HEARTBEAT | Decision 2681636
Date Published: Sep 25, 2017
OPPOSITION No B 2 681 636
Balluff GmbH, Schurwaldstr. 9, 73765 Neuhausen, Germany (opponent), represented by Jakelski & Althoff Patentanwälte PartG mbB, Mollenbachstraße 37, 71229 Leonberg, Germany (professional representative)
a g a i n s t
Littelfuse Inc., 8755 West Higgins Road, Suite 500, Chicago, Illinois 60631, United States of America (holder), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 681 636 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 255 295 (word mark: HEARTBEAT). The opposition is based on European Union trade mark registration No 9 724 841 (figurative mark:). 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 7: Electrical power supply apparatus being generators.
Class 9: Electric power supply units, switch mode power supply apparatus.
The contested goods are the following:
Class 9: Visual indicator, sold as an integral component of an electrical relay, that indicates the status of sensors connected to the relay, indicates whether the sensors are functioning properly, and provides information obtained from the sensors.
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 visual indicator, sold as an integral component of an electrical relay, that indicates the status of sensors connected to the relay, indicates whether the sensors are functioning properly, and provides information obtained from the sensors is dissimilar to the opponent’s electric power supply units in Class 9.
These goods have different natures and purposes, as the contested goods are essentially lamps or various kinds of screens that, as parts of electric relays, provide visual information obtained by the relay sensors, while power supply units are compact, stand-alone or built-in devices converting one form of electrical power to another.
They have different methods of use, as power supply units can be added to a system where their transformative qualities are required, typically without extensive engineering work, while visual indicators, as parts of relays, will be built into these relays only by specialised engineers and other qualified professionals able to assemble such devices. These relays can then be added more easily to a system to function as a switch. Consequently, their relevant publics are also different.
Furthermore, these goods are not complementary or in competition, and their usual origins and distribution channels are not the same. Power supply units and electric relays can be sold by the same companies, as the opponent argued. However, parts of these goods, such as contested visual indicators, are highly specialised, and it is not common knowledge nor can it be concluded from the evidence submitted that they are normally produced and sold by the same companies.
As the opponent’s switch mode power supply apparatus is a type of power supply unit, the findings above are equally valid and, consequently, switch mode power supply apparatus is dissimilar to the contested visual indicator, sold as an integral component of an electrical relay, that indicates the status of sensors connected to the relay, indicates whether the sensors are functioning properly, and provides information obtained from the sensors.
The opponent’s electrical power supply apparatus being generators in Class 7 are devices that convert motive (mechanical) power to electrical power that is typically supplied to various machines, motors and engines. As such, these goods differ even more from the contested visual indicator, sold as an integral component of an electrical relay, that indicates the status of sensors connected to the relay, indicates whether the sensors are functioning properly, and provides information obtained from the sensors than the opponent’s power supply units compared above. Consequently, these goods are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Denitza STOYANOVA-VALCHANOVA | Martin EBERL | Claudia MARTINI |
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.