plug-in solar | Decision 2215799 - Solar A/S v. The Solar Electricity Company Ltd
Date Published: Oct 1, 2017
OPPOSITION No B 2 215 799
Solar A/S, Industrivej Vest 43, 6600 Vejen, Denmark (opponent), represented by Andersen Partners, Jernbanegade 31, 6000 Kolding, Denmark (professional representative)
a g a i n s t
The Solar Electricity Company Ltd, 289 London Road, Burgess Hill, West Sussex RH15 9QU, United Kingdom (applicant), represented by Rohan Solicitors, Aviation House, 1-7 Sussex Road, Haywards Heath, West Sussex RH16 4DZ, United Kingdom (professional representative).
On 08/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 215 799 is partially upheld, namely for the following contested goods and services:
Class 6: Goods of common metal; metal building materials; transportable buildings of metal; racking of metal; rack systems for photovoltaic installations; frames for affixing and supporting photovoltaic modules and solar power modules; non-electric cables and wires of common metal; pipes and tubes of metal; tapes, strips, blanks, sheets having a surface coating for reflection or absorption of light and thermal radiation; foils of metal (included in this class); decorative profiles; all aforementioned goods of metal.
Class 9: Optical mirrors, included in this class; glass with electrically conducting coating; photovoltaic apparatus for electrical power generation; photovoltaic modules; solar cells for electrical power generation; apparatus and instruments for conduction, distribution, conversion, storage, regulation or control of electric current; solar collectors and modules for electricity generation; solar batteries; solar cells; solar panels; accessories for photovoltaic installations; energy measurement data for the energy and power industry; apparatus for the testing of solar cells and solar panels; solar electric systems and installations; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for converting solar energy into electrical energy; photovoltaic modules; solar modules; solar collectors; solar battery panels; solar energy generating modules.
Class 11: Apparatus for heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; solar collectors; solar furnaces; system components for installations for converting solar radiation into electrical energy; photovoltaic solar thermal hybrid modules and hybrid installations; thermal solar collectors; solar heating systems; solar collectors for heating; solar furnaces; solar electric installations for use in providing power to commercial, residential and industrial premises; parts of all aforementioned goods.
Class 37: Installation, maintenance and repair of solar installations, photovoltaic modules, solar modules, solar collectors, solar battery panels, solar energy generating modules; installation, maintenance and repair of accessories for photovoltaic installations.
2. European Union trade mark application No 11 586 674 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 11 586 674. The opposition is based on European Union trade mark registrations No 10 954 873 and No 6 467 286, Finnish trade mark registration No 232 300 and Danish trade mark registration No 200 901 247. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 954 873 and Danish trade mark registration No 200 901 247.
- The goods and services
The list of goods and services given in the notice of opposition for European Union trade mark No 10 954 873, constituting the basis of the opposition, does not correspond to the opponent’s actual goods and services. On 14/04/2016, the opponent requested a limitation to the specification of the list of goods and services.
Therefore, the goods and services, regarding European Union trade mark No 10 954 873, on which the opposition is based are the following:
European Union trade mark No 10 954 873
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors; none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Class 37: Building construction; repair; installation services; none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Danish trade mark No 200 901 247
Class 6: Common metals and their alloys; goods of common metal; metal building materials; transportable buildings of metal; racking of metal (not for electronic purposes).
Class 9: Apparatus and instruments for weighing, measuring, signalling, controlling, lifeguarding and teaching; apparatus and instruments conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical installations for remote control of industrial processes.
Class 11: Apparatus for steam generating, boiling, cooling, drying, ventilation and sanitary installations.
Class 37: Building construction and repair; installation; rental of construction equipment.
The contested goods and services are the following:
Class 6 Goods of common metal; metal building materials; transportable buildings of metal; racking of metal; rack systems for photovoltaic installations; frames for affixing and supporting photovoltaic modules and solar power modules; non-electric cables and wires of common metal; pipes and tubes of metal; tapes, strips, blanks, sheets having a surface coating for reflection or absorption of light and thermal radiation; foils of metal (included in this class); decorative profiles; all aforementioned goods of metal.
Class 9 Optical mirrors, included in this class; glass with electrically conducting coating; photovoltaic apparatus for electrical power generation; photovoltaic modules; solar cells for electrical power generation; apparatus and instruments for conduction, distribution, conversion, storage, regulation or control of electric current; solar collectors and modules for electricity generation; solar batteries; solar cells; solar panels; accessories for photovoltaic installations; energy measurement data for the energy and power industry; apparatus for the testing of solar cells and solar panels; solar electric systems and installations; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for converting solar energy into electrical energy; photovoltaic modules; solar modules; solar collectors; solar battery panels; solar energy generating modules.
Class 11 Apparatus for lighting, heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes; solar collectors; solar furnaces; system components for installations for converting solar radiation into electrical energy; photovoltaic solar thermal hybrid modules and hybrid installations; thermal solar collectors; solar heating systems; solar collectors for heating; solar furnaces; solar electric installations for use in providing power to commercial, residential and industrial premises; parts of all aforementioned goods.
Class 37 Installation, maintenance and repair of solar installations, photovoltaic modules, solar modules, solar collectors, solar battery panels, solar energy generating modules; installation, maintenance and repair of accessories for photovoltaic installations.
Class 40 Generation of electricity from solar energy; generation of energy from renewable sources.
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 6
The contested goods of common metal include, as a broader category, the opponent’s goods of common metal not included in other classes, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested metal building materials include, as a broader category, the opponent’s metal building materials, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested transportable buildings of metal include, as a broader category, the opponent’s transportable buildings of metal, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested non-electric cables and wires of common metal include, as a broader category, the opponent’s non-electric cables and wires of common metal, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested pipes and tubes of metal include, as a broader category, the opponent’s pipes and tubes of metal, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested racking of metal includes, as a broader category, the opponent’s racking of metal (not for electronic purposes) of earlier Danish trade mark No 200 901 247. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested rack systems for photovoltaic installations (of metal); frames for affixing and supporting photovoltaic modules and solar power modules (of metal) are included in the broad category of the opponent’s racking of metal (not for electronic purposes) of earlier Danish trade mark No 200 901 247. Therefore, they are identical.
The contested tapes, strips, blanks, sheets having a surface coating for reflection or absorption of light and thermal radiation (of metal); decorative profiles (of metal); foils of metal (included in this class) are included in the broad category of the opponent’s metal building materials, none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873. Therefore, they are identical.
Contested goods in Class 9
The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity are identically contained in the list of goods of earlier Danish trade mark No 200 901 247.
The contested glass with electrically conducting coating is included in the broad category of the opponent’s apparatus and instruments conducting electricity of earlier Danish trade mark No 200 901 247. Therefore, they are identical.
The contested photovoltaic apparatus for electrical power generation; photovoltaic modules (listed twice); solar cells for electrical power generation; solar collectors and modules for electricity generation; solar cells; solar panels; apparatus for converting solar energy into electrical energy; solar modules; solar collectors; solar energy generating modules; solar electric systems and installations; apparatus and instruments for conduction, distribution, conversion, storage, regulation or control of electric current cannot be clearly separated from the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity of earlier Danish trade mark No 200 901 247. The goods are considered identical.
The contested apparatus for the testing of solar cells and solar panels cannot be clearly separated from the broad category of the opponent’s apparatus and instruments for measuring, controlling of earlier Danish trade mark No 200 901 247. The goods are considered identical.
The contested optical mirrors, included in this class are highly similar to the opponent’s apparatus and instruments for measuring of earlier Danish trade mark No 200 901 247, as they have the same purpose of carrying out the act and process of measuring. They can coincide in their producer, relevant public and distribution channels.
The contested solar batteries; solar battery panels are devices for accumulating and storing the flow of electricity. As such, they are highly similar to the opponent’s apparatus and instruments conducting, accumulating, regulating or controlling electricity of earlier Danish trade mark No 200 901 247, which are all kinds of apparatus and instruments used to control the flow of electricity. Therefore, these goods have the same purpose and nature. Furthermore, they have the same distribution channels, relevant public and producers.
The contested energy measurement data for the energy and power industry are facts and statistics on energy, collected for use as a reference or in analysis in the energy and power industry. These goods relate to the opponent’s design and development of computer hardware and software, none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages in Class 42 of earlier EUTM No 10 954 873, since the contested goods may be designed and developed by the same companies that offer the opponent’s services. Furthermore, such goods and services target the same relevant public. Therefore, they are similar.
The contested accessories for photovoltaic installations are similar to a low degree to the opponent’s apparatus and instruments conducting, switching, transforming, accumulating, regulating or controlling electricity of earlier Danish trade mark No 200 901 247. The relevant public may expect these accessories to be produced by, or under the control of, the same manufacturer as the opponent’s goods. Furthermore, these goods target the same relevant public and can have the same distribution channels.
Contested goods in Class 11
The contested apparatus for steam generating, drying are identically contained in the list of goods of earlier Danish trade mark No 200 901 247.
The contested apparatus for ventilating and sanitary purposes overlap with the opponent’s ventilation and sanitary installations of earlier Danish trade mark No 200 901 247. Therefore, they are identical.
The contested apparatus for water supply is highly similar to the opponent’s apparatus for sanitary installations of earlier Danish trade mark No 200 901 247, as the opponent’s apparatus for sanitary installations is generally dependent on a water supply to function. These goods are, therefore, complementary to each other. Many items that are used for sanitary purposes (e.g. bathtubs, showers, sinks) fundamentally require a water supply. These goods usually coincide in their distribution channels and sales outlets and are manufactured and installed by the same undertakings. Furthermore, they target the same relevant public.
The contested solar collectors; solar furnaces (listed twice); photovoltaic solar thermal hybrid modules and hybrid installations; thermal solar collectors; solar heating systems; solar collectors for heating; system components for installations for converting solar radiation into electrical energy; solar electric installations for use in providing power to commercial, residential and industrial premises are all devices and structures for capturing solar radiation and using the energy for heating. The more complex collectors are used to generate electricity by heating a fluid to drive a turbine connected to an electrical generator. Therefore, these goods use identical or similar technology to the opponent’s apparatus and instruments conducting, switching, transforming, accumulating, regulating or controlling electricity in Class 9 of earlier Danish trade mark No 200 901 247. They target the same relevant public, are sold through the same distribution channels and may originate from the same entities. Consequently, these goods are considered similar.
The contested apparatus for cooking is similar to the opponent’s apparatus for boiling in Class 11 of earlier Danish trade mark No 200 901 247. These goods are usually produced by the same manufacturers and are distributed through the same channels. Moreover, their relevant public is the same.
The contested parts of all aforementioned goods [apparatus for steam generating, drying, ventilating, water supply and sanitary purposes] can be integral parts of the finished contested goods and can be necessary for the finished goods to function. Therefore, the Opposition Division finds that the contested parts of all aforementioned goods [apparatus for steam generating, drying, ventilating, water supply and sanitary purposes] are similar to the opponent’s finished goods to which the corresponding contested goods have been compared above, namely to the opponent’s apparatus for steam generating, drying, ventilation and sanitary installations of earlier Danish trade mark No 200 901 247. This finding is based on the fact that parts are often produced by the same undertaking that manufactures the final goods and these goods target the same purchasing public, as in the case of spare or replacement parts. The public concerned may expect these parts to be produced by or under the control of the ‘original’ manufacturer. Furthermore, such goods target the same relevant public and can have the same distribution channels.
Similarly, the contested parts of all aforementioned goods [apparatus for cooking; solar collectors; solar furnaces; system components for installations for converting solar radiation into electrical energy; photovoltaic solar thermal hybrid modules and hybrid installations; thermal solar collectors; solar heating systems; solar collectors for heating; solar furnaces; solar electric installations for use in providing power to commercial, residential and industrial premises] are similar to a low degree to the opponent’s goods to which the corresponding contested goods have been compared above. The relevant public may expect these parts to be produced by, or under the control of, the same manufacturer as the opponent’s goods. Furthermore, these goods can have the same distribution channels.
The contested apparatus for heating, parts of all aforementioned goods [apparatus for heating] are similar to a low degree to the opponent’s building materials (non-metallic), none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM No 10 954 873, as these goods can coincide in their relevant public and distribution channels. Furthermore, they are complementary.
The contested apparatus for lighting; parts of all aforementioned goods [apparatus for lighting] consist of devices and parts of these devices for supplying artificial light, namely for illumination. These goods do not have the same purpose, nature or method of use as the opponent’s apparatus for steam generating, boiling, cooling, drying, ventilation and sanitary installations in Class 11 of earlier Danish trade mark No 200 901 247. They are not manufactured by the same undertakings and are displayed in different areas in large department stores or supermarkets. Moreover, they are neither in competition nor complementary. Therefore, these goods are dissimilar. Furthermore, these contested goods and the rest of the opponent’s goods in Classes 6, 8, 9, 11, 19, 37 and 42 of earlier EUTM No 10 954 873 and earlier Danish trade mark No 200 901 247 do not meet any of the criteria for similarity; their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they are neither complementary to nor in competition with one another.
Contested services in Class 37
The contested installation and repair of solar installations, photovoltaic modules, solar modules, solar collectors, solar battery panels, solar energy generating modules; installation and repair of accessories for photovoltaic installations are included in the broad categories of the opponent’s installation services; repair; none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM 10 954 873. Therefore, they are identical.
The contested maintenance of solar installations, photovoltaic modules, solar modules, solar collectors, solar battery panels, solar energy generating modules; maintenance of accessories for photovoltaic installations are related to the opponent’s repair, none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages of earlier EUTM 10 954 873. The opponent’s repair, none of the aforementioned services in this class for or in relation to gas turbines, gas compressors or gas turbines packages may include repair in connection with exchanging existing thermal solar collectors, which is similar to the cleaning and maintenance of these goods. Repair is defined as the work that is done to fix something that is broken or damaged. Maintenance can be defined as the work that is done to keep something repaired and in good condition. Usually, maintenance is offered by the same service providers that offer repair. The contested and the opponent’s services target the same public. Furthermore, these services are complementary and they have the same purpose, of ensuring that installations and/or devices function correctly. Therefore, they are similar.
Contested services in Class 40
The contested generation of electricity from solar energy; generation of energy from renewable sources are considered dissimilar to the opponent’s services in Classes 37 and 42 of earlier EUTM No 10 954 873 and the services in Class 37 of earlier Danish trade mark No 200 901 247. They do not have the same nature and they satisfy different needs. The contested services and the opponent’s services do not usually have the same origin; they are usually offered by specialised companies in their corresponding fields. Furthermore, they are generally offered to different relevant publics through separate distribution channels. These contested services are also dissimilar to the opponent’s goods in Classes 6, 8, 9, 11 and 19 of earlier EUTM No 10 954 873 and earlier Danish trade mark No 200 901 247. These goods and services have different purposes, methods of use and natures, they are not of interest to the same public or distributed through the same trade channels and they do not have the same commercial origin. Furthermore, they are neither complementary nor in competition.
- 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 and similar (to different degrees) are directed at both the public at large and at business customers with specific professional knowledge or expertise in, inter alia, the solar power field. The degree of attention may vary from average to higher than average depending on their price and their specific purposes.
- The signs
1) European Union trade mark registration No 10 954 873
2) Danish trade mark registration No 200 901 247 SOLAR | |
Earlier trade marks | Contested sign |
The relevant territories are Denmark, for Danish trade mark registration No 200 901 247, and the European Union, for European Union trade mark registration No 10 954 873.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, and for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Danish-speaking part of the relevant public insofar as European Union trade mark registration No 10 954 873 is concerned.
The earlier European Union trade mark is a figurative mark composed of the verbal element ‘SOLAR’ written in standard white lower case letters at the bottom of a black square. The earlier Danish trade mark is the word mark ‘SOLAR’.
The contested sign is a figurative mark containing the verbal elements ‘plug-inSOLAR’ and ‘power your future’ written over two lines; the words ‘plug-in’ are written in fairly standard black lower case letters, except for the letter ‘i’, which is in orange, whereas the word ‘SOLAR’ is written in bold black upper case letters. The expression ‘power your future’ is considerably smaller and is depicted on a separate line in standard orange lower case letters. Above the verbal elements, extending up from the letter ‘i’, there is an orange figurative element depicting a sun.
The earlier European Union trade mark has no element that could be considered clearly more dominant (visually eye catching) than other elements.
The figurative element depicting a sun and the verbal elements ‘plug-inSOLAR’ of the contested sign are the dominant elements in this sign, as they are the most eye-catching and overshadow the smaller verbal elements, ‘power your future’.
The word ‘SOLAR’, present in all marks, will be understood by the Danish-speaking part of the relevant public as referring to, inter alia, ‘solar energy’ (information extracted from Ordbogenon on 06/06/2017 at http://www.ordbogen.com/opslag.php?word=solar&dict=a000).
The words ‘plug-in’, present in the contested sign, will be understood by the Danish-speaking part of the relevant public as English words referring to, inter alia, ‘a piece of electrical equipment that is operated by being connected to an electricity supply or to another piece of electrical equipment by means of a plug’ (information extracted from Collins English Dictionary on 06/06/2017 at https://www.collinsdictionary.com/dictionary/english/plug-in).
These elements, taken individually, can be considered somewhat weak for the contested goods and services. However, although the relevant public is likely to grasp the individual meanings of these words, the Opposition Division is of the opinion that the consumers will perceive the contested mark as a whole, that is, as ‘plug-inSOLAR’, since this sequence, as a whole, is a neologism that will be understood as ‘to connect a piece of equipment to a solar powered electricity supply’.
The word ‘power’, present in the contested sign, will be understood by the Danish-speaking part of the relevant public as an English word referring to ‘energy that is produced by mechanical, electrical, or other means and used to operate a device’. The word ‘your’ will be understood as the possessive determiner in English meaning ‘belonging to or associated with the person or people that the speaker is addressing’. Finally, the word ‘future’ will be perceived by the Danish-speaking part of the relevant public as meaning ‘the time or a period of time following the moment of speaking or writing; time regarded as still to come’ (all definitions extracted from Oxford English Dictionaries on 06/06/2017 at http://www.oxforddictionaries.com/). Consequently, the expression ‘power your future’, as a whole, will be understood by the Danish-speaking part of the relevant public as referring to ‘the ability or capacity to give or provide power (a particular form of energy) to your devices or systems in the future’ and it will be perceived as a slogan and/or promotional message in relation to the goods and services. Consequently, it is considered that this expression is weak for the goods and services at issue. Even if some of the relevant goods are not directly related to energy in the field of solar-powered industry, the distinctiveness of this expression is not any higher than for the rest of the goods and services, as consumers will not perceive this expression as acting as a badge of origin. The public understands the meaning of the expression and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.
The figurative element of a sun in the contested sign will be perceived as such by the relevant public and, thus, it is considered weak in relation to the goods and services, as it reinforces the message that the energy in question derives from the Sun. Even if some of the relevant goods are not directly related to solar energy, the distinctiveness of this element is not any higher than for the rest of the goods and services, as consumers will not perceive this simple figurative element as acting as a badge of origin. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.
Finally, the figurative element of the earlier European Union trade mark, namely the black square, performs a purely decorative function within the mark and, as such, it is considered less distinctive than the verbal component, ‘SOLAR’, of this earlier trade mark.
In the light of the above considerations, the signs are visually, aurally and conceptually similar to an average degree to the extent that they coincide in the word ‘SOLAR’. The fact that the verbal element of earlier marks 1) and 2) is entirely reproduced in the contested mark constitutes an indication of visual and aural similarity between the signs (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T-372/09, Gold Meister, EU:T:2011:97, § 27). The additional verbal elements of the contested sign, that is, the expression ‘power your future’, are likely to receive less attention from the relevant public than the other elements of the mark and may not be pronounced due to their size and position, as they are overshadowed by the figurative element and other verbal elements of the contested sign. Furthermore, despite the presence of the words ‘plug-in’ in the contested mark, which affect, as stated above, the overall meaning of the contested sign, a conceptual coincidence may still be found due to the presence of the coinciding element ‘SOLAR’ in the earlier marks and the contested mark.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. The distinctiveness of earlier Danish trade mark No 200 901 247 must be seen as low for all the goods and services in question, considering what has been stated above in section c) of this decision. The distinctiveness of earlier European Union trade mark No 10 954 873 must be seen as low for some of the goods and services in question, such as metal building materials (Class 6), building materials (non-metallic) (Class 19), building construction; repair, installation services (Class 37) and scientific and technological services (Class 42). Earlier European Union trade mark No 10 954 873 has a normal degree of distinctiveness for some of the goods and services in question, such as materials of metal for railway tracks (Class 6) and hand tools and implements (hand-operated) (Class 8), in relation to which it has no meaning from the perspective of the public in the relevant territory.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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.
A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).
The goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. The signs are visually, aurally and conceptually similar to an average degree, since the only verbal element of earlier mark 1) and the entirety of earlier mark 2), ‘SOLAR’, is entirely included in the dominant verbal elements of the contested mark, ‘plug-inSOLAR’.
It is acknowledged that the words ‘plug-in’ in the contested sign will not go unnoticed by the relevant public. Nevertheless, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T-286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T-169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T-32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T-104/01, Fifties, EU:T:2002:262; 04/05/2005, T-22/04, Westlife, EU:T:2005:160).
The additional expression of the contested sign, namely ‘power your future’, is visually overshadowed by the other elements of the mark and it may not be pronounced by consumers referring to the sign, because it is long, it is at the bottom right-hand side of the mark and it is smaller than the rest of the elements. Regarding the figurative element of a sun, as mentioned above in section c) of this decision, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. Therefore, consumers will more readily focus on and pronounce the neologism ‘plug-inSOLAR’ of the contested sign.
Concerning the low degree of distinctive character of the word ‘SOLAR’ for some of the relevant goods and services, the Opposition Division notes that a finding of a low degree of distinctive character for the earlier marks would not preclude the conclusion that there exists a likelihood of confusion between the marks. While the distinctive character of the earlier marks must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, on the one hand, and a contested EUTM that is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).
In the light of all the foregoing, and also taking into account the principles of interdependence outlined above in this section, there is reason to assume that the relevant public, even professional consumers with a high degree of attention, may be misled into thinking that the identical and similar goods bearing the overall similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.
Considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier marks, ‘SOLAR’. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, on the part of the Danish-speaking part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 954 873 and Danish trade mark registration No 200 901 247. Regarding European Union trade mark registration No 10 954 873, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, as stated above in section c) of this decision.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks. This finding is true even for the goods that are similar to only a low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them. The similarity between the signs, due to their coinciding element ‘SOLAR’, outweighs the low degree of similarity between some of the goods in Classes 9 and 11.
The rest of the contested goods and 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 goods and services cannot be successful.
The opponent has also based its opposition on the following earlier rights:
- European Union trade mark registration No 6 467 286 for the word mark ‘SOLAR STRONGER TOGETHER’. The list of goods and services given in the notice of opposition for European Union trade mark No 6 467 286, constituting the basis of the opposition, does not correspond to the opponent’s actual goods and services. On 14/04/2016, the opponent requested a limitation to the specification of the list of goods and services. Therefore, the goods and services, regarding European Union trade mark No 6 467 286, on which the opposition is based are, inter alia, the following:
Class 9 Electric apparatus and instruments, namely weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electric apparatus and instruments and fittings therefor in the form of switch boxes, switches, ammeters and chokes, electric apparatus for remote ignition and for attracting and killing insects, electric wires, electric fittings, electric lines, electric cables, plugs and sockets, electronic magnetic coils, electric elements, telerupters, connecting terminals, electric couplings and connections for electric lines, distribution boxes, connectors and boxes for electric purposes, sheaths for electric cables, insulated copper wire, electric condensers, electric contacts, electric conductors, electric wiring harnesses, electrical reversers and relays, electrical coils and holders therefor, electric locks, electric converters, limiters and reducers (electricity), inverters and cut-outs, switchboards, electronic transistors, transformers, voltmeters; measuring apparatus (not for medical use), including electric measuring instruments, tachometers, temperature indicators, thermostats, exposure meters, pressure monitoring apparatus and pressure measuring apparatus, heat fusers and fuse wire; signalling apparatus and instruments, including acoustic alarms, alarm devices, fire alarms and sound alarms, electric alarm bells, buzzers, detectors, including smoke detectors, electric door bells, signal bells, automatic time switches, ringers, signal lanterns, signalling panels, luminous or mechanical sirens, anti-theft warning apparatus and theft prevention installations, electric; batteries, including electric batteries and battery chargers; electric soldering irons and soldering apparatus; optical apparatus and instruments, light conducting filaments (optical fibres);electric installations for the remote control of industrial operations, electric control apparatus and panels, lightning rods; levels, computer software, computer hardware, mobile telephones; electric apparatus for data capture, including electronic bar code and chip readers; none of the above mentioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
Class 11 Apparatus, equipment and fittings for sanitary installations, refrigerating and heating apparatus, ventilation apparatus; none of the aforementioned goods in this class for or in relation to gas turbines, gas compressors or gas turbines packages.
- Finnish trade mark registration No 232 300 for the word mark ‘SOLAR’ for the following goods and services:
The list of goods and services given in the notice of opposition for Finnish trade mark registration No 232 300 does not correspond to the translation of the trade mark registration certificate submitted for substantiation purposes on the opponent’s arguments of 06/12/2013. The Opposition division will rely on the list of goods and services as included in the submitted translation. Therefore, the goods and services are the following:
Class 9 Electrical apparatus and instruments and belongings; signal apparatus and instruments.
Class 11 Apparatus for heating, stream generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 35 Agency and distribution business, including export and import agency services.
As a preliminary remark the Opposition division notes that the term ‘including’, used in the opponent’s list of services, indicates that the specific 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 (on the use of ‘in particular’ see a reference in judgment of 09/04/2003, T 224/01, ‘Nu Tride’).
The remaining contested goods and services have already been found to be dissimilar to the opponent’s goods in Classes 9 and 11. This comparison, as covered by the earlier marks in section a) of this decision, is applicable mutatis mutandis when comparing these same remaining contested goods and services with the rest of the goods in Class 9 and 11 of earlier European Union trade mark registration No 6 467 286 and earlier Finnish trade mark registration No 232 300. The services in Class 35 are agency and distribution business mainly intended for providing a service for people or companies, especially by giving them information or making arrangements. The remaining contested goods and services, namely apparatus for lighting; parts of [apparatus for lighting] in Class 11 and generation of electricity from solar energy; generation of energy from renewable sources in Class 40, as analysed above in section a) of this decision, have nothing in common with the opponent’s services in Class 35. They have different natures, purposes and methods of use. They are neither in competition nor complementary. Moreover, their distribution channels differ and they target different publics.
Consequently, the outcome cannot be different in relation to these earlier rights with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Francesca CANGERI SERRANO | José Antonio GARRIDO OTAOLA
| Michele M. BENEDETTI-ALOISI |
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.