wallbox plug & drive | Decision 2629627 - Feller GmbH v. Wall Box Chargers, s.l.

Date Published: Sep 28, 2017

OPPOSITION No B 2 629 627

Feller GmbH, Wärndorfer Str. 3, 2525 Günselsdorf, Austria (opponent), represented by Gibler & Poth Patentanwälte KG, Dorotheergasse 7/14, 1010 Wien, Austria (professional representative)

a g a i n s t

Wall Box Chargers, s.l., C/Josep Ros i Ros 5, 08740 San Andreu de la Barca, Spain (applicant), represented by Riccardo Ciullo, Carrer de Calaf, 27, 1-1, 08021 Barcelona, Spain (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 629 627 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 and services of European Union trade mark application No 14 522 387. The opposition is based on European Union trade mark registration No 301 853. 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.

1. The goods and services

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

Class 9: Insulated and/or shielded conduits, wires and cables; telephone and data cables, telephone connecting cords, cords for telephone handsets, spiral cables, cord sets, respectively cables; semi-finished cord sets, respectively cables; connectors; sockets, plugs and other contacts [electric connections].

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, chargers for electric batteries, chargers for plug-in electric and hybrid vehicles; Apparatus for recording, transmission or reproduction of sound or images; Peripherals adapted for use with computers, Magnetic data carriers, Recording discs, Data processing equipment and computers, Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software, Computer software, application software for mobile phones and tablet computers.

Class 42: Scientific and technological services and research and design relating thereto; industry analysis and research services; Design and development of computer hardware and software.

Some of the contested goods and services are identical to goods and services 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.

2. Relevant public — degree of attention

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

In the present case, the goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending, in particular on the specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative sign consisting of a 3 dimensional representation of a plug device containing a rounded upper part featuring two protruding pins that fit into two holes in the below depicted socket. In relation to part of the goods, in particular connectors; sockets, plugs and other contacts [electric connections], this device is considered to have a low distinctive character.

The contested sign is a figurative mark consisting of the following elements: a stylised green 2-pin plug device with a lower part having an umbrella-shape design socket; underneath, the verbal element ‘wallbox’ written in a stylised lowercase letters in bold green and the expression ‘plug & drive’ depicted in grey standard lowercase characters at the bottom of the sign. The element ‘wallbox’ of the contested sign will be understood by part of the relevant public as charging stations for electric vehicles. As the contested mark covers, in particular apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, chargers for electric batteries, chargers for plug-in electric and hybrid vehicles, this element is considered non-distinctive for these goods and for part of the public.

The figurative device of the contested sign will be associated with a plug and socket device. Bearing in mind that the relevant goods are apparatus and instruments for conducting, switching electricity, this element is considered non-distinctive for these goods.

The expression ‘plug & drive’ of the contested sign will be understood by part of the relevant public with knowledge of the English language as ‘to insert and to go in a vehicle’. As the contested mark covers, in particular apparatus and instruments for conducting, switching electricity, this element is considered non-distinctive for these goods and for part of the public.

The verbal element ‘wallbox’ and the figurative device in the contested sign, by virtue of their large size and the colour applied, are the dominant elements as they are the most eye-catching within the sign.

Visually, the signs coincide in the depiction of the upper rounded plug featuring two protruding pins and in the lower rounded socket. However, there are difference between representations of these figurative devices, namely they differ in the shape of the bottom part, which in the contested sign has an umbrella-like shape. In the earlier mark this part has two parallel holes. Furthermore, the device of the contested sign is depicted in a green colour, whereas in the earlier sign it is a three dimensional representation in black and white. The signs also differ in the additional verbal elements of the contested sign, ‘wallbox’ and ‘plug & drive’, which are considered non-distinctive for part of the goods and for part of the public. As stated above, the coinciding device is non-distinctive for part of the goods. The signs are visually similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic aural assessment. As the earlier sign is purely figurative, it is not possible to compare the signs aurally.

Conceptually, to the extent that the signs coincide in the depiction of a plug and, underneath, a socket device, that is considered non-distinctive for part of the goods at issue, the signs are conceptually similar to a low degree. The contested sign further contains the term ‘wallbox’ and the expression ‘plug & drive’ that will be understood by the part of the public, which lead to a conceptual difference of the marks to that extent.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for a part of goods in question, namely connectors; sockets, plugs and other contacts [electric connections]. The mark has a normal degree of distinctiveness for the remaining goods in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The goods and services at issue have been assumed to be identical.

The signs are visually and conceptually similar to a low degree to the extent that they share the representation and the concept of a plug and a socket device. The marks, however, present important differences. The configuration of the figurative device together with the verbal elements included in the contested sign is evidently different.

The common association between two images in the signs at issue, which evokes the same semantic content, is not enough to give rise to a likelihood of confusion, in particular as the concept as such is non-distinctive for part of the goods. This is the case, even for identical goods and services.

In this sense, the Court of Justice of the European Union stated that it is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (11/11/1997, C-251/95, Sabèl, EU:C:1997:528 § 24). In the present case, since a high degree of distinctiveness has not been claimed by the opponent, the Opposition Division cannot conclude that there exists likelihood of confusion on the mere semantic link between both signs.

In the present case, it is noted that the dominant word element ‘wallbox’ will be the part of the contested sign by which the consumer will primarily identify the goods and services covered by the contested mark. The word element will have a stronger impact on the consumer than the remaining components of the sign. This is because the consumer most readily refers to signs by their verbal components rather than the figurative elements. The Opposition Division finds that the representation of a plug and a socket device in the contested sign cannot neutralize the dominant word ‘wallbox’ in the overall impression of the contested mark.

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.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Liliya YORDANOVA

Marzena MACIAK

Volker MENSING

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.