PILOT | Decision 2364571

Date Published: Sep 28, 2017

OPPOSITION No B 2 364 571

W. Bälz & Sohn GmbH & Co., Koepffstr. 5, 74076 Heilbronn, Germany (opponent), represented by Rüger, Barthelt & Abel, Webergasse 3, 73728 Esslingen, Germany (professional representative)

a g a i n s t

Hunter Industries Inc., 1940 Diamond Street, San Marcos California 92078, United States of America (holder), represented by Fieldfisher Llp, Riverbank House 2 Swan Lane, London, London City of EC4R 3TT, United Kingdom (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 364 571 is upheld for all the contested goods.

2.        International registration No 1 173 561 entirely refused protection in respect of the European Union.

3.        The IR holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 173 561 for the word mark ‘PILOT’. The opposition is based on: German trade mark registration No 922 575 for the word mark ‘Pilot’; international trade mark registration No 410 714 for the word mark ‘Pilot’ designating the Benelux countries, France, Italy and Austria; German trade mark registration No 998 929 for the word mark ‘Video Pilot’ and European Union trade mark registration No 6 665 731 for the word mark ‘Hydropilot’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF IR No 410 714

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 18/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 30/11/2014.

In the present case the evidence filed by the opponent to substantiate the earlier international trade mark registration No 410 714 consists of extracts from WIPO’s Romarin database. These extracts were filed together with the notice of opposition on 03/06/2014.

However, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark IR No 410 714, because the documents submitted do not contain information in relation to the validity of the earlier right. There is no information about the renewal of the trade mark or a renewal certificate attached.

The extracts from Romarin filed on 03/06/2014 show that the international trade mark registration No 410 714 was registered on 08/10/1974 and that the expected expiration date of the registration/renewal is 08/10/2014.

If the opponent has submitted a certificate of registration but the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof has been given to it to substantiate its opposition. What counts is the date on which the registration would expire, and not the possibility to renew the mark within the six-month grace period under the Paris Convention (see EUIPO’s Guidelines for Examination in the Office, Part C, Opposition, chapter ‘Procedural Matters’, ‘Renewal certificates’, page 40).

Therefore, in the present case, according to the documents on file, the mark expired on 08/10/2014 and the opponent failed to show that the international trade mark registration No 410 714 on which the opposition is, inter alia, based has been renewed.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely German trade mark registration No 922 575 for the word mark ‘Pilot’; German trade mark registration No 998 929 for the word mark ‘Video Pilot’ and European Union trade mark registration No 6 665 731 for the word mark ‘Hydropilot’.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 13/03/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany and the European Union from 13/03/2009 to 12/03/2014 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

DE No 922 575 ‘Pilot’:

Class 9:        Bar type temperature controller, electric and pneumatic temperature regulators, electric weather-dependent regulators, electric room temperature regulators, electric climate controllers, electric humidity regulators and electric programme controllers.

DE No 998 929 ‘Video Pilot’:

Class 9:        Electric and electronic regulating and monitoring apparatus, in particular processors equipped with input and output interfaces for monitoring and regulating of domestic utility installations and industrial installations.

EUTM No 6 665 731 ‘Hydropilot’:

Class 9:        Measuring, controlling, switching, monitoring, indicating and displaying apparatus and instruments for installations, assemblies, heat exchangers, jet pumps, valves, heat transfer stations, as well as for prefabricated compact stations for supplying and making available for supply of hot water, warm water, steam and/or heat transmitted by steam, and for installations for transferring heat from steam to other heat-carriers (water, thermo-oil, gas, air); parts of the aforementioned goods.

Class 11:        Installations, assemblies, heat exchangers, jet pumps, valves, heat transfer stations, in particular also of the type of prefabricated compact stations for supplying and making available for supply of hot water, warm water, steam and/or heat transmitted by steam, including installations for transferring heat from steam to other heat-carriers (water, thermo-oil, gas, air); parts of the aforementioned goods.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/04/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/06/2015 to submit evidence of use of the earlier trade marks. This term was extended at the request of the opponent until 18/08/2015. On 18/08/2015, within the time limit, the opponent submitted evidence of use.

The evidence consists of the following:

• Item 1: (4 pages) Screenshots from the opponent’s website www.baelz.de showing its headquarters and branches, including addresses and contact information, in various countries, such as Germany, Austria, France, Belgium, the Netherlands and Spain, etc.

• Item 2: (1 page) Screenshot from the opponent’s website www.baelz.de , in particular its company brands section showing, inter alia, the brands ‘Video Pilot’, ‘Pilot’ and ‘Hydropilot’.

• Item 3: (6 pages) Screenshots from the opponent’s website www.baelz.de displaying the mark ‘Pilot’ at the bottom of all website pages as  There is a reference to ‘Hydropilot’, in particular it is said that Baelz offers solutions for energy saving from the revolutionary flat stations Hydropilot® to heat exchanger stations for hot water networks with 180° Celsius and 32 bar. Furthermore, as part of the company’s mission statement, it is mentioned that Baelz offers a wide range of components up to complete systems for heat transfer media. If heat is to be transferred by means of water, steam, or hot oil, Baelz is the partner of industry, district heating, and domestic heat supply, being at command of customers since 1896.

• Item 4: (2 pages) A photograph of product packaging showing, amongst other company brands, the signs ‘Video Pilot®’, ‘Pilot®’ and ‘Hydropilot®’.

• Item 5: (16 pages) Three advertising brochures (not dated) in French and German in relation to the ‘Hydropilot® baelz 141’ temperature station and combined station for heating and heating water distribution.  

• Item 6: (23 pages) Advertising material in relation to ‘Pilot’ consisting of:

- Advertising brochure (not dated) in English referring to, inter alia, Pilot® constituents (baelz-heat exchangers, baelz-controllers, baelz-control valves, baelz-ejectors, baelz-transmitter, baelz-limit switches and baelz microprocessors);

- Screenshots from the opponent’s website www.baelz.de showing information about the company brands in several languages;

- Product data sheets (not dated, in English and French) referring to ‘Pilot’ terminal block as part of a microprocessor-based controller for industrial applications and a ‘Pilot’ thermostat/temperature controllers.

• Item 7: (36 pages) Invoices referring to France dated in 2010, 2011, 2012, 2013 and 2014 in relation to sale of ‘HYDROPILOT’ goods, in particular itemising freshwater and heating house stations, including constituents such as pumps, regulating valves, temperature and bar controllers and ‘microClima PILOT’ microprocessor controllers.

• Item 8: (approx. 370 pages) Invoices itemising sales of, inter alia, ‘PILOT’ goods (motorised actuators, microprocessor controllers, pumps, thermostats, microelectronic controllers, weather-dependent temperature controllers, temperature sensors, immersion thermostats, etc.) The invoices are for the following periods and territories: 2009 (DE, AT and FR), 2010 (DE, BE, DK, UK and IT), 2011 (DE and FR), 2012 (DE, BE, BG, FR, UK, DK and IT), 2013 (DE, BE, DK and UK) and 2014 (DE, DK, FR, EE, GR, UK, IE, IT and LX).

• Item 9: (132 pages) Invoices showing sales of ‘HYDROPILOT’ and ‘PILOT’ goods to non-EU member state countries such as Russia, Switzerland, Norway, Korea and Taiwan dated in 2009, 2010, 2011, 2012, 2013 and 2014.

• Item 10: (12 pages) Photographs of ‘PILOT’ and ‘HYDROPILOT’ goods.

The holder argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated (invoices and advertising brochures/product data sheets), the Opposition Division considers that there is no need to request a translation. This is because some of them are self-explanatory (such as the invoices and the product pictures and drawings in the brochures) and the opponent provided partial translation of the relevant terms in its observations. In relation to the advertising brochures, as well as the invoices, the opponent also provided evidence in English language. Taking into account that the structure and contents of the invoices is quite similar, there is no need to translate all of them. Consequently, it is considered not necessary to request additional translations.   

The holder argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The holder’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. This clearly applies also in relation to the holder’s argument that some of the evidence is not dated. The items of evidence must be examined jointly and in conjunction with each other and, even if some of the evidence is indeed not dated, the remaining pieces of evidence, clearly demonstrate that the majority of the evidence pertains to the relevant period.  

 

The evidence must show that the earlier marks are used in Germany (DE No 922 575 ‘Pilot’ and DE No 998 929 ‘Video Pilot’) and the European Union (EUTM No 6 665 731 ‘Hydropilot’).

The documents show that the place of use is many different countries in the European Union, including Germany throughout the relevant period. This can be inferred from the language of the documents, the currency and addresses mentioned in the invoices.

Part of the invoices, namely Item 9, refers to export in non-EU member state countries. According to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

The evidence shows that the goods were manufactured in Germany and sold in countries such as Russia, Switzerland, Norway, Korea and Taiwan. This clearly shows that the goods were exported from the relevant territory.

Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

The majority of the evidence is dated within the relevant period. While there are a couple of invoices dated slightly before or after the relevant period and some undated pieces of evidence, the large majority and sufficient amount of the documents fall within the relevant period of time or can safely be considered, in combination with other pieces of evidence, to refer to the relevant period. The Opposition Division, therefore, considers that the requirements in this respect have been met and there are sufficient indications concerning the time of use.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier marks DE No 922 575 ‘Pilot’ and EUTM No 6 665 731 ‘Hydropilot’. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of these two earlier marks.

However, there are no invoices in relation to sales of ‘Video Pilot’ goods. In fact, apart from the screenshots from the opponent’s website www.baelz.de and a single appearing on a picture of a product packaging together with the other brands of the opponent, there is no other reference in the evidence in relation to ‘Video Pilot’. Therefore, in the lack of any advertising material, invoices or any other documents enabling the Opposition Division to determine the commercial volume, the territorial scope, the duration, and/or the frequency of use, it is considered that the opponent failed to show, at least the extent of use of its earlier trade mark DE No 998 929 ‘Video Pilot’. As a result, the Opposition Division considers that the opponent failed to prove genuine use in relation this earlier trade mark and the opposition must be rejected, as far as it is based on this earlier right.

The holder argues that the marks are not used as registered because they appear in combination with other elements (for example, with the house mark ‘Baelz’ or together with a small cartoon figure or additional designations such as ‘Baelz 141’, ‘Baelz-thermodynamic’, etc.).

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, it must be noted that the majority of the evidence shows uses of the signs as registered and the signs are accompanied by the registered sign symbol, namely they appear as ‘Pilot®’ and ‘Hydropilot®. This applies also in relation to the uses (which are found only in the website screenshots) of the sign ‘Pilot’ in conjunction with the cartoon figure : all these uses show the registered sign symbol after the word ‘Pilot’.

Furthermore, as regards uses together with other signs, including with the house mark ‘Baelz’, such uses are acceptable. In this regard it is noted that it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group. In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. Finally, with regard to the use of words or digits such as ‘141’, ‘thermodynamic’, etc., it should be noted that they do not alter the distinctive character of the signs, as they are either descriptive indications in relation to characteristics of the goods or additional product type specifications and do not alter the distinctiveness of the signs.

Consequently, considered as a whole, the evidence gives sufficient indications of the use of the earlier marks as registered within the meaning of Article 15(1)(a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territories.

The earlier mark DE No 922 575 ‘Pilot’ is registered for bar type temperature controller, electric and pneumatic temperature regulators, electric weather-dependent regulators, electric room temperature regulators, electric climate controllers, electric humidity regulators and electric programme controllers in Class 9. The evidence shows that the mark has been used for a variety of goods, including various types of controllers, thermostats and regulators. Therefore, the opponent has shown use for all the goods for which the mark is registered.

In relation to EUTM No 6 665 731 ‘Hydropilot’, it is registered for a number of goods and services in Classes 9 and 11 (listed above). However, the evidence filed by the opponent does not show genuine use of the trade mark for all the registered goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

Furthermore, according to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence shows that the earlier mark EUTM No 6 665 731 ‘Hydropilot’ was used during the relevant period in relation to stations, fresh hot water stations for heating and for hot water supply and distribution, including various elements and constituents such as heat-exchangers, pumps, regulating valves, temperature and bar controllers. Therefore, applying the principles established in the ‘Aladin’ case previously quoted, in view of the use shown in relation to both specific, but also various accessory goods with more diverse specifications and applications, and in order to respect the legitimate interest of the opponent in not being stripped of all protection for not proving all conceivable variations of goods, it is considered that the evidence shows genuine use of the trade mark for the following goods:

Class 9:        Measuring, controlling, switching, monitoring, indicating and displaying apparatus and instruments for heat transfer stations, as well as for prefabricated compact stations for supplying and making available for supply of hot water, warm water; parts of the aforementioned goods.

Class 11:        Heat exchangers, jet pumps, valves, heat transfer stations, in particular also of the type of prefabricated compact stations for supplying and making available for supply of hot water, warm water; parts of the aforementioned goods.

Therefore, the Opposition Division will only consider the abovementioned goods and marks in its further examination of the opposition.

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:

DE No 922 575 ‘Pilot’:

Class 9:        Bar type temperature controller, electric and pneumatic temperature regulators, electric weather-dependent regulators, electric room temperature regulators, electric climate controllers, electric humidity regulators and electric programme controllers.

EUTM No 6 665 731 ‘Hydropilot’:

Class 9: Measuring, controlling, switching, monitoring, indicating and displaying apparatus and instruments for heat transfer stations, as well as for prefabricated compact stations for supplying and making available for supply of hot water, warm water; parts of the aforementioned goods.

Class 11: Heat exchangers, jet pumps, valves, heat transfer stations, in particular also of the type of prefabricated compact stations for supplying and making available for supply of hot water, warm water; parts of the aforementioned goods.

The contested goods are the following:

Class 9: Stand-alone electronic irrigation controllers for irrigation systems, PC compatible software for managing irrigation systems, and electronic interfaces for linking a central computer to multiple electronic irrigation controllers installed at different irrigation sites.

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 stand-alone electronic irrigation controllers for irrigation systems are similar to the opponent’s electric weather-dependent regulators, electric climate controllers, electric humidity regulators and electric programme controllers (covered by the earlier DE mark) as well as to the opponent’s controlling apparatus and instruments for heat transfer stations, as well as for prefabricated compact stations for supplying and making available for supply of hot water, warm water. This is because they have the same nature (controlling instruments) and can coincide in purpose (used for regulating water-related parameters). In spite of their different specific uses (use for hot water stations vs. use for irrigation) and/or other particularities (electric vs. electronic controllers), these sets of goods are usually manufactured by the same producers. Therefore, they are considered similar.

The contested PC compatible software for managing irrigation systems, and electronic interfaces for linking a central computer to multiple electronic irrigation controllers installed at different irrigation sites consists of software and related interface specifically meant for operating and managing irrigation systems. These goods can be provided as part and parcel of the irrigation system or might be provided as optional additional software and interface that is not an integrated part of the goods for upgrading the irrigation system product features.

The opponent’s goods, in particular parts of the aforementioned goods, being parts of measuring, controlling, switching, monitoring, indicating and displaying apparatus and instruments for heat transfer stations, as well as for prefabricated compact stations for supplying and making available for supply of hot water, warm water include various parts, including for example integrated and non-integrated software and related (micro)processor units equipped with interfaces for controlling, regulating, monitoring, displaying, etc. the functions of the specific water supply apparatus and instruments.  

Therefore, the mentioned sets of contested and opponent’s goods are closely linked as they have the same nature and general water supply-related purpose and because their usual producers can coincide. Therefore, they are considered similar.

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 similar are directed both at the public at large and at professional consumers. Nevertheless, due to the specialised nature of these goods and because they usually entail prior research and are not frequent purchases, it is considered that the degree of attention of the public at large will be higher than average, As regards the professional public, the degree of attention may vary from average to high, depending on the sophistication/specialised nature, or terms and conditions of the purchased goods as well as the frequency of purchase and their price.

3. The signs

Pilot (DE No 922 575) Hydropilot  (EUTM No 6 665 731)	PILOT
Earlier trade marks	Contested sign

The contested sign and the earlier sign DE No 922 575 are identical.

As regards the earlier trade mark EUTM No 6 665 731, it needs to be compared to the 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).

In addition, when assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

In the present case, the marks under comparison are word marks. As such, they have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘Hydropilot’ is meaningless per se. However, in this context, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, RESPICUR, EU:T:2007:46, § 57). In the present case, the relevant consumers will divide the word ‘Hydropilot’ into the elements ‘Hydro’ and ‘pilot’. This is because, at least the verbal element ‘Hydro’ will be widely understood by all the relevant consumers as ‘connected with or using the power of water’, as it is a common and widely used term, especially in the field of the relevant goods. Bearing in mind that the relevant goods are related to water, it is considered that this element is not particularly distinctive for the relevant goods. This is because, depending on the specific product, this element may be perceived as a reference to characteristics/ properties of the goods. Therefore, since this element has descriptive connotations in relation to the goods, it is considered that it is non-distinctive.  

The element ‘Pilot’ of the earlier mark and of the contested sign will be widely associated (for example, by the English-, Czech-, Bulgarian-, Danish-, Latvian- and Romanian-speaking part of the public) with a person who is trained to fly an aircraft; a person who steers a ship through a difficult stretch of water; test (a scheme, project, etc.) before introducing it more widely (see Collins English Dictionary online at www.collinsdictionary.com/dictionary/english). For another part of the public (such as the Italian-, Greek- or Spanish-speaking part of the public), the word ‘pilot’ does not exist as such and might not be associated with its counterpart (‘piloto’ in Spanish, ‘pilota’ in Italian and ‘πιλότος’ in Greek); in such cases, it would be meaningless. Nevertheless, whether understood or not, this element has no specific, descriptive, allusive or otherwise weak meaning in relation to the relevant goods and therefore, its inherent distinctive character is normal.

Visually, the signs coincide in that they contain the verbal element ‘PILOT’, which comprises the entirety of the contested mark and represents the second verbal element of the earlier mark. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the marks at issue are represented in upper case or lower case letters. Although the differences in the sign are placed in the beginning of the earlier trade mark and this is visually noticeable, the differing element ‘Hyrdo’ is non-distinctive and the consumers will focus on the remaining distinctive element of the earlier mark, which coincides in full with the contested sign. Therefore, the signs are considered visually highly similar.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to a high degree.

The concepts of the elements in the signs have been defined above. Consequently, the coinciding word ‘pilot’ will evoke the same concept or no particular meaning. Although the element ‘hydro’ in the earlier mark will bring about a conceptual difference, this element is non-distinctive in relation to the goods and has reduced capacity to indicate the commercial origin of the earlier mark. Consequently, the signs are conceptually similar to a high degree for the consumers who would associate them with the same meaning on account of the coinciding element ‘pilot’.  

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The earlier mark DE No 922 575 is identical to the contested sign and part of the contested goods, namely stand-alone electronic irrigation controllers for irrigation systems in Class 9 are similar to the goods covered by this earlier mark. Therefore, given the identity of the signs, there is a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for these goods.

The remaining contested goods are similar to goods covered by the opponent’s mark EUTM No 6 665 731. The signs are visually and aurally similar to a high degree. They are conceptually similar to a high degree too for the consumers who would associate them with the same meaning on account of the coinciding distinctive element ‘pilot’. The differentiating element ‘hydro’ found in the beginning of the earlier mark is non-distinctive and its impact as a trade identifier is rather limited.

In the present case, it is highly conceivable that the relevant consumer, including the professional consumer with a higher degree of attention, will perceive the mark applied for as brand related to the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that in view of the high degree of similarity between the signs, there is a likelihood of confusion on the part of the relevant public in relation to similar goods.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 922 575 and EUTM No 6 665 731. As mentioned above, it follows that the contested trade mark must be rejected for all the contested goods.

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 holder 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

Dorothée SCHLIEPHAKE

Liliya YORDANOVA

Gueorgui IVANOV

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.