NEO by era | Decision 2392283 - HB Canada Communications Ltd. v. ERA a.s.

Date Published: Sep 25, 2017

OPPOSITION No B 2 392 283

ICC Imagine Communications Canada Ltd., Suite 1700, Park Place 666 Burrard Street, Vancouver, British Columbia V6C 2X8, Canada (opponent), represented by Lorenz & Kollegen, Patentanwälte Partnerschaftsgesellschaft mbB, Alte Ulmer Str. 2-4, 89522 Heidenheim, Germany (professional representative)

a g a i n s t

ERA a.s., Prumyslová 387, 530 03 Pardubice, Czech Republic (applicant), represented by Patentservis Alicante, S.A., plz. de la Montañeta, 4, entlo., 03001, Alicante, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 392 283 is partially upheld, namely for the following goods and services:

Class 9: Active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of monitoring and control of air traffic, and not for the field of broadcasting.

Class 37: Installation, implementation and servicing of active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of managing air traffic and monitoring of air, land and naval objects, and not for the field of broadcasting.

Class 42: Information technology services for the fields of monitoring, evaluation and management of air traffic, and not for the field of broadcasting.

2.        European Union trade mark application No 12 565 156 is rejected for all the above goods and services. It may proceed for the remaining 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 12 565 156. The opposition is based on European Union trade mark registration No 2 462 091. 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 and services

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

Class 9: Television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels; computer software for controlling and monitoring the aforesaid wares.

The contested goods and services are the following:

Class 9: Active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of monitoring and control of air traffic, and not for the field of broadcasting.

Class 37: Installation, implementation and servicing of active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of managing air traffic and monitoring of air, land and naval objects, and not for the field of broadcasting.

Class 41: Education and training, seminars, training courses for active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs for the fields of managing air traffic and monitoring of air, land and naval objects, and not for the field of broadcasting.

Class 42: Research, development, planning and engineering services for active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs for the fields of managing air traffic and monitoring of air, land and naval objects, information technology services for the fields of monitoring, evaluation and management of air traffic, and not for the field of broadcasting.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

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 active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of monitoring and control of air traffic, and not for the field of broadcasting are apparatuses that capture, process, evaluate and transmit signals. To that extent, they are included in, or overlap with, the opponent’s broad category of video and audio signal processing, switching and generating equipment. Therefore, they are identical.

Contested services in Classes 37

The contested installation, implementation and servicing of active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs, all of the foregoing for the fields of managing air traffic and monitoring of air, land and naval objects, and not for the field of broadcasting are similar to the opponent’s video and audio signal processing, switching and generating equipment in Class 9. Indeed, it is common in this market sector for the manufacturer of the goods to also provide such services. Furthermore, end users and distribution channels can also coincide.

Contested services in Classes 41 and 42

The contested information technology services for the fields of monitoring, evaluation and management of air traffic, and not for the field of broadcasting in Class 42 are similar to the opponent’s computer software for controlling and monitoring the aforesaid wares [these wares being various specific types of signal processing and generating apparatus which may be related to the management of air traffic]. Indeed, although they do not have the same nature, these goods and services are still closely linked because the information technology services may include services such as the development of computer software. Consequently, the service provider, the distribution channels and the relevant public can coincide.

The contested education and training, seminars, training courses for active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs for the fields of managing air traffic and monitoring of air, land and naval objects, and not for the field of broadcasting in Class 41 and the contested research, development, planning and engineering services for active and passive radar systems, radio transceivers, intercommunication apparatus, apparatus and installations for capture, processing, transmission and evaluation of signals and information, including computer programs for the fields of managing air traffic and monitoring of air, land and naval objects in Class 42 are dissimilar to any of the opponent’s goods. Indeed, although there are some exceptions, by nature, goods are generally different from services and in the case at hand, unlike the previous comparison for Class 37, it is not common for manufacturer of the opponent’s goods to also provide education, training, seminars, research, development, planning and engineering services as independent services delivered to third parties and not being ancillary or aftersales services in relation to the goods themselves. Furthermore, they have different purposes and are neither complementary nor in competition.

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 and services found to be identical or similar are directed at business customers with specific professional knowledge or expertise. The goods and services in question are not acquired so frequently because of their very technical nature. Therefore, the degree of attention is likely to be high.

3. The signs

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 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.

The preposition ‘by’ in the contested sign will be understood by, essentially, the English speaking part of the public as ‘done by’ or ‘created by’ whereas it is meaningless for the public not having some command of English. The preposition ‘by’ is commonly used in commerce before the name of the designer of the goods or before a business name. The following word ‘era’ is also an English word (referring to a ‘period of time’), but in this particular context, it will be understood as a business name not conveying any particular concept. The expression ‘by era’ is therefore distinctive.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Although it is slightly stylized, the Opposition Division considers that the letter ‘E’ in the earlier mark will be recognized and read as such by the part of the relevant public. Therefore, contrary to the applicant’s argument, the earlier mark will be read ‘NEO’.

Furthermore, the Opposition Division also considers that the term ‘NEO’, which constitutes the entire earlier mark and is placed at the beginning of the contested sign, is distinctive of the goods and services covered by the marks. Indeed, as mentioned by the applicant, in English, ‘NEO’, on its own, without any other concept and without any context, has no meaning whatsoever and it would not be immediately associated by the English-speaking public with ‘new, recent, or a new or modern form or development’. At best, it would be perceived as a given name. In the present case, ‘NEO’ is used independently in both signs and there is nothing in the single word ‘NEO’ or in the signs at issue that urges or ushers the public into looking for or establishing an association with a particular meaning.

In its observations, the applicant also argues that the element ‘NEO’ has a low distinctive character given that there are many trade marks that include this element. In support of its argument the applicant refers to a few trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘NEO’.

Therefore, the applicant’s arguments on the lack of distinctiveness of ‘NEO’ must be set aside and the word ‘NEO’ is distinctive in both signs of the goods and services covered.

While the element 'by era' in the contested sign is written in smaller characters than the element 'NEO', it remains that both elements are perceptible at a glance. Taking the foregoing into account, the signs have no elements that could be considered clearly more dominant than other elements.

Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive word ‘NEO’ which constitutes the entire earlier mark and is placed at the beginning of the contested sign. Nevertheless, they differ in the additional elements ‘by era’ of the contested sign, and in the typeface used to represent the signs which, in any case, only have a decorative purpose and are not so different from each other. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛NEO’, present identically in both signs and differ in the sound of ‘by era’ of the contested sign, which as explained above will merely be perceived as a business name, it is unlikely that consumers should actually pronounce it at all. Instead they will intuitively use the element 'NEO' as the one identifying the product line, to designate the sign. Therefore, the signs are aurally identical at least for a significant part of the public. In the unlikely event that part of the public would pronounced the element 'by era' of the contested sign, the signs are aurally similar to an average degree for that part of the public.

Conceptually, as mentioned above, at best, the public under analysis will perceive ‘NEO’ in both signs as a given name. In addition, taking into consideration that the public will perceive the additional expression 'by era' of the contested sign as the indication of a business name not evoking any particular concept, the signs are conceptually similar to an average degree for this part of the public. For the remaining part of the public under analysis which does not associate ‘NEO’ with any concept, the signs are not conceptually similar.

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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree, aurally identical for part of the public at least, conceptually similar to an average degree for a part of the public and not conceptually similar for the rest of the public.

When assessing likelihood of confusion in relation to composite signs that contain several verbal elements, one of which might be seen as being a business name, i.e. indicating the company ‘behind’ the trade mark, an overall assessment must be done in order to identify which element functions as the trade mark of the goods and services concerned. Factors to be taken into account include the distinctiveness of each element as well as the size and/or space they occupy in a figurative mark, which determine the dominant element of the conflicting signs.

As indicated in part c) of the decision, the only verbal element of the earlier mark, whose distinctive character is normal, is entirely reproduced, as the first verbal element, in the contested sign. The combination of the remaining words ‘by era’ in the contested sign will be perceived by consumers as an indication of the business name and in consequence ‘Neo’ will be perceived as the specific trade mark for the goods and services. Where the business name is not the dominant element, as is the case here, although each of the elements making up the sign might have their own independent distinctive role, consumers are likely to focus more on the element that would be seen as identifying the specific product line rather than on the element that would be perceived (because it is preceded by ‘by’ or another equivalent term) as identifying either the company who has control of the products concerned or the designer who created the product line(T-43/05). In the case of the contested sign, the point of attention of consumers will be the distinctive word ‘NEO’.

Therefore, the differences between the signs consisting in the expression ‘by era’ and in the graphic aspects, which in any case are neither elaborate or sophisticated, are not sufficient to overcome the degree of similarity between the component that would be perceived as the trade mark in the contested sign and in the earlier mark.

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 goods/services covered are from the same or economically linked undertakings. It must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. Indeed, it is common practice, on the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal (words and numbers) or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark.

The rest of the contested 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 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

Martina GALLE

Sandra IBAÑEZ

Catherine MEDINA

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.