LEVIT | Decision 2773185

Date Published: Sep 25, 2017

OPPOSITION No B 2 773 185

Carl Freudenberg KG, Höhnerweg 2-4, 69469 Weinheim, Germany (opponent), represented by Monika Sigrid Ripper, Carl Freudenberg KG, Höhnerweg 2-4, 69469 Weinheim, Germany (employee representative)

a g a i n s t

ABB s.r.o., Vyskočilova 1561/4a, 14000 Praha 4, Czech Republic (applicant), represented by Kamil Kolátor, Dobiášova, 1264/29, 46006 Liberec, Czech Republic (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 185 is partially upheld, namely for the following contested goods:

Class 9:         Contacts, electric, Electrical sockets, Electrical switchgear, Electrical pin plugs, Relays, electric, Electrical contact devices, Electrical controllers and Plug boards, Electrical fuses, Connectors, Circuit closers, Electric indicating apparatus, Switches, electric, Wire terminals for wiring electrical contacts (of plastic), branch terminals, Time switches, automatic, Electric bells, Electricity measuring instruments.

Class 17:         Insulating materials of plastic and plastics in extruded form for use in manufacture, insulating frames of plastic, insulating covers of plastic, insulating cases of plastic.

2.        European Union trade mark application No 15 328 561 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 all the goods of European Union trade mark application No 15 328 561. The opposition is based on European Union trade mark registration No 13 365 416. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 7: Machines for processing metal, wood and plastic, machines for the chemical industry, agriculture, mining and the beverages industry, textile machines, construction machines, packaging 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; Hydraulic accumulators for storing and providing pressure; Hydraulic accumulators, in particular diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and/or cab suspension; Belts for machines; Rollers for printing machines; pump and valve diaphragms; Anti-friction bearing for machines; Ball bearings, roller bearings and plain bearings as machine parts; Self-lubricating bearings; Bearings for transmission shafts; Journal boxes [parts of machines]; Gaskets being parts of machines or engines; Mechanical seals being parts of machines or engines, in particular being crankshaft seals; Mechanical seals being transmission seals, turbocharger seals or for sealing electric motors; Mechanical seals for hydrodynamic or pneumatic applications being parts of machines, engines or gearboxes; Rotary shaft seals being parts of machines or engines; Rod wipers and piston guide rings used in hydraulic and pneumatic cylinders; Guide and oil-removing elements for hydraulic and pneumo-cylinders; Intake manifolds for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely shaft couplings, Transmission shafts, Journals; Piston rings, guide rings, valves and parts therefor, bearings and guides, shaped parts and moulded parts for mechanical and apparatus engineering, in particular of plastic or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Machine belts; Bellows; Blow guns, In particular folding bellows of rubber, folding bellows of TPE; Elastic bearings for machines or engines as noise and vibration absorption parts; Pneumatic springs and spring legs with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs for damping noise, vibration and shock insulation as parts of machines; Multilayer springs for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibro-insulation; Gas-distributing and valve-actuating machinery; Parts for motors and engines of land vehicles, namely bearing pins; Finished products of vulcanised perfluoro-elastomers in the form of membranes for use in hydraulics, pneumatics and mechanical engineering.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Plug-in connectors; Plug-in connectors, In particular electrical connectors; Sheaths for electric cables; Fuel cells and parts thereof; Integrated circuits; Junction sleeves for electric cables; Electric outlet covers; Sensor housings; Connector housings; Electronics housings, magnet armatures; Magnetic encoders.

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Driving gear elements; Driving belts; Clamping rollers; Parts for land vehicles, Namely shaft couplings, Drive shafts, Driving belts; Parts of land, air and sea vehicles, namely shock absorbers, shock-absorbing springs, suspension springs, air springs; Body shells made from polytetrafluoroethylene.

Class 17: Rubber, Gutta-percha, Asbestos, Mica; Packing, stopping and insulating materials; Sealing and packing cord, Packing and stopping materials, Seals for sensors; Gasket support rings; Artificial resins, in particular fluorocarbon resins or elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, fittings, expansion joints, films for sealing purposes, filling material for reaction columns, balls, filter material in the form of fibres or porous plates; Guide tubes, insulating tubes and insulating parts for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes, in particular for mechanical seals, corrugated tubes for vacuum operation and being spring washers; All of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Shaft seals of polytetrafluoroethylene, gum or highly elastic and thermoplastic plastics, including combined with metal or other plastics, in particular lip seals for moveable parts of machines; Radial shaft sealing rings, Shaft sealing rings, Cassette seals; Combination seals; Rotary seals; Packings for static seals; Valve stem seals; Hydraulic brake seals; O-ring seals; Support seals; Composite seals; fibrous gaskets; Butterfly valve seals; Sealing plugs being metal-elastomer composite parts (predominantly of elastomers); Seals for shock-absorbers and gas springs; Valve spindle seals; Seals for hydraulic braking systems; Seals for hydraulic and pneumo-cylinders; Sealing rings; O-rings; Flat seals; Profile seals; Axle seals; Sealing plates; Insulating foils; Sealing frames; Hydraulic and pneumatic seals, in particular rod seals; Piston seals; Rod wiper seals; Buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers; Screw seal rings, in particular USIT rings; Plug-in pieces; Rotary pressure seals; Diaphragms, in particular accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Partitions, being diaphragms, in particular being diaphragms of elastomers; Moulded parts of polytetrafluoroethylene; Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Moulded parts for machine elements made of liquid silicon; Liquid silicone seals; Moulded parts of PTFE; Grooved rings, in particular including grooved rings of PTFE; Static and dynamic seals; Static cylinder cover seals; V-packings as multiple lip (chevron) packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees; Stuffing box packings (seals); Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets, all the foregoing for sealing oil, grease or air in hydraulic and pneumatic applications; Rubberised chain wheels; Packaging materials for moulded seals for sealing and insulation purposes; Plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Slide ring packings, mechanical seals and Gasket support rings; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Guide elements for hydraulic and pneumatic applications, in particular guide rings and bearing rings for protecting cylinder rods and pistons; Damping elements, in particular for pneumatic applications; Shaped semi-finished parts and finished products of vulcanised perfluoro-elastomers, namely in the form of seals and o-rings, for use in hydraulics, pneumatics and mechanical engineering.

The contested goods are the following:

Class 9: Contacts, electric, Electrical sockets, Electrical switchgear, Electrical pin plugs, Relays, electric, Electrical contact devices, Electrical controllers and Plug boards, Electrical fuses, Connectors, Circuit closers, Electric indicating apparatus, Switches, electric, Wire terminals for wiring electrical contacts (of plastic), branch terminals, Time switches, automatic, Electric bells, Electricity measuring instruments.

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 17: Insulating materials of plastic and plastics in extruded form for use in manufacture, insulating frames of plastic, insulating covers of plastic, insulating cases of plastic.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, 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).

However, the term ‘namely’, also used in the opponent’s list of goods 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.

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 contacts, electric, electrical sockets, electrical switchgear, electrical pin plugs, relays, electric, electrical contact devices, electrical controllers and plugboards, electrical fuses, connectors, circuit closers, electric indicating apparatus, switches, electric, wire terminals for wiring electrical contacts (of plastic), branch terminals, time switches, automatic are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, these goods are identical.

Moreover, the contested electric bells; electricity measuring instruments are similar to a low degree to the opponent’s apparatus and instruments for conducting electricity, as they can coincide in their producer, end users and distribution channels.

Contested goods in Class 11

The contested apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes do not have anything in common with the opponent’s goods.

These contested goods are devices for removing moisture by forced draught, heating or centrifuging (apparatus for heating), converting hot water into steam at high pressure for heating or power purposes (steam generating), heating by boiling, baking, roasting, broiling, etc. (cooking), and controlling humidity, ventilation and air temperature (refrigerating, drying, ventilating), as well as water distribution installations and items used for personal sanitation, such as bathtubs, showers, sinks and water closets (water supply and sanitary purposes).

By contrast, the opponent’s goods mainly consist of machines and machine tools (Class 7), electrical apparatus, items and instruments (Class 9), apparatus for locomotion, vehicles and parts thereof (Class 12), and electrical, thermal and acoustic insulating materials and plastics for use in manufacture (Class 17). Therefore, these two sets of goods differ in their natures and purposes. Moreover, they do not target the same public. Finally, they are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 17

The contested plastics in extruded form for use in manufacture are identically covered by the earlier mark or include the opponent’s plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers. Since the Opposition Division cannot dissect ex officio the broad category of contested goods, they are, in both cases, considered identical to the opponent’s goods.

In spite of a slight difference in wording, the contested insulating materials of plastic are identically covered by the earlier mark (including synonyms) or are included in the opponent’s insulating materials; all of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers. In both cases, these goods are considered identical.

Moreover, considering that the opponent’s broad category of insulating materials […] being made of or predominantly of plastic in particular of fluorocarbon resin or elastomers may include various materials and articles used as a barrier to prevent the loss or intrusion of air, water, gas, fire, etc., the contested insulating frames of plastic, insulating covers of plastic, insulating cases of plastic are included in that broad category covered by the earlier mark. Therefore, these goods are identical.

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 and similar to a low degree are directed at the public at large as well as at professionals in different fields.

The degree of attention will vary from average to high depending on the exact nature, price and sophistication of those goods (15/07/2015, T-324/12, ECOSE TECHNOLOGY, EU:T:2015:501, § 21-24; 05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

3. The signs

LEVITEX
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 a single-word mark, ‘LEVITEX’. The contested sign is a figurative mark made up of the single word ‘LEVIT’ in standard black upper case letters, in which the right-hand stem of the letter ‘V’ is slightly longer than the left-hand stem.

Neither of these words has any meaning in the relevant territory. Therefore, both are distinctive.

Visually, the signs coincide in the sequence of letters ‘LEVIT**’, which constitutes the entire verbal element of the contested sign and the beginning of the earlier mark. The marks differ in the final two letters, ‘EX’, of the earlier mark, which are not reproduced in the contested sign, as well as in the graphical depiction of the contested sign.

Considering, on the one hand, that the graphical depiction of the contested sign is not uncommon or striking but is, rather, standard and, on the other hand, that the average consumer generally pays more attention to the beginning of a mark than to its ending, it can be concluded that 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 ‛LEVIT’, present identically in both signs. The pronunciation differs in the sound of the final letters ‛EX’ of the earlier mark, which have no counterparts in the contested sign.

As the coincidence in the letters ‛LEVIT’ lies at the beginning of both signs, they are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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 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

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 marks in question are both made up of a single word and the earlier mark’s beginning, ‘LEVIT’ constitutes the whole contested sign. This coincidence leads to an average degree of similarity between the signs from the visual and aural points of view and, as neither of the signs has a meaning, the conceptual aspect does not influence the comparison of the signs.

Moreover, the goods in question are partly identical and partly similar to a low degree.

In addition, although the degree of attention of the consumers will vary from average to high, account should be taken of the fact that 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).

It is therefore likely that, through their imperfect recollection of the earlier mark ‘LEVITEX’ and in the context of identical goods, even consumers displaying a high degree of attention may confuse the contested sign with the earlier mark on account of the coinciding string of letters ‘LEVIT’, which constitutes the whole contested sign.

The same holds true for the contested goods that are similar to a low degree to the opponent’s goods. Bearing in mind the interdependence principle between the abovementioned factors, it has to be considered that the degree of similarity between the signs is sufficient to offset the low degree of similarity between these goods. In particular, the facts that the contested sign is made up of the first five letters of the earlier mark, ‘LEVITEX’, and that the signs differ in only the final two letters, ‘EX’, of the earlier mark, which have no counterparts in the contested sign, may lead to a likelihood of confusion among consumers. As explained above, more attention is generally paid to the beginning of a mark than to its ending and consumers have to rely on their imperfect recollection of marks. Therefore, they may overlook the difference between the signs lying in the ending ‘EX’.

Considering all the above, the Opposition Division finds that 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 European Union trade mark registration.

It follows that the contested trade mark must be rejected for the goods found to be identical and similar to a low degree 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.