(Trade mark without text) | Decision 2651043

Date Published: Sep 24, 2017

OPPOSITION No B 2 651 043

Novar Ed&S Limited, Honeywell House, Arlington Business Park, Bracknell, Berkshire RG12 1EB, United Kingdom (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Microvast Power Systems Co. Ltd., No. 2198, Hongfeng Road, Huzhou City, Zhejiang 313000, People’s Republic of China, (applicant), represented by Metida Law Firm Zaboliene and Partners , Business center VERTAS Gynėjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 23/08/2017 the Opposition Division takes the following

DECISION:

1. Opposition No B 2 651 043 is partially upheld, namely for the following contested goods:

Class 9: Batteries, electric, for vehicles; accumulators, electric, for vehicles; accumulator jars; accumulator boxes; anode batteries; high tension batteries; battery chargers; capacitors; accumulators, electric; batteries, electric.

Class 12: Fork lift trucks; motor buses; motor coaches; golf carts [vehicles]; cycle cars; electric vehicles; cars; motor cars; remote control vehicles, other than toys.

2. European Union trade mark application No 14 749 279 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 14 749 279 . The opposition is based on European Union trade mark registrations No 3 525 748 “MK” and No 3 525 789. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registrations No 3 525 748 and No 3 525 789.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 05/11/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 05/11/2010 to 04/11/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 3 525 748, registered for the word mark ‘MK’.

Class 6: Racking (structures) of metal for supporting cables; covers, trays and clips of metal all for cables and pipes; joints, bends and junctions of metal all for the aforesaid goods; wall brackets and supports of metal for all the aforesaid goods; poles and posts of metal, and extruded aluminium sections, all being for use in office partitioning; screws and nuts of metal; vandal and tamper resistant fastenings for securing protective covers; couplings of metal for tubes; downpoles of metal for the distribution of cables and for the ducting of wires; flexible ducting of metal for holding electric cables; metal building elements for floors; keys, padlocks, metal shackles, all of metal and all for use for electrical safety purposes; supports for electric cables made of metal; parts and fittings for all the aforesaid goods.

Class 9: Apparatus for electric distribution, control, and connection; switches, plugs, sockets, and connections all being electric; circuit breakers and equipment for protecting electrical installations and electrical equipment; mountings for electrical apparatus; electrical test apparatus; plugs for testing electrical supply installations; apparatus for detecting the presence of electricity; electricity detectors for industrial purposes; voltage testing devices; electrical detectors for locating sub surface cables; electric switched spurs; electric buzzers; electrical terminals; push buttons for bells; light indicators for use in electrical circuits; illuminated switches; electric door bells and chimes; electronic control apparatus for lighting; grid switch panels; socket outlets for coaxial cable plugs; aerial diplexers for television, satellite and radio; isolated socket outlets; control units for electric appliances; indication apparatus for displaying information; electrical control panels for fire detection systems, fire alarm systems, and for burglar alarm systems; battery chargers; battery backup power units and uninterruptible power supply apparatus, all being parts of time switches; diffuser lenses for lamps; identification labels and sheaths for electric wires and electric connections; computer controlled building management systems; computer software and computer programmes for use in building management systems; electric and electronic door entry apparatus, fire alarms, fire detection apparatus and installations, smoke detectors, detectors incorporating radio-active elements (radioisotopes), gas detectors, heat detectors, electric alarm bells and signal bells, loudspeakers, devices incorporating micro-processors for monitoring and for controlling interface converters and units for electrical apparatus; computer peripheral devices; data logging apparatus; local area networking apparatus for the transmission of data; modems; electric monitoring and sensing apparatus; electricity meters; devices for switching over energy tariffs; thermostats and temperature monitoring devices for central heating and air conditioning installations; humidity sensors; electrical and electronic apparatus for valves and valve actuators; electronic interconnection apparatus; filters for radio interference suppression; audio and sound reproduction apparatus; public address systems; intercom apparatus, all being parts of building management systems; telephone line jack outlets and computer terminal sockets, all being telecommunications apparatus; devices for electrical system load control; electrical energy saving apparatus; ducts; trunking; flexible ducting containing electric cables; trunking containing exposed busbars; busbars; parts and fittings for protection against electromagnetic radiation for use in electrical installations; electricity conduits; conduit boxes; conduit fittings; blanking plugs; distribution boards, boxes and consoles; fuses; fuse boxes; insulated copper wire; electric cables; electric conductors; timing devices; time clocks; time delay switches; automatic time switches; digital time switches; interrupters; transformers; relays being contactors; earth leakage circuit protection apparatus; earth leakage circuit breakers; residual current devices; earth leakage protected socket outlet boxes; protection devices for electric circuits; electrical power conditioning apparatus; voltage spike suppressors; capacitors; choking coils; apparatus for protecting against the effects of lightning, limiters, electrical surge arrestors, electrical noise suppressor apparatus, all being parts and fittings of electrical installations for buildings; electrical earthing apparatus; earth terminals and connections; earthing conductors; earth electrode termination box; earthing rings for electrical conduit; boxes for electrical connections, plugs, sockets and switches all being waterproof, or splashproof, or adapted to exclude the ingress of dust or water; static apparatus for charging batteries and for supplying power for electric vehicles and caravans; electric couplings for external use; cables, extension reels and extension leads; low voltage switching devices; dimmers and regulators for electric lights; apparatus for controlling electrical power; electric regulating apparatus; heat regulating apparatus; remote control apparatus; passive infra red detectors; ultrasonic sound emitters and ultrasonic sound detectors; photoelectric switches and sensors; key operated switches; safety locking devices (electric); lockable switches (electric); switchboxes (electricity); housings, cases and cabinets for electrical and electronic equipment; junction boxes; junction sleeves for electric cables; electrical adaptors; wire connectors (electricity); electric wires; covers for electrical enclosures; apparatus for automatically controlling electric lights; temperature sensors; parts and fittings for all the above.

Class 11: Apparatus for lighting; sockets for electric lights; mountings for electric lighting; electric lamps; electrical light fittings; emergency lighting fittings and apparatus; battery operated lighting for buildings; regulating accessories for water, air or gas apparatus and pipes, regulating and safety accessories for steam generating installations, lighting being for use with security systems; all being parts and fittings of building management systems; light diffusers; fluorescent tube fittings; indicator lamps; lamp hanging supports; lampshade holders; luminaires; neon lamps for illumination; parts and fittings for all the aforesaid goods.

Class 16: Instructional and teaching materials, technical manuals, printed matter and signage and all relating to electricity, energy conservation, fire and safety; materials for use in vocational training courses relating to electrical engineering, electrical distribution and electrical installations.

Class 17: Rings of rubber, rubber stoppers, sealant compounds for joints, sealing devices and covers all for joints, waterproof packings and glands, gaskets, grommets made of rubber, synthetic rubber or gel, all being parts for compression glands; flexible pipes and flexible tubes, not of metal; insulators for cables; insulators for electrical mains; junctions, not of metal, for pipes; couplings of plastic for pipes and tubes; couplings of rubber for pipes and tubes; covers made of plastics for protecting electrical components; covers made of plastics incorporating gels for forming protective seals against moisture for protecting electrical components; non-metallic flexible ducting for holding electric cables; flexible ducting of plastic; electrical insulation articles for use on joints of electric cables, splices of electric cables, terminations of electric cables, and for electric conductors; and parts and fittings for all the aforesaid goods.

Class 19: Non-metallic rigid pipes for building; non-metallic building elements for use in the construction of floors and for the supply of services; non-metallic skirtings, architrave; dado rails, and cornices; joints for cable conduit; non-metallic housing units; boxes, plates, conduits, glands, flanges, blanking plates and blanking plugs, all for providing electric insulation and all made of plastics; and parts and fittings for all the aforesaid goods.

Class 20: Trunking and conduits of plastic for the supply of services (such as power) to office and laboratory furniture, and fitting therefor; boxes made of plastics; grommets, supports and clips all made of plastics and for pipes and electric cables; key tags of non-metallic materials; and parts and fittings for all the aforesaid goods.

Class 37: Advisory services relating to the installation of electrical services for the construction of buildings; advisory services relating to the repair, maintenance, renovation and improvement of electrical services for buildings; advisory services relating to the installation of environmental control, lighting, heating and ventilating installations; advisory services relating to the installation of building management systems; advisory services relating to the installation of fire alarm systems, fire alarms, smoke detectors and emergency lighting; advisory services relating to computer installations and computer based systems for all of the aforesaid goods; building construction supervision; construction information; electrical installation; installation of electrical apparatus, repair and maintenance; installation of apparatus for heating and ventilating; wiring of buildings for electrical power and communication services.

Class 41: Arranging and conducting of seminars, training workshops, and training courses all relating to electricity or the use of electricity; publication and distribution of books and texts, all relating to electricity or the use of electricity; production and distribution of videotape, film and audio tape recordings for educational and training purposes, all relating to electricity or the use of electricity; practical training, teaching and tuition, all relating to the use of electricity; training and training services relating to electrical engineering; publication of materials for use in vocational training courses relating to electrical engineering, electrical distribution, and electrical installations; education services relating to electrical safety; education information relating to the safety of electrical installations, and to the protection of property and personnel from electrical hazards.

Class 42: Advisory services relating to the safety of electrical installations and to the protection of property and personnel from electrical hazards.

European Union trade mark registration No 3 525 789, registered for the figurative mark C:UsersciszemoPicturesviewimage.jpg

Class 9: Apparatus for electric distribution, control, and connection; switches, plugs, sockets, and connections all being electric; circuit breakers and equipment for protecting electrical installations and electrical equipment; mountings for electrical apparatus; electrical test apparatus; plugs for testing electrical supply installations; apparatus for detecting the presence of electricity; electricity detectors for industrial purposes; voltage testing devices; electrical detectors for locating sub surface cables; electric switched spurs; electric buzzers; electrical terminals; push buttons for bells; light indicators for use in electrical circuits; illuminated switches; electric door bells and chimes; electronic control apparatus for lighting; grid switch panels; socket outlets for coaxial cable plugs; aerial diplexers for television, satellite and radio; isolated socket outlets; control units for electric appliances; indication apparatus for displaying information; electrical control panels for fire detection systems, fire alarm systems, and for burglar alarm systems; battery chargers; battery backup power units and uninterruptible power supply apparatus, all being parts of time switches; diffuser lenses for lamps; identification labels and sheaths for electric wires and electric connections; computer controlled building management systems; computer software and computer programmes for use in building management systems; electric and electronic door entry apparatus, fire alarms, fire detection apparatus and installations, smoke detectors, detectors incorporating radio-active elements (radioisotopes), gas detectors, heat detectors, electric alarm bells and signal bells, loudspeakers, devices incorporating micro-processors for monitoring and for controlling interface converters and units for electrical apparatus; computer peripheral devices; data logging apparatus; local area networking apparatus for the transmission of data; modems; electric monitoring and sensing apparatus; electricity meters; devices for switching over energy tariffs; thermostats and temperature monitoring devices for central heating and air conditioning installations; humidity sensors; electrical and electronic apparatus for valves and valve actuators; electronic interconnection apparatus; filters for radio interference suppression; audio and sound reproduction apparatus; public address systems; intercom apparatus, all being parts of building management systems; telephone line jack outlets and computer terminal sockets, all being telecommunications apparatus; devices for electrical system load control; electrical energy saving apparatus; ducts; trunking; flexible ducting containing electric cables; trunking containing exposed busbars; busbars; parts and fittings for protection against electromagnetic radiation for use in electrical installations; electricity conduits; conduit boxes; conduit fittings; blanking plugs; parts for providing electrical insulation; distribution boards, boxes and consoles; fuses; fuse boxes; insulated copper wire; electric cables; electric conductors; timing devices; time clocks; time delay switches; automatic time switches; digital time switches; interrupters; transformers; relays being contactors; earth leakage circuit protection apparatus; earth leakage circuit breakers; residual current devices; earth leakage protected socket outlet boxes; protection devices for electric circuits; electrical power conditioning apparatus; voltage spike suppressors; capacitors; choking coils; apparatus for protecting against the effects of lightning, limiters, electrical surge arrestors, electrical noise suppressor apparatus, all being parts and fittings of electrical installations for buildings; electrical earthing apparatus; earth terminals and connections; earthing conductors; earth electrode termination box; earthing rings for electrical conduit; boxes for electrical connections, plugs, sockets and switches all being waterproof, or splashproof, or adapted to exclude the ingress of dust or water; static apparatus for charging batteries and for supplying power for electric vehicles and caravans; electric couplings for external use; cables, extension reels and extension leads; low voltage switching devices; dimmers and regulators for electric lights; apparatus for controlling electrical power; electric regulating apparatus; heat regulating apparatus; remote control apparatus; passive infra red detectors; ultrasonic sound emitters and ultrasonic sound detectors; photoelectric switches and sensors; key operated switches; safety locking devices (electric); lockable switches (electric); switchboxes (electricity); housings, cases and cabinets for electrical and electronic equipment; junction boxes; junction sleeves for electric cables; electrical adaptors; wire connectors (electricity); electric wires; covers for electrical enclosures; apparatus for automatically controlling electric lights; temperature sensors (all being parts of heating or cooling installations); parts and fittings for all the above.

Class 11: Apparatus for lighting; sockets for electric lights; mountings for electric lighting; electric lamps; electrical light fittings; emergency lighting fittings and apparatus; battery operated lighting for buildings; regulating accessories for water, air or gas apparatus and pipes, regulating and safety accessories for steam generating installations (being parts of heating or cooling installations), lighting being for use with security systems; all being parts and fittings of building management systems; light diffusers; fluorescent tube fittings; indicator lamps; lamp hanging supports; lampshade holders; luminaires; neon lamps for illumination; parts and fittings for all the aforesaid goods.

Class 19: Non-metallic rigid pipes for building; non-metallic building elements for use in the construction of floors and for the supply of services; non-metallic skirtings, architrave, dado rails, and cornices; joints for cable conduit; non-metallic housing units; boxes, plates, conduits, glands, flanges, blanking plates and blanking plugs, all for providing electric insulation, all made of plastic; and parts and fittings for all the aforesaid goods.

Class 20: Trunking and conduits of plastic for the supply of services (such as power) to office and laboratory furniture, and fittings therefor; boxes made of plastics; grommets, supports and clips all made of plastics and for pipes and electric cables; key tags of non-metallic materials; and parts and fittings for all the aforesaid goods.

Class 42: Advisory services relating to the safety of electrical installations and to the protection of property and personnel from electrical hazards.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/12/2016, which has been extended until 16/02/2017 to submit evidence of use of the earlier trade marks. On 15/02/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

Numerous Invoices sent to different clients in the United Kingdom and Ireland within the relevant period: 2012, 2013, 2014 and 2015 showing the earlier marks as a word mark ‘MK’ and the figurative mark in relation to electrical plugs, sockets, connectors, etc.

Wikipedia excerpts dated 09/02/2017 showing the existence and history of the opponent’s earlier marks.

Press articles, dated 25/07/2011, 01/08/2013, 06/08/2012, 17/08/2013 (2 articles), 18/09/2013, 10/02/2012 showing both earlier marks (word and figurative) in relation to electrical switches, sockets and plugs, connectors, etc.

Internet excepts of the opponent’s web page www. mkelectric.com, showing the range of products of the opponent’s subsidiary MK Electric in the United Kingdom. They refer to the earlier trade marks, both, word and figurative in relation to electrical switches, sensors, plugs, circuit protection, etc.

Various excerpts of amazon.co.uk. dated 18/06/2012, 04/02/2015, together with translation and showing list of all the products offered for sales, principally under the opponent’s earlier word mark in relation to electrical switches, plugs, circuit protection, connectors, edges, etc.

Internet excerpts of www.lighting-direct.co.uk, dated 28/08/2013, 03/04/2015, 05/04/2015 showing the goods (switches, sockets, etc.) for sale under the opponent’s trade marks, both word and figurative.

On 20/05/2016, the opponent filed other documents showing the opponent’s activity as a manufacturer and distributor of electrical and electronic products in the European Union territory.

Affidavit of Michael Andrew Hill, being ECC EMEA HR Director of the opponent, dated 30/10/2015 referring to considerable turnover figures in the period 2011-2015 and showing the earlier marks (both word and figurative) as attached to the goods (wiring devices, switches, circuit protection, connectors, etc.) and packages.

Compilation of product catalogues dated 2011, 2013, 2014 and 2015 referring to the earlier marks (both word and figurative) in connection to electrical goods such as switches, plugs, channel transmitters, receivers and accessories, etc.

List of trademark registrations MK worldwide.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In its observations related to the evidence of proof of use sent by the opponent, the applicant claims that the use of the opponent’s earlier marks alters the distinctiveness of said marks as registered.

In this context the Opposition Division notes that Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court (the ‘GC’) further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established which elements are negligible. The GC has developed criteria for doing so in several judgments.

The GC has held that:

the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (judgment of 24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 36).

With regard to additions:

several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34);

if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (judgments of 30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.)

With regard to omissions:

if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (judgment of 24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

In the present case, the evidence shows principally the earlier marks as a word mark ‘MK’ and the figurative mark C:UsersciszemoPicturesviewimage.jpg in red. It is true that in documents referring to printouts showing the range of products of the opponent’s distributors, the earlier figurative mark and the word mark appear together with additional words such as ‘Electric’ or ‘by Honeywell’. In this regard, the Opposition Division notices that the additional word elements present together with the opponent’s figurative/word mark do not alter the distinctive character of the earlier marks as registered because they are either descriptive (‘Electric) or simply refer to the opponent’s distributor in the United Kingdom ‘by Honeywell’. Furthermore, the colour red in which the earlier marks are depicted in the evidence constitutes a minor visual change that that does not alter the distinctive character of the earlier marks as they were registered.

Therefore, in the case at hand the evidence filed shows the use of the earlier marks in their acceptable variations and do not alter their distinctive character within the meaning of Article 15(1)(a) and therefore, the applicant’s argument that the opponent’s earlier marks are used in such a way that alters their distinctiveness must be put aside.

The evidence in particular, invoices and press articles show that the place of use is the European Union territory, in particular the United Kingdom and Ireland. This can be inferred from the language of the documents - English, the currency mentioned in the invoices (GBP and EUR). The addresses of clients mentioned on the invoices refer to different clients based in the UK (Croydon, Cambridge, Birmingham, Leigh-on-Sea, Doncaster, Crawley Bath) and in Ireland (Tralee, Dublin, Ballybone, Mullingar, Ballymullen). Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, in particular, numerous invoices covering the relevant time refer to large quantities of goods frequently sold in the United Kingdom (6300, 550, 500, 430, 275, 190, 180, etc.) and in Ireland (500, 400, 100, etc.), under the opponent’s earlier marks (both word and figurative), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Furthermore, these quantities are confirmed by high turnover figures mentioned in the affidavit. This material relates to the opponent’s earlier marks (both word and figurative) and when analysed in conjunction with articles and/or product catalogues confirm the opponent’s intensive and longstanding use of its earlier marks in relation to various wiring goods, such as electric plugs, sockets, switches, connectors, circuit breakers, etc. Therefore, the above mentioned documents filed by the opponent provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of both earlier trade marks (word and figurative) during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for electrical goods such as switches, plugs, sockets, connections, circuit breakers, etc. These goods can be considered to form an objective subcategory of apparatus for electric distribution, control, and connection, for which the earlier trade marks are registered. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks only for apparatus for electric distribution, control, and connection.

The evidence submitted by the opponent does not show the genuine use in relation to remaining goods in Class 9 and the goods and services covered by Classes: 6, 11, 16, 17, 19, 20, 37, 41 and 42. The material filed by the opponent does not refer at all to the above-mentioned goods and services.

The applicant did not file any observations in this regard.

Therefore, the Opposition Division will only consider the abovementioned apparatus for electric distribution, control, and connection in Class 9 in its further examination of the opposition.

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 3 525 789.

The goods

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

Class 9: Apparatus for electric distribution, control, and connection.

The contested goods are the following:

Class 12: Fork lift trucks; motor buses; motor coaches; golf carts [vehicles]; cycle cars; electric vehicles; cars; motor cars; remote control vehicles, other than toys; automobile bodies.

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

All the contested goods in this class, namely batteries, electric, for vehicles; accumulators, electric, for vehicles; accumulator jars; accumulator boxes; anode batteries; high tension batteries; battery chargers; capacitors; accumulators, electric; batteries, electric have some relevant points in common with the broad category of the opponent’s apparatus for electric distribution, control, and connection, like switches, electrical connectors etc. These goods all have the same purpose of conducting, accumulating, transforming and transmitting electricity and may be produced by the same manufacturers. They can also be distributed through the same distribution channels and target the same relevant public. Therefore, they are similar.

Contested goods in Class 12

The contested fork lift trucks; motor buses; motor coaches; golf carts [vehicles]; cycle cars; electric vehicles; cars; motor cars; remote control vehicles, other than toys have some relevant points in common with the opponent’s apparatus for electric distribution, control, and connection, like for example electrical batteries for vehicles as they can coincide in end user and distribution channels. Furthermore, they can be complementary. Therefore, they are similar.

The contested automobile bodies refer to various types of parts of vehicles. As mentioned above, the opponent’s apparatus for electric distribution, control, and connection serve to conduct, accumulate, transform and transmit electricity. These goods have a clearly different nature and purpose. They differ in method of use and they are not in competition with each other or complementary to each other. Therefore, they are dissimilar.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attentiveness may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs

Image representing the Mark

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).

Both marks are figurative marks. The earlier mark is composed of verbal element formed by two letters ‘MK’, written in standard script in white, on a black background with white contours. This word element is incorporated into a white, oval shaped figurative element.

The contested sign is composed of the intersected lines forming different shapes. For a part of the public these shapes will not convey any particular concept. However, it is reasonable to assume that at least a part of the public may identify in the contested sign a stylised representation of the letters ‘M’ and ‘K’, incorporated into a geometrical shape of a hexagon. All these elements are depicted on a black background in different shades of grey. The assessment of the signs will continue in relation to only this part of the public.

As regards the figurative elements of the signs (stylisation of letters, colour, geometrical shapes (oval, hexagon, etc.), account must be taken that 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). Therefore, in view of the composition of the signs, the verbal elements ‘MK’ are the ones that will be used to refer to them.

Neither earlier mark nor contested sign has a meaning for the relevant public. Therefore, they have no element that could be considered clearly more distinctive than other elements and overall must be seen as being of normal distinctiveness for all the goods concerned.

Visually, the signs coincide in the letters ‘MK’, although they are more stylised in the contested sign. The differences between the signs lie in their figurative elements, which are less important or less distinctive than their verbal elements. Therefore, as the signs coincide in their principal and distinctive verbal elements, it is considered that the signs are visually similar to a high degree.

Aurally, the signs are identical. The figurative elements do not play an aural role, as they will not be pronounced.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods are partly similar and partly dissimilar to the ones covered by the opponent’s earlier right.

As seen in section c) of this decision, the relevant consumers will not pay much attention to the figurative elements present in both signs because they will perceive them as commonplace elements, often accompanying the brands (geometrical shapes present in both signs). Thus, the consumers will focus their attention on the common, distinctive verbal element composed of the letters ‘MK’ in both signs. Consequently, the fact that this combination of letters ‘MK’ is stylised in the contested sign is not sufficient to exclude a likelihood of confusion as the average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Furthermore, according to a set case-law, 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).

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark. In other words, consumers may confuse the origins of the goods at issue by assuming that they come from the same undertaking or from economically-linked undertakings.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case the goods under dispute are similar.

Considering all the above, the Opposition division finds that the differences between the sign are not sufficient to counteract the similarity resulting from their coinciding element ‘MK’ and that, there is a likelihood of confusion, including a likelihood of association, on the part of the public. Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 3 525 789.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those covered by the earlier mark.

The rest of the 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.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark No 3 525 748, registered for the word mark ‘MK’ and covering goods and services in Classes: 6, 9, 11, 16, 17, 19, 20, 37, 41 and 42.

Since this mark covers the same scope of goods and as it was assessed in proof of use and the use of this earlier mark was proved for apparatus for electric distribution, control, and connection in Class 9 – the same as in case of the earlier mark No 3 525 789, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Pedro JURADO MONTEJANO

Monika CISZEWSKA

Sandra KASPERIŪNAITĖ

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.

(Trade mark without text) | Decision 2651043

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