SISTEL | Decision 2469446
Date Published: Sep 25, 2017
OPPOSITION No B 2 469 446
S.A. Sistel, Solsonès 89, 08211 Castellar del Vallès, Spain (opponent), represented by Abaco Propiedad Industrial, Sant Bonaventura, 18 Bajos 08172 St Cugat del Vallès,
Spain (professional representative)
a g a i n s t
Sistel s.r.l, C.so Vercelli, 273,10155 Torino, Italy, (holder), represented by Maurizio Ferro, Corso Francia n. 161, 10139 Torino, Italy (professional representative).
On 14/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 469 446 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 225 477. The opposition is based on Spanish trade mark registration No 1 540 963 and European Union trade mark registration No 4 915 815. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION - SPANISH TRADE MARK No 1 540 963
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.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
In the present case as regards Spanish trade mark No 1 540 963 , the evidence filed by the opponent is in Spanish whereas the language of the proceedings is English and no translation has been submitted.
On 22/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. Following a suspension of the proceedings, this time limit finally expired on 28/01/2017.
The opponent did not submit the necessary translation.
According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that the evidence filed by the opponent cannot be taken into account.
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 Spanish trade mark registration No 1 540 963.
Therefore, the Opposition Division will in the following examine the opposition in relation to the opponent’s European Union trade mark registration No 4 915 815.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 35: Advertising; business management; business administration; office functions.
Class 37: Building construction; repair; installation services.
Class 39: Transport; packaging and storage of goods; travel arrangement.
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; legal services.
The contested goods are the following:
Class 9: Electrical wiring installations; signal cables; data transmission cables; electric cables and wires; electronic cables; electric, electronic and data transmission cable connectors; insulated electrical cables and cable connectors; coaxial cables; electric wiring harnesses; USB cables; Ethernet cables; winding wires; computer cables; electrical power extension cords; measuring cables; connection cables; cable splices for electric cables; network cabling; integrated circuits; interface electric cables; electric adapter cables; connection blocks for electric cables; junction boxes; electric control boxes.
Some of the contested goods are identical to goods on which the opposition is based (for example the contested electronic cables are included in the broad category of the opponent’s apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity in Class 9). 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 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 assumed to be identical (for the reasons explained above) are mainly directed at the public at large, including business customers with specific knowledge or expertise, although, for example, the integrated circuits mostly target professional consumers. The degree of attention may vary from average to high depending on the nature and/or price of the goods or on the knowledge, experience and purchase involvement of the relevant public (for example the integrated circuits are of a highly technical nature and would therefore receive a higher than average degree of attention).
- The signs
6tl | |
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 earlier mark contains the numeral 6 and the letters ‘tl’. In the absence of any relevant arguments by the parties in this matter, and to the knowledge of the Opposition Division, the numeral ‘6’ does not have any particular function in terms of size or other commonly used inherent characteristics of the earlier goods and services at issue. It is, therefore, a distinctive element. The same applies to the letters which do not have any obvious meanings in relation to the goods and services.
The contested sign, a figurative mark, is composed of the meaningless and distinctive verbal element ‘SISTEL’, depicted in a stylised blue upper case font.
The opponent argues that ‘6tl’ ‘is endeavoured to be an acronym for SISTEL’, since the number ‘6’ has a similar pronunciation to the initial element of ‘SISTEL’ in several languages, for example, in English, French and German. The Opposition Division finds that the earlier mark has a higher degree of phonetic similarity to the contested sign in French, than in other languages of the European Union. Therefore, the Opposition Division finds it appropriate to focus its examination of the opposition in relation to the opponent’s earlier mark for the French-speaking part of the public, since this is the best-case scenario for examining the opponent’s case.
Visually, the number ‘6’ in the earlier mark is not present in the contested sign (‘SISTEL’) and/or has no similarity to any element (verbal or figurative) in the contested sign. Moreover, the number ‘6’ is the initial element of the earlier mark and is, since the public reads from left to right, the element in the sign that first catches the attention of the reader. It is true that the earlier mark’s following letters ‘t’ and ‘l’ are also found in the contested sign. Nevertheless, these letters are combined differently in the signs; they follow each other directly in the earlier mark whereas they are separated by the letter ‘E’ in the contested sign. Furthermore, the signs differ in the four additional letters (‘SIS*E*’) of the contested sign and in the contested sign’s stylised font (in particular, the initial letter ‘S’). Therefore, the signs are visually dissimilar.
Aurally, the earlier mark will be pronounced as ‘six-t-l’ or as ‘six-tel’ (by adding the sound of the vowel ‘e’ in order to make the pronunciation of the consecutive consonant easier) by the public taken into account, with the ‘x’ being pronounced as a ‘s’, while the contested sign will be pronounced as ‘sis-tel’. Therefore, the signs are almost identical phonetically for the part of the public that pronounces the earlier mark as ‘six-tel’. For the consumers that pronounce the earlier mark as ‘six-t-l’ (i.e. without the additional sound of an ‘e’, pronounced after the ‘t’), the signs’ first syllables are identical while the difference between the pronunciation of the letters ‘t-l’ in the earlier mark and the second and final syllable of the contested sign (‘tel’) is hardly audible. Therefore, insofar the earlier mark is pronounced as ‘six-t-l’, the signs are aurally highly similar.
Conceptually, the signs have no meaning as a whole. However, the earlier mark will be perceived as containing the concept of the number ‘6’. Therefore, the signs are conceptually not 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
As stated above in section c) of this decision, the assessment of the similarity of the signs has been carried out on the basis of how the French-speaking part of the public will perceive the signs. This is the most favourable scenario in which the opponent’s case can be examined, which is, however, without prejudice to the holder, as will be shown below.
Although the signs are phonetically almost identical or highly similar for the public taken into consideration, the signs are conceptually not similar and visually dissimilar. In this regard, account is taken of the fact that the majority of the contested goods (e.g. signal- and USB cables) are ordinary consumer products that will not be frequently referred to or ordered orally over-the-counter, since they are more likely to be taken from the shelf in a supermarket or in a specialised electric- or IT-store. Therefore, in relation to the majority of the contested goods it is highly probable that they will not be bought before a visual inspection is carried out in order to make sure that they correspond to the desired model, whereas for the remaining contested goods, which are of a highly technical nature (e.g. the integrated circuits), the consumers will do some investigation before buying such goods. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Moreover, for goods such as the integrated circuits the average consumer’s level of attention is high, making the consumers more able to distinguish between the signs, and, in addition, the signs are conceptually not similar which further helps the consumers to distinguish between the signs. Finally, the earlier mark enjoys a normal degree of distinctiveness as no enhanced distinctiveness has been claimed or proven. Consequently, the fact that the signs are aurally almost identical or highly similar cannot counterbalance the absence of visual and conceptual similarity between them, even for goods assumed to be identical.
Therefore, the Opposition Division concludes that there is no likelihood of confusion on the part of the French-speaking part of the public.
For the sake of completeness, the Opposition Division points out that there is no need to proceed further with the comparison of the signs for the non-French-speaking part of the public, as the outcome of the present decision would still be the same. Indeed, if there is no likelihood of confusion for those consumers that will pronounce the signs in French, a fortiori, there is no likelihood of confusion for those consumers who will pronounce the signs in other languages of the European Union. For example, in English (where the number ‘6’ will be pronounced with an ‘x’ as in ‘example’) or in Spanish (where the earlier mark will be pronounced as either ‘seis-te-ele’ or ‘seis-tel’) the signs are less similar phonetically.
Therefore, the opposition must be rejected.
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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Catherine MEDINA | Christian RUUD | Adriana VAN ROODEN |
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.