ZENLOR | Decision 2746579
Date Published: Sep 24, 2017
OPPOSITION No B 2 746 579
Securlite, Z.i. des Ajeux, 72400 La Ferté-Bernard, France (opponent), represented by Cabinet Fedit-Loriot, 38, avenue Hoche, 75008 Paris, France (professional representative).
a g a i n s t
Shenzhen Zelun Technology Co. Ltd., Room 208, Cuihu Business Center, 366 Xuegang North Road, Longhua Street, Longhua New District, Guangdong, People's Republic of China (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).
On 30/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 746 579 is partially upheld, namely for the following contested goods:
Class 9: Voltage stabilizing power supply; Batteries, electric, for vehicles; Battery boxes; Plates for batteries; Battery chargers; Galvanic batteries; Batteries, electric; Photovoltaic cells; Solar batteries; Rechargeable batteries.
Class 11: Lamps; Pocket searchlights; Chinese lanterns; Searchlights; Flashlights [torches]; Diving lights; Lights for vehicles; Bicycle lights.
2. European Union trade mark application No 15 284 193 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 some of the goods of European Union trade mark application No 15 284 193, ‘ZENLOR’, namely against all the goods in Classes 9 and 11. The opposition is based on French trade mark registration No 144 062 869, ‘ZENSOR’. 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
The goods on which the opposition is based are the following:
Class 9: Manually operated apparatus for electrical measurement in particular in the form of testers of voltage, passage, metering, capacity, resistance and conduction; electrical transformers and power supplies; equipments and fuses for overvoltage protection; battery chargers.
Class 11: Lighting apparatus and lamps including indoor and outdoor fixed or portable lighting apparatus and lamps for signalling, indicating, watching and celebration as well as sensor-controlled apparatus and lamps; electrical heating, ventilating and air conditioning apparatus.
The contested goods are the following:
Class 9: Voltage stabilizing power supply; Batteries, electric, for vehicles; Battery boxes; Plates for batteries; Battery chargers; Galvanic batteries; Batteries, electric; Photovoltaic cells; Solar batteries; Rechargeable batteries.
Class 11: Lamps; Pocket searchlights; Chinese lanterns; Searchlights; Flashlights [torches]; Diving lights; Lights for vehicles; Bicycle lights; Bath fittings.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
Battery chargers are identically contained in both lists of goods.
The contested voltage stabilizing power supply include, as a broader category the opponent’s equipments and fuses for overvoltage protection. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested batteries, electric, for vehicles; galvanic batteries; batteries, electric; solar batteries; rechargeable batteries are included in the broad category of the opponent’s electrical power supplies. Therefore, they are identical.
The contested photovoltaic cells are included in the broad category of the opponent’s electrical transformers and power supplies. Therefore, they are identical.
The contested battery boxes; plates for batteries are similar to the opponent’s power supplies. The contested goods are parts and fittings of the opponent’s goods. They are produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public. They are also complementary.
Contested goods in Class 11
Lamps are identically contained in both lists of goods.
The contested pocket searchlights; chinese lanterns; searchlights; flashlights [torches]; diving lights; lights for vehicles; bicycle lights are included in the broad category of the opponent’s lamps. Therefore, they are identical.
Unlike the view of the opponent, it is the view of the Opposition Division that the rest of the contested goods in Class 11, bath fittings, are dissimilar to all opponent’s goods in Classes 9 and 11. They have different nature, purpose and methods of use from the opponent’s goods. Furthermore, they are not provided by the same companies and they are provided through different distribution channels. These goods are also not in competition nor complementary.
- 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 directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. For example the applicant’s good photovoltaic cells are specialist goods that are not often purchased and are very expensive. Therefore the degree of attention is higher in regards to these goods compared to, for example lamps.
- The signs
ZENSOR | ZENLOR |
Earlier trade mark | Contested sign |
The relevant territory is France.
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 word marks that have no meaning in the relevant territory and are therefore distinctive. Unlike the view of the opponent it is the Opposition Division’s view that the relevant public will see the marks as whole and not divide them into different elements.
Visually, the signs coincide in ‘ZEN*OR’, the first three letters and last two letters of six-letter words. However, they differ in the consonant in the fourth position in each mark, namely the letter ‘S’ in the earlier mark and the letter ‘L’ in the contested sign.
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the first three letters ‘ZEN’ and in the two last letters ‘OR’, present identically in both signs. Moreover, the signs have the same number of syllables. The pronunciation differs in the sound of the letter ‛S’ of the earlier mark and in the sound of the letter ‘L’ of the contested sign.
Therefore, the signs are aurally highly similar.
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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the contested goods are partly identical, partly similar and partly dissimilar. The services are directed at the public at large and business customers with specific professional knowledge or expertise with a level of attention that varies from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually and aurally similar to a high degree and a conceptual comparison is not possible.
The differences between the signs are limited to their fourth letters/sounds, namely ‘S’ in the earlier mark and ‘L’ in the contested sign. However, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar visual and aural impressions given by the signs. Even the public with a high degree of attention may be confused as to the origin of the goods and services in question.
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).
Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s French trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested 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.
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
Boyana NAYDENOVA | Benjamin Erik WINSNER | Begoña URIARTE VALIENTE |
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.