attorneys Ltd., Keskuskatu 7 A, 00100 Helsinki, Finland (professional representative)
a g a i n s t
Elsa Solutions S.R.L., Via Einaudi, 9, Imola (BO), Italy (applicant), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)
On 02/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 979 874 is upheld for all the contested goods and services.
2. European Union trade mark application No 10 302 529 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 302 529. The opposition was initially based on four earlier rights, two of which were withdrawn as a basis of the opposition. The opposition then proceeded on the following earlier rights:
- Finnish trade mark application No T200901895 ELISA (word mark). This application was later registered under No 254 763.
- European Union trade mark registration No 9 081 092
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 and services on which the opposition is based are, inter alia, the following:
- Goods and services of EUTM No 9 081 92
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer software.
- Goods and services of FI TM No 254 763:
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
The contested goods and services are the following:
Class 7: Motors and engines (except for land vehicles); machine coupling and transmission components except for land vehicles.
Class 9: Batteries and related electronic systems for management and balancing; apparatus and instruments for regulating and/or controlling electricity; electronic actuation devices and control and monitoring equipment for electric motors
Class 37: Installation, maintenance and repair of electric motors and electronic actuation devices.
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 motors and engines (except for land vehicles); machine coupling and transmission components except for land vehicles are identically included in the list of goods in Class 7 of the opponent.
Contested goods in Class 9
The contested apparatus and instruments for regulating and/or controlling electricity are identically covered by the opponent´s goods in Class 9.
The contested electronic actuation devices and control and monitoring equipment for electric motors consist of apparatus and instruments used to activate and control electricity. Monitoring is inherent to controlling. These contested goods fall in the opponent´s category of apparatus and instruments for switching, regulating or controlling electricity, and are therefore identical.
The contested batteries and related electronic systems for management and balancing consist of devices that accumulate and provide the power for electrically-powered items. These contested goods fall in the opponent´s category of apparatus and instruments for accumulating electricity, and are therefore identical.
Contested services in Class 37
The contested installation, maintenance and repair of electric motors and electronic actuation devices are frequently offered by the manufacturer of the goods being installed, maintained or repaired, in this case electric motors and electronic actuation devices. Those goods in relation to which the services are offered are identical to some of the opponent´s goods (i.e. electric motors falls in the category of motors of the opponent, and electronic actuation devices have been considered to fall in the opponent´s category of apparatus and instruments for switching, regulating or controlling electricity). In this case, the contested services are offered to the same consumers to which the opponent´s electric motors; apparatus and instruments for switching, regulating or controlling electricity are directed. It is common that the installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services). Therefore, they are considered to be similar to an average degree.
- 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 consist of specialised goods, directed at professionals or business customers, with specific professional knowledge or expertise. These consumers are likely to pay a higher than average degree of attention during the purchase of the goods. However, the contested services in Class 37 are directed at the public at large, and the attention paid by them is deemed to be at least average.
- The signs
FI TM No 254 763 ELISA EUTM No 9 081 092 | |
Earlier trade marks | Contested sign |
The relevant territories are Finland (for the earlier national trade mark) and the European Union for the earlier European Union trade mark.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
For the purpose of procedural economy, the Opposition Division will focus the comparison of signs on the Finnish part of the relevant public. This constitutes the entire relevant public of the earlier national trade mark, and part of the relevant public of the earlier European Union trade mark.
The word ‘SOLUTIONS’ is the English and French term used to refer to ways to solve a problem. The terms ‘ELISA’ and ‘ELSA’ in the marks are female names.
In Finland, consumers are deemed to have enough English knowledge so as to understand basic English terms, such as ‘SOLUTIONS’. The words ‘ELSA’ and ‘ELISA’ are also understood by this part of the public as female names.
The words ‘ELISA’ and ‘ELSA’ in the marks have no meaning in relation to the goods and services involved, and are therefore distinctive.
The term ‘SOLUTIONS’ is non-distinctive for the kind of goods and services compared, since it is descriptive of their characteristics, for instance their purpose. It can be understood as indicating that the goods or services are purchased in order to help solving a technical problem.
The figurative elements in the contested mark (i.e. some vertical lines on both sides of the mark) will be perceived by consumers as merely decorative, and not as elements indicating the commercial origin of the goods. They are non-distinctive.
In the contested sign, the word ‘ELSA’ is the dominant part of the mark, due to its bigger size and position. The term ‘SOLUTIONS’ is of smaller size and positioned underlining the word ‘ELSA’, and the vertical lines are of lighter colour and positioned on the sides.
‘ELSA’ is the most distinctive element in the sign, as the rest of the elements referred to before are non-distinctive.
Visually, the signs coincide in the letters ‘EL’ and ‘SA’ of the terms ‘ELSA’ and ‘ELISA’. The coinciding letters form the entire word ‘ELSA’ of the contested sign. These words only differ in the letter ‘I’ of ‘ELISA’.
The signs differ in the non-distinctive elements ‘SOLUTIONS’ and vertical lines of the contested mark, and in colour and typeface. This non-distinctive element will have little impact on the consumers´ perception of the sign.
Taking this into account, it is considered that the contested sign is visually similar to an average degree to both earlier marks.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘el’ and ‘sa’ in the words ‘ELISA’ and ‘ELSA’. The marks differ in the sound of the letter ‘i’ in ‘elisa’ and in the pronunciation of ‘solutions’ of the contested mark. However, since ‘solutions’ is non-distinctive for the goods and services referred to before, it is likely that consumers will omit this term when referring to the contested mark aurally. The reason for this is that this non-distinctive element is not useful for consumers to identify the commercial origin of the goods. Accordingly, it is likely that at least part of the public refers to the contested mark only as ‘ELSA’. Even if ‘SOLUTIONS’ is pronounced, its impact is greatly reduced due to this being non-distinctive.
According to the above, the signs are aurally similar to, at least, an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
The mere fact that two names can be grouped under a common generic term of ‘names’ does not constitute conceptual similarity. However, in this case ELSA and ELISA have a common origin. ‘Elisa’ is the common abbreviation used for the name ‘Elisabeth’, and ‘Elsa’ derives from that same name, which leads to a common concept between the marks.
The word ‘SOLUTIONS’ has the concept referred to above, and constitutes a conceptual difference between the marks.
According to the above, the signs are conceptually similar to an average degree.
- Distinctiveness of the earlier marks
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.
- Global assessment, other arguments and conclusion
The marks in conflict have been considered to be visually and conceptually similar to an average degree, and aurally similar to at least an average degree.
The coincidences between the marks are found in the terms ‘ELISA’ and ‘ELSA’. In the earlier marks, ‘ELISA’ is the only element forming the marks. In the contested sign, ‘ELSA’ constitutes both the dominant and the only distinctive element of the sign.
As explained above, the attention paid by consumers is deemed to be at least average (see section b) above).
The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, 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. Based on the principle of imperfect recollection, the consumers might believe that the conflicting goods and services come from the same or economically-linked undertakings.
Also having regard to the principle of interdependence, it is considered that the coincidences between the signs are enough to outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting goods and services come from the same or economically-linked undertakings.
Even if part of the public might pay special attention during the purchase of the goods and services involved, the fact that the signs share significant similarities, together with the fact that similar signs cover identical and similar goods and services, might lead consumers to think that those goods and services come from the same or economically-linked undertakings. Accordingly, even if the level of attention was higher than average, this will not be enough as to avoid such confusion and/or association under the present circumstances.
Considering all the above, there is a likelihood of confusion on the Finnish 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.
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Vanessa PAGE | María del Carmen SUCH SANCHEZ | Ric WASLEY |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.