PRIMO | Decision 2714122

Date Published: Sep 22, 2017

OPPOSITION No B 2 714 122

Ista Deutschland GmbH, Grugaplatz 2, 45131 Essen, Germany (opponent), represented by Rechtsanwalt Dr. Lindenberg, Garather Schlossallee 19, 40595 Düsseldorf, Germany (professional representative)

a g a i n s t

TM Technologie - Spółka z o.o., Morawica 355, 32-084 Morawica, Poland (applicant), represented by Triloka Czarnik Ozog Kancelaria Patentowa I Adwokacka SP.P., ul. Kornela Ujejskiego 12/7, 30-102 Kraków, Poland (professional representative).

On 04/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 122 is partially upheld, namely for the following contested goods:

Class 9: Electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; signalling, checking (supervision) and controlling electric and electronic apparatus; acoustic signal transmitters; alarms; burglar alarms; sound alarms; fire alarms; bells [warning devices]; alarm bells, electric; signal bells; theft prevention installations, electric; sprinkler systems for fire protection; signals, luminous or mechanical; luminous signs; flashing lights (luminous signals); distribution boards (electricity); signalling panels, luminous or mechanical; remote control apparatus; fire escapes; detectors; smoke detectors.

2.        European Union trade mark application No 15 203 888 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 203 888 ‘PRIMO’ in Classes 9 and 11. The opposition is based on European Union trade mark registration No 14 793 591 ‘doprimo’. The opponent invoked Article 8(1)(b) EUTMR.

On 17/10/2016 and 12/01/2017, the applicant filed limitations of the contested mark. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the remaining goods in Classes 9 and 11.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 9: Measuring, signalling and radio apparatus, equipment and instruments; heating cost distributors, calorimeters, heat meters, cold meters, water meters, electricity meters, gas meters, hygrometers and radio modules relating thereto; equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for the measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto; gas indicators; smoke alarms and fire alarms; computer hardware and computer software for the aforesaid goods; structural and replacement parts for all of the aforesaid goods.

The contested goods are the following:

Class 9: Electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; signalling, checking (supervision) and controlling electric and electronic apparatus; acoustic signal transmitters; alarms; burglar alarms; sound alarms; fire alarms; bells [warning devices]; alarm bells, electric; signal bells; theft prevention installations, electric; sprinkler systems for fire protection; signals, luminous or mechanical; luminous signs; flashing lights (luminous signals); distribution boards (electricity); signalling panels, luminous or mechanical; remote control apparatus; fire escapes; detectors; smoke detectors.

Class 11: Electric apparatus for lighting and parts therefor; electric lamps, in particular light fittings, safety lamps, emergency lamps; electric safety lighting installations; torches for lighting; pocket searchlights; pocket searchlights; ceiling lights; light diffusers.

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

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested fire alarms is identically contained in both lists of goods.

The contested signalling, checking (supervision) electric and electronic apparatus are included in the broad category of the opponent’s measuring, signalling apparatus. Therefore, they are identical.

The contested electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class and the contested detectors; smoke detectors that can consist of smoke alarms and fire alarms that can detect the fire include, as broader categories, the opponent’s smoke alarms and fire alarms. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested acoustic signal transmitters; alarms; burglar alarms; sound alarms; bells [warning devices]; alarm bells, electric; signal bells; signals, luminous or mechanical; luminous signs; flashing lights (luminous signals); signalling panels, luminous or mechanical are included in the broad category of the opponent’s signalling apparatus. Therefore, they are identical.

The contested theft prevention installations, electric can consist of signalling devices such as alarms. Therefore, since they overlap with the opponent’s signalling apparatus, equipment and instruments, they are identical.

The contested remote control apparatus is included in the broad category of the opponent’s equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for regulating energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto because remote controls can be used to perform these functions. Therefore, they are identical.

The contested sprinkler systems for fire protection; fire escapes; smoke detectors are similar to the opponent’s smoke alarms and fire alarms since they have the same purpose protecting from the fire and they are complementary. Furthermore, distribution channels, producers and final consumers coincide.

The contested controlling electric and electronic apparatus; distribution boards (electricity) are similar to the opponent’s equipment and apparatus for the […] regulating […] of […] electricity as they have the same purpose and they can coincide in producer, end user and distribution channels.

Contested goods in Class 11

However, the contested electric apparatus for lighting and parts therefor; electric lamps, in particular light fittings, safety lamps, emergency lamps; electric safety lighting installations; torches for lighting; pocket searchlights; pocket searchlights; ceiling lights; light diffusers do not have sufficient connection with any of the opponent’s goods in Class 9 since their purposes, method of use, distribution channels, manufacturers and final consumers are normally different. Therefore, they are dissimilar.

It must be reminded that the term ‘in particular’, used in the applicant’s list, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

doprimo	PRIMO
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 marks are word marks consisting of the element ‘doprimo’ in the case of the earlier mark and of the element ‘PRIMO’ in the case of the contested sign. For word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower characters.

These verbal elements have no meaning and are distinctive in some countries such as in those countries where Bulgarian is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the public.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘PRIMO’ that constitute the sole and unique element of the contested sign. The signs differ in the 2 additional letters/sounds ‘DO’ placed at the beginning of the earlier mark. Despite the fact the earlier mark will be pronounced in 3 syllables, ‘DO-PRI-MO’, and the contested sign in 2 syllables, ‘PRI-MO’, they still have a similar rhythm and intonation because of their coinciding second and third syllables.

Consequently, the signs are visually and aurally similar to an average degree.  

Conceptually, neither of the signs has a meaning for the Bulgarian−speaking part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

In the present case, the goods are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually and aurally similar to an average degree on account of the overwhelming coincidences existing between them. Indeed, the signs, both consisting only of one single verbal element, only differ in the 2 first letters of the earlier mark.  Although consumers generally focus on the beginning of a sign when they encounter a trade mark, as argued by the applicant, this is only one of the factors to take into consideration when evaluating the existence of a likelihood of confusion. Indeed, in the present case, despite the fact that the signs have a different beginning, the differences between them are less striking than the coincidences and there is no further element to help consumers to differentiate one signs from another. In such a case, the number of coincidences will cause an impact on the public that cannot be neglected and the argument of the applicant must therefore be set aside.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration Nº 14 793 591. 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 found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

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.