PRO4U | Decision 2699489 - IMPREX EUROPE, S.L. v. Thierry GRISON
Date Published: Sep 28, 2017
OPPOSITION No B 2 699 489
Imprex Europe, S.L., c/ Avenida de la Industria, 22, Polígono Industrial La Cantueña, 28947 Fuenlabrada (Madrid), Spain (opponent), represented by Piedad Camacho Pina, C/ Maiquez 22, Entreplanta C, 28009 Madrid, Spain (professional representative)
a g a i n s t
Thierry Grison, 3 rue Jean Moulin, 95130 Franconville, France (applicant), represented by Ipside, 29 rue de Lisbonne, 75008 Paris, France (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 699 489 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 010 945, namely against all of the goods in Class 9 and some of the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 14 432 108. 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 14 432 108.
- The goods and services
The goods on which the opposition is based are the following:
Class 9: Apparatus and instruments for conducting, switching, measuring or controlling electricity; thermionic tubes; fluorescent screens; light emitting diodes (LED); light emitting diode displays.
The contested goods and services are the following:
Class 9: Remote controls, demodulators, plugs, sockets and other contacts [electric connections], branch boxes, splice boxes, circuit breakers, cables and wires, apparatus and instruments for controlling electricity, batteries, electric; electrical wiring; devices for joining electric cables, electric meters and panels, electrical adapters, switches, electric; electric door openers, alarms, batteries, bells (warning devices), electric door bells, measuring and tracing instruments; detectors; protection devices for personal use against accidents; security and alarm systems for the protection of persons and property; alarm control units; video surveillance apparatus; intercoms; temperature controlling apparatus; light dimmers (regulators), weather stations (sensors used in meteorology).
Class 35: Distribution of flyers, prospectuses and printed matter relating to electrical and electronic equipment; business consultancy in the purchase of electrical and electronic equipment; retailing or wholesaling, sale via mail order and retailing or wholesaling via the internet or via all kinds of electronic remote electrical and electronic equipment; all the aforesaid services relating to ironmongery, small items of metal hardware, materials for DIY, building materials, and electrical and electronic equipment.
Some of the contested goods and services are identical to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed partly at the public at large and partly at professional customers with specific knowledge or expertise in the electrical and/or electronic field.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and (technical) conditions of the purchased goods and services.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
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 the commercial origin. It may be more difficult to establish that the public may be confused about the origin due to similarities that pertain solely to non-distinctive elements.
The combination of the elements ‘4’ and ‘U’ is commonly used and understood in part of the EU, for example the English-speaking part of the public, as the expression ‘for you’ which will be associated with the idea that the goods and services at stake are tailor-made and designated for the consumers. Therefore, it is rather weak for this part of the public for any goods or services.
However, for the other part of the public, namely the non-English-speaking part of the relevant public, it has no meaning and so this combination of number and letter is distinctive.
The Opposition Division will first examine the opposition in relation to the part of the public for which the combination of ‘4’ and ‘U’ has no meaning and has a normal degree of distinctiveness, such as the EU-public speaking Baltic, Slavic or Finno-Ugric languages, such as in Poland, Slovakia, Latvia, Hungary or Estonia, and who, at the same time, do not speak English as a foreign language, since this part of the public is more prone to confusion.
The earlier mark is a figurative mark composed of the words ‘for you’ written in a fairly standard red typeface and a much bigger digit ‘4’ followed by the letter ‘U’ placed beneath more towards the right side, both written in a fairly standard white bold typeface. All these elements are placed against a red square, of which two corners are pointed and the other two are round, with also a slightly shaded pink part in which the words ‘for you’ are placed. Having said that, the Opposition Division considers the elements ‘4’ and ‘U’, due to their size, contrast from the background and central position in the mark, more visually eye-catching than others. Nonetheless, it should be pointed out that even though the frame is often used as a purely decorative element in figurative marks, in the present case, its impact cannot be ignored owing to its striking red colour.
The contested sign is a figurative one made up of the sequence ‘Pro4U’ written in green and placed under a device consisting of two curved interconnected lines in green and black. In principle, figurative elements of signs have a lesser impact in their overall impressions than their verbal elements, because the public tends to refer to trade marks by their verbal elements rather than by describing their figurative components. Nevertheless, in the present case, the figurative element occupies roughly half of the contested mark’s space and has a conspicuous position in the upper part of the sign. Moreover, this figurative element is fanciful. In that regard, it is recalled that the verbal element of a sign does not automatically have a stronger impact (31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37). The Opposition Division finds that the figurative element in the upper part of the contested sign, albeit lacking any clear meaning, for the reasoning set forth above, has the same weight as that of the sign’s verbal elements. Thus, it is considered that the contested sign does not have any elements that could be clearly considered more visually eye-catching than others.
It should be stressed that 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, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Regarding the contested sign, it should be mentioned that at least a part of the public might dissect the prefix ‘PRO’. The element ‘PRO’, according to well-established case-law, will be understood by a part of the non-English-speaking public as meaning ‘professional’ or reference hereto (11/09/14, T-127/13, Pro outdoor, EU:T:2014:767, § 58). For this part of the relevant public the word has a limited distinctiveness, as it will be perceived as an indication that the relevant goods are professional goods or target professionals. Since the following sequence, namely ‘4U’, has no meaning, for this part of the relevant public, the latter will be perceived as the most distinctive element of the mark, along with the figurative element. The remaining part of the relevant public, will understand the term ‘PRO’ as the Latin word ‘pro’ in the sense of ‘for, in favour of’, as this is the first and often only meaning for this word in languages such as German. For this part of the relevant public, the term ‘PRO’ is neither laudatory nor weak in relation to the goods at hand and has, therefore, a normal degree of distinctiveness.
Visually, the signs coincide in the elements ‘4’ and ‘U’ which are distinctive for the relevant public. Nonetheless, in the earlier mark these elements occupy a central position, whereas in the contested sign they are not only much smaller and placed at the bottom of the sign, but also the letters are preceded by the term ‘PRO’. Moreover, the marks differ in all other regards, namely in the word elements ‘for you’ of the earlier mark, the prefix ‘PRO’ of the contested sign and the graphic representation of the marks, i.e. red shaded background in the earlier mark and the relatively big device of the contested sign which has the same weight as that of the sign’s verbal elements. All these differentiating elements cannot be overlooked at all. The marks have also different beginnings and this is important, as this is the part where the consumer usually focuses its first attention; the earlier mark starts with the number ‘4’, while the contested sign begins with the letters ‘PRO’.
Taking into account all the above considerations, the signs are visually not similar. This stays true even for the part of the relevant public that will perceive the element ‘PRO’ as rather weak.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the number /4/ and letter /U/. The sound of the digit ‘4’ will depend on the relevant public’s language, e.g. ‘cztery’ in Polish, ‘vier’ in German or ‘cuatro ’in Spanish. The marks differ in the sound of the verbal elements /F-O-R/ and /Y-O-U/ of the earlier mark and the term /P-R-O/ of the contested sign. The pronunciation of the beginnings of the marks is different, i.e. the element ‘PRO’ at the beginning of the contested sign vs ‘4’ of the earlier mark pronounced by the relevant public in its own language. Therefore the beginning of the contested sign is capable of adding some distinction between the signs. The resulting difference in the pronunciation may even prevail over the similarities (14/09/2011, T-485/07, O-live, EU:T:2011:467, § 33-36).
Therefore, the signs are phonetically similar to a low degree.
Conceptually, although a part of the public in the relevant territory will perceive the combination of letters ‘PRO’ of the contested sign as ‘advantage, benefit; in favour of’ or as the abbreviation of ‘professional’, the signs as a whole have no meaning in the part of the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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 (eighth recital 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The goods and services at issue have been assumed to be identical and the level of attention varies from average to high, meaning that consumers will be more informed and observant for some of the goods and services at stake.
The Opposition Division highlights that the case at hand concerns two figurative marks which in fact only coincide in the combination of ‘4’ and ‘U’. It is a matter of fact that this combination will be understood by the relevant public in many Member States of the European Union and will be seen as weak, as it simply encourages to purchase the goods and services offered. Nevertheless, there are some territories where a part of the non-English-speaking public, will not understood ‘4U’ as explained above. The Opposition Division has, therefore, focused its analysis on the territory where there is the highest probability of confusion on the part of the consumer.
In this case, however, even accepting that the only coinciding combination enjoys a normal degree of inherent distinctiveness, the Opposition Division holds the view that there are still sufficient differences between the marks to enable the relevant consumer to distinguish between them. The marks have been found visually and conceptually not similar whereas aurally similar to a low degree. It should be pointed out that first and foremost the overall stylisation, colours and getup of the signs is different. Secondly, the eye of the consumer will be drawn to the combination ‘4U’ of the earlier mark, on the account of its dominance within the sign as a whole, however, this is not the case insofar as the contested sign is concerned, which consists of the device with an equal impact on the relevant public’s perception as the verbal elements of the sign, namely ‘Pro4U’. This also means that the relevant public will refer to the contested sign as ‘P-R-O-4-U’. The earlier mark, on the other hand, will be referred to as ‘4-U-F-O-R-Y-O-U’ or ‘F-O-R-Y-O-U-4-U’. Even assuming that the consumer does pronounce the earlier mark as starting with the coinciding elements, i.e. as ‘4-U-F-O-R-Y-O-U’, or even just as ‘4-U’, there are still ample differences between the signs to enable consumers to distinguish between them.
In light of the above, although the signs coincide in the digit ‘4’ followed by the letter ‘U’, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences, additional letters, graphic elements and verbal elements that are not shared by the marks, to outweigh the similarities between them. Moreover, as stated above, consumers generally pay greater attention to the beginning of a mark than to the end (17/03/2004, T-183/02 and 17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 51; 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 38). Considering the differences at the beginning of the marks under comparison may be sufficient to rule out low aural similarity between the signs (see judgments of 16/01/2008, T-112/06, Idea, EU:T:2008:10, § 54, and 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39 and the case-law cited therein; 08/07/2009, T 240/08, Oli, EU:T:2009:258, § 33-36). This states true even for the public with average level of attention.
The absence of a likelihood of confusion equally applies to the part of the public for which the combination ’4U’ is weak. This is because, as a result of the weak character of that sequence, that part of the public will perceive the signs as being even less similar. The fact that two marks carry the same commonplace laudatory message would not lead consumers to make a mental connection between the signs.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that the opponent has also based its opposition on Spanish trade mark registration No 3 020 281 for the figurative mark for apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; thermionic valves; thermostats; thermostats, timers; fluorescent screens; presence and movement detectors; plugs, sockets and other contacts [electric connections]; primary cells batteries; signal lanterns; watering control apparatus; heat regulating apparatus in Class 9.
This earlier right invoked by the opponent is (not) similar to the contested mark as the earlier mark analysed above. Despite the slight differences between the opponent’s marks (the shape of the frame and shade of red colour), the reasoning on (lack of) similarity of the compared signs and, accordingly, the finding of no likelihood of confusion between the marks, assuming identity of the goods and services at stake, is the same in both cases. Therefore, the outcome cannot be different; there is no likelihood of confusion between the marks.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Klaudia MISZTAL | Vita VORONECKAITE |
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.