TAURUS | Decision 2760158
Date Published: Sep 24, 2017
OPPOSITION No B 2 760 158
Electrodomesticos Taurus S.L., Avenida Barcelona s/n, 25790 Oliana (Lleida), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)
a g a i n s t
Taurus Sicherheitstechnik GmbH, Sportplatzpromenade 396, 3034 Maria Anzbach, Austria (applicant), represented by Hanno Stromberger, Peraustr. 29, 9500 Villach, Austria (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 760 158 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 439 664 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 439 664 , namely against all the goods and services in Classes 9 and 37. The opposition is based on European Union trade mark registration No 3 786 662 for the word mark ‘TAURUS’. 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 goods and services
The goods on which the opposition is based are the following:
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.
The contested goods and services are the following:
Class 9: Alarms; Alarm bells; Alarm systems; Alarm sensors; Alarm signalling transmitters; Alarm signalling receivers; Alarms and warning equipment; Acoustic [sound] alarms; Personal alarms; Electric alarms; Alarm central units; Alarms for the detection of inflammable gases; Video door telephone apparatus; Video cameras adapted for monitoring purposes; Video surveillance systems; Video intercom apparatus; Video monitor controllers; Electric and electronic video surveillance installations; Closed circuit television apparatus; Intercoms; Intercommunication apparatus; Access control installations (Automatic -); Electrical access control apparatus; Biometric access control systems; Biometric hand readers; Biometric identification systems; Biometric voice recognition systems; Biometric fingerprint readers; Biometric retinal scanners; Computer software for biometric systems for the identification and authentication of persons; Access control units (Automatic -); Access control systems (Electric - ); Access control systems (Automatic -); Access security apparatus (Automatic -); Smoke alarms; Electric alarms for smoke; Carbon monoxide detectors; Combination carbon monoxide and smoke detectors; Sirens; Motion sensors; Glass breakage detectors; Fog signals, non-explosive; Safety, security, protection and signalling devices; Safety monitoring apparatus [electric]; Safety locking devices [electric]; Security surveillance apparatus; Software to control building environmental, access and security systems; Wireless controllers to remotely monitor and control the function and status of security systems; Signal transmitters; Signalling lamps; Signalling apparatus; Burglar alarms; Electrical and electronic burglar alarms; Microwave type intruder sensors; Intruder detecting apparatus [other than for vehicles]; Ultrasonic wave type intruder sensors; Warning apparatus [other than for vehicles]; Fire control apparatus; Fire protection apparatus; Fire detectors; Sprinkler systems for fire protection; Flame detectors; Closed circuit television cameras; Monitoring units [electric]; Electronic surveillance apparatus; Monitoring apparatus, electric; Monitoring control apparatus [electric]; Network monitoring cameras for surveillance; Monitoring instruments; Access control devices.
Class 37: Services for the installation of alarms; Repair of alarms; Maintenance and servicing of security alarms; Alarm, lock and safe installation, maintenance and repair; Installation of security systems; Information services relating to installation of security systems; Installation of burglar alarms; Advisory services relating to the installation of fire prevention equipment; Installation fire detection systems; Maintenance and servicing of fire alarm systems.
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 Signalling apparatus are identically contained in both lists of goods in Class 9.
The contested Alarms; Alarm bells; Alarm systems; Alarm sensors; Alarm signalling transmitters; Alarm signalling receivers; Alarms and warning equipment; Acoustic [sound] alarms; Personal alarms; Electric alarms; Alarm central units; Alarms for the detection of inflammable gases; Smoke alarms; Electric alarms for smoke; Fire control apparatus; Fire protection apparatus; Fire detectors; Flame detectors; Burglar alarms; Sirens; Fog signals, non-explosive; Safety, security, protection and signalling devices; Electrical and electronic burglar alarms; Warning apparatus [other than for vehicles] are included in, or overlap with, the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.
The contested Video door telephone apparatus; Video cameras adapted for monitoring purposes; Video surveillance systems; Video intercom apparatus; Video monitor controllers; Electric and electronic video surveillance installations; Closed circuit television apparatus; Intercoms; Intercommunication apparatus are included, or overlap with, in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.
The contested Signal transmitters; Signalling lamps are included in the broad category of the opponent’s signalling apparatus. Therefore, they are identical.
The contested Access control installations (Automatic -); Electrical access control apparatus; Biometric access control systems; Biometric hand readers; Biometric identification systems; Biometric voice recognition systems; Biometric fingerprint readers; Biometric retinal scanners; Access control units (Automatic -); Access control systems (Electric - ); Access control systems (Automatic -); Access security apparatus (Automatic -); Carbon monoxide detectors; Combination carbon monoxide and smoke detectors; Security surveillance apparatus; Electronic surveillance apparatus; Network monitoring cameras for surveillance; Safety monitoring apparatus [electric]; Motion sensors; Glass breakage detectors; Microwave type intruder sensors; Intruder detecting apparatus [other than for vehicles]; Ultrasonic wave type intruder sensors; Closed circuit television cameras; Monitoring units [electric]; Monitoring apparatus, electric; Monitoring control apparatus [electric]; Monitoring instruments; Access control devices; Wireless controllers to remotely monitor and control the function and status of security systems are included in, or overlap with, the broad category of the opponent’s checking (supervision) apparatus. Therefore, they are identical.
The contested Sprinkler systems for fire protection are included in the broad category of the opponent’s fire-extinguishing apparatus. Therefore, they are identical.
The contested Safety locking devices [electric] are at least similar to the opponent’s life-saving apparatus and instruments as they have the same nature, can have the same purpose (saving lives), derive from the same producers, target the same public and be distributed through the same channels.
The contested Computer software for biometric systems for the identification and authentication of persons; Software to control building environmental, access and security systems are similar to the opponent’s computers as these goods are complementary and they have the same distribution channels, relevant public and producer.
Contested services in Class 37
The contested Services for the installation of alarms; Repair of alarms; Maintenance and servicing of security alarms; Alarm, lock and safe installation, maintenance and repair; Installation of security systems; Information services relating to installation of security systems; Installation of burglar alarms; Advisory services relating to the installation of fire prevention equipment; Installation fire detection systems; Maintenance and servicing of fire alarm systems are similar to the opponent’s signalling apparatus and instruments as they share the providers/producers, target the same public and can have the same distribution channels. Indeed, as seen above, the opponent’s broad category includes alarms and devices used in fire detection for example. Although the applicant claims that the goods and services cannot be similar, 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.
- 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 are specialised goods directed at both general public and business customers with specific professional knowledge or expertise.
The degree of attention is considered rather high because of the specific technical nature of the goods.
- The signs
TAURUS | |
Earlier trade mark | Contested sign |
The relevant territory is 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 earlier mark is a word mark containing a single element ‘TAURUS’. This word is meaningful in certain languages of the relevant territory, like Spanish, English and Italian and refers to an animal (bull) or the second sign of the zodiac. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for whom ‘TAURUS’, is distinctive as there is no correlation with the goods and services.
The contested sign is a figurative mark containing the figurative element, depicting a bull’s head inside a circle, and, to the right, the verbal element ‘TAURUS’ depicted in ordinary style upper case letters, all in black. Both elements are distinctive in relation to the relevant goods given the absence of any association, however, when a sign consists 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). As a result, the figurative element mainly reinforces the meaning of the verbal element, which was addressed above. None of the elements is dominant.
Visually, the signs coincide in the verbal elements. However, they differ in that the contested sign additionally contains a figurative element, which, as described above, has less trade mark significance than the verbal element. Therefore, the signs are visually highly similar.
Aurally, the signs are identical, since the figurative element in the contested sign will not be pronounced.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as an animal (bull) or the second zodiac sign, the signs are conceptually identical.
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 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
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).
The signs are visually highly similar and aurally and conceptually identical. Since the goods and services are either identical or similar, it is highly conceivable that the relevant consumer (even highly attentive professionals) would perceive the contested sign as a variation of the earlier mark. 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, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 482 519. 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 that the contested trade mark must be rejected for all the contested 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.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Martin EBERL | Milda CERNIAUSKAITE | Vanessa PAGE |
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.