Trade Marks Inter Partes Decision O/529/14 › t-challenge-decision-results › o52914.pdf · educational institutions; Marketing, sales promotion and market research. Provision of

O-529-14

TRADE MARKS ACT 1994

CONSOLIDATED PROCEEDINGS

IN THE MATTER OF TRADE MARK APPLICATIONS 3008456 & 3009810 BY ECONOMY ENERGY LIMITED

TO REGISTER THE FOLLOWING TRADE MARKS:

AND

OPPOSITIONS THERETO (NOs. 400929 & 400930) BY EDISON S.P.A

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Background and pleadings 1. Economy Energy Limited (“the applicant”) filed both trade mark applications the subject of this dispute; the details are as follows: Application 3008456 which was filed on 4 June 2013 and published for opposition purposes on 26 July 2013. The mark itself is as follows:

and is sought to be registered in respect of: Class 4: Electricity. Class 7: Generators; generators of electricity, power and/or energy; wave machines for the purposes of generating electricity, power and/or energy; methane producers for the purposes of generating electricity, power and/or energy; current generators; biomass heaters for the purposes of generating electricity, power and/or energy; ground source heat pumps for the purposes of generating electricity, power and/or energy; hydro power systems for the purposes of generating electricity, power and/or energy; micro-hydro electric power systems turbines (other than for land vehicles); micro-generators; parts and fittings included in Class 7 for all the aforementioned goods; machines for washing dishes, linen and textiles; components and accessories for the aforementioned goods all included in Class 7. Class 9: Apparatus and instruments for storing, conducting, switching, transforming, accumulating, discharging, regulating or controlling electricity, power and/or energy; soloar collectors for energy collection; electricity conduits; electric connections; connections for electric lines; connectors; couplings; distribution boards; distribution boxes; distribution consoles; discharge tubes; distribution machines; ducts; materials for electricity mains; electrolysers; fuse wire; fuses; electrolytic cells; galvanic cells; gauges; heat regulating apparatus; electricity indicators; electricity inductors; measuring apparatus; measuring instruments; micrometers; readers; reducers; relays; testing apparatus; transformers; transistors; transmitters; current regulators; voltage regulators; voltage surge protectors; voltmeters; wire connectors; solar panels for the purposes of generating electricity, power and/or energy; wind turbines for the purposes of generating electricity, power and/or energy; parts and fittings included in Class 9 for all the aforementioned goods. Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith ; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods in class 9. Class 11: Air conditioning apparatus; air reheating apparatus; air cooling apparatus; air driers; heaters for baths; bed warmers; brackets for gas burners; boiler pipes; boilers; burners; gas burners; carbon for arc lamps; central heating systems; central heating radiators; cooling appliances, installations and/or machines; heating dampers; heating appliances, apparatus, installations and/or machines; drying apparatus, appliances, installations and/or machines; gas boilers; gas burners; gas condensers; gas generators; cooking appliances, apparatus, installations and/or machines; heat pumps; heat regenerators; heaters; heating apparatus; heating boilers; heating installations; hot air apparatus; humidifiers; ovens; lamps; lamp burners; lanterns; laundry appliances, apparatus, installations and/or machines; laundry room boilers; light bulbs; lighting apparatus and installations; microwave ovens for industrial purposes; oil burners; oil lamps; radiators; refrigerating apparatus,

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appliances, installations and/or machines; regulating accessories for water or gas apparatus and pipes; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; regulating and safety accessories for water apparatus; safety accessories for water or gas apparatus and pipes; showers; solar furnaces; nuclear power generators; steam accumulators; steam boilers; steam generating installations; stoves; refrigerating apparatus, appliances, installations and/or machines; water heaters; water heating apparatus; water purifying apparatus and machines; water purification installations; micro- generation appliances and equipment parts and fittings for all the aforesaid goods included in class 11. Class 16: Paper articles, cardboard articles; materials for the recordal of computer programs and for the recordal of data; all included in Class 16; printed matter, printed publications, directories, books, stationery; instructional and teaching materials (other than apparatus); typewriters; office requisites (other than furniture); parts and fittings included in Class 16 for all the aforesaid goods; paper and cardboard, all included in Class 16. Class 32: Water. Class 35: Advertising and promotional services; business services; business management services; business administration services; marketing services; business operating, promotion, administration and management services; commercial information agency services; provision of information relating to businesses and companies; auctioneering services including via the Internet; compilation of business directories; compiling, storing, analysing and retrieving data and information; maintaining and indexing information materials; creating indexes of information, web sites and other resources available on a global computer network; provision and/or rental of advertising space on the Internet; the bringing together, for the benefit of others, of electronic computer products and automobiles, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site; price comparison services, including, but not limited to, all the aforesaid provided by electronic means including the Internet; information, advisory and consultancy services relating to all the aforesaid services. Facilitating change of suppliers on behalf of consumers of goods and services including telecommunications, telephony, ISP, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance, provision of information and advice relating to the aforementioned services. Retail store services, including online retail store services, connected with the sale of phones, laptops, computers, tablets, PDAs, computer hardware, major household appliances, home theater equipment, photographic equipment, cellular phones, video equipment audio equipment, portable electronic devices and accessories for the aforesaid, personal computers, video and electronic games, video and electronic game equipment and accessories, computer software, entertainment software, compact discs, digital versatile discs or DVDs, audio and video recordings, ring tones, gift cards, books, magazines batteries, automotive audio equipment; provision of product information and consumer advice relating to the foregoing; promoting the sale of the goods and services of others through customer loyalty and incentive programs for retail customers; promoting the use of credit cards through customer loyalty and incentive programs for retail customers; retail services connected with the sale of computer hardware via automated kiosks; retail store services, including online retail store services connected with the sale of computer hardware, servers, monitors, imaging equipment, storage devices, networking devices, portable electronic equipment and photographic equipment, supplies, and accessories related to the foregoing, and computer software for businesses, government institutions, and educational institutions; providing product information and advice relating to electronic equipment and computer software for businesses, government institutions, and educational institutions; Marketing, sales promotion and market research. Provision of price information relating to the supply of consumer goods and services, including insurance, telecommunication services, utilities and financial products and for all the aforesaid services and goods included in class 35. Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; insurance services; insurance services provided via the Internet; provision of insurance information; provision of insurance services including general insurance, life insurance, health care insurance, medical and dental insurance, home insurance, car insurance, van insurance, motorbike insurance, motor breakdown insurance, building insurance, contents insurance, mortgage payment insurance, income insurance, critical illness insurance; travel insurance; pet insurance; insurance brokerage; insurance underwriting; financial services; financial services provided via the Internet; provision of financial information; loan and credit services; credit card, debit card and bank card services; electronic

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payment services; mortgage services; banking services; savings and investment services; pensions and pension fund services; business finance services; financial advice and consultancy services; stock broking services; share advice services; real estate services; estate agency services; valuation services; estate and real estate management services; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services. Brokerage services; financial consultancy; financial evaluation; financial information; financial management; brokerage services relating to the taking of applications and contracts for the supply of various goods and services to consumers and businesses from suppliers of telecommunications, telephony, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance and financial services generally. Provision of advice relating to the supply of insurance and insurance products; provision of financial advice relating to the supply of consumer goods and services, including insurance, telecommunications services, utilities and financial products for all the aforesaid services and goods included in class 36. Class 37: Installation, maintenance and repair of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets, paging apparatus, radio paging apparatus, radio telephone apparatus, computers and personal organisers, computer hardware, satellite transmitters and receivers; information, advisory and consultancy services relating to all the aforementioned provided on-line from a computer database or the Internet or provided by other means; information and advisory services relating to household construction, maintenance and repair all provided by means of a telecommunications link; information and advisory services relating to vehicle maintenance and repair all provided by means of a telecommunications link; information services relating to repair or installation, provided on-line from a computer database or the Internet for all the aforesaid services and goods included in class 37. Class 38: Telecommunication and communication services; distribution of electronic information over computer networks, global information networks and wireless networks; rental and/or leasing of telecommunications and/or communications apparatus, installations, networks and infrastructure; broadcasting services; digital broadcasting services; provision of telecommunications access and links to computer databases, computer networks, global information networks and wireless networks; providing access to an on-line link to information in the fields of finance, insurance, travel, motoring, computing and telecommunications; electronic mail services; bulletin board services via global information network; electronically distributing information materials; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services and goods included in class 38. Class 41: Education and training services; entertainment services; sporting and cultural activities; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; electronic games sevices provided from a computer database or by means of the Internet; video and audio rental services; radio and television entertainment services; providing on-line electronic publications; publication of electronic books and journals on-line; publication of texts in electronic format or otherwise; exhibition services; provision of on-line access to exhibitions and exhibition services; news programming services for transmission across the Internet; arranging and conducting of conferences, seminars, symposia, tutorials and workshops; interactive and distance learning courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; art gallery services provided on-line via a telecommunications link; gaming services; club services; ticket reservation and booking services for entertainment, sporting and cultural events; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; electronic games services provided by means of the Internet; provision and operation of electronic conferencing, discussion groups and chat rooms; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 Internet websites; provision of information and advice relating to all of the aforesaid services in class 41. Class 42: Advisory and consultancy services relating to computer hardware, computer software, computer networks; analysis (computer systems -); computer hardware, software and programme design; computer programs (duplication of -); computer rental and updating of computer software; computer site design; computer software (installation of -); computer software (maintenance of -); computer software (rental of -); computer software development and design for others; computer

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system design; conversation of data and computer programs (except physical conversion); creating and maintaining computer sites (web sites) for others; leasing, hire and rental of computers, computer systems, computer programs and computer software; search engines (providing -) for the Internet; recovery of computer data; conversion of data or documents from physical to electronic media; rental of web servers; design services; providing and/or operating search engines. Providing facilities for others to access and use the Internet, such facilities to be provided utilising a café, bar, cafeteria, bistro, restaurant or coffee house setting; preparation of food and drink; catering services; restaurant services; cafe and cafeteria services; snack-bar services; fast-food restaurant services; provision of conference and exhibition facilities; computer services; maintenance, updating and design of computer software and programs; computer programming services; preparation and provision of information in relation to computers and computer network facilities; on-line computer services; programming services given on-line; computer rental; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; hosting the web sites of others; installation and maintenance of computer software; leasing of access time to a computer database; security and fraud prevention information and consultancy services; protection of personal property; horoscope forecasting; weather forecasting; news and current affairs clippings and information services; hotel reservation services; accommodation bureaux services; accommodation information and booking services; personal introduction and dating agency services; escort agency services; healthcare and medical information, consultancy and advisory services provided on-line from a computer database or via the Internet or provided by other means; beauty information and advisory services; garden design and gardening information and advisory services; provision of information and advice on environmental awareness issues; interior design services and information and advisory services relating thereto; translation services; fashion information provided by telecommunications means from a computer database or via the Internet; information and advice relating to food, nutrition and cookery. Information, advice and consultancy services relating to all of the aforementioned services in class 42. Application 3009810 which was filed on 13 June 2013 and published for opposition purposes on 26 July 2013. It is for a series of two marks as follows:

& Which are sought to be registered in respect of: Class 4: Electricity; gas; fuels; fuel gas; natural gas; coal; mineral fuels. Class 7: Generators; generators of electricity, power and/or energy; wave machines for the purposes of generating electricity, power and/or energy; methane producers for the purposes of generating electricity, power and/or energy; current generators; biomass heaters for the purposes of generating electricity, power and/or energy; ground source heat pumps for the purposes of generating electricity, power and/or energy; hydro power systems for the purposes of generating electricity, power and/or energy; micro-hydro electric power systems turbines (other than for land vehicles); micro-generators; parts and fittings included in Class 7 for all the aforementioned goods; machines for washing dishes, linen and textiles; components and accessories for the aforementioned goods all included in Class 7. Class 9: Apparatus and instruments for storing, conducting, switching, transforming, accumulating, discharging, regulating or controlling electricity, power and/or energy; electricity conduits; electric connections; connections for electric lines; connectors; couplings; distribution boards; distribution boxes; distribution consoles; discharge tubes; distribution machines; ducts; materials for electricity mains; electrolysers; fuse wire; fuses; electrolytic cells; galvanic cells; gauges; heat regulating apparatus; electricity indicators; electricity inductors; measuring apparatus; measuring instruments; micrometers; readers; reducers; relays; testing apparatus; transformers; transistors; transmitters; current regulators; voltage regulators; voltage surge protectors; voltmeters; wire connectors; solar panels for the purposes of generating electricity, power and/or energy; wind turbines for the purposes of generating electricity, power and/or energy; parts and fittings included in Class 9 for all the

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aforementioned goods. Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith ; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods in class 9. Class 11: Air conditioning apparatus; air reheating apparatus; air cooling apparatus; air driers; heaters for baths; bed warmers; brackets for gas burners; boiler pipes; boilers; burners; gas burners; carbon for arc lamps; central heating systems; central heating radiators; cooling appliances, installations and/or machines; heating dampers; heating appliances, apparatus, installations and/or machines; drying apparatus, appliances, installations and/or machines; gas boilers; gas burners; gas condensers; gas generators; cooking appliances, apparatus, installations and/or machines; heat pumps; heat regenerators; heaters; heating apparatus; heating boilers; heating installations; hot air apparatus; humidifiers; ovens; lamps; lamp burners; lanterns; laundry appliances, apparatus, installations and/or machines; laundry room boilers; light bulbs; lighting apparatus and installations; microwave ovens for industrial purposes; oil burners; oil lamps; radiators; refrigerating apparatus, appliances, installations and/or machines; regulating accessories for water or gas apparatus and pipes; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; regulating and safety accessories for water apparatus; safety accessories for water or gas apparatus and pipes; showers; solar collectors; solar furnaces; nuclear power generators; steam accumulators; steam boilers; steam generating installations; stoves; refrigerating apparatus, appliances, installations and/or machines; water heaters; water heating apparatus; water purifying apparatus and machines; water purification installations; micro- generation appliances and equipment parts and fittings for all the aforesaid goods included in class 11. Class 16: Paper articles, cardboard articles; materials for the recordal of computer programs and for the recordal of data; all included in Class 16; printed matter, printed publications, directories, books, stationery; instructional and teaching materials (other than apparatus); typewriters; office requisites (other than furniture); parts and fittings included in Class 16 for all the aforesaid goods; paper and cardboard, all included in Class 16. Class 32: Water. Class 35: Advertising and promotional services; business services; business management services; business administration services; marketing services; business operating, promotion, administration and management services; commercial information agency services; provision of information relating to businesses and companies; auctioneering services including via the Internet; compilation of business directories; compiling, storing, analysing and retrieving data and information; maintaining and indexing information materials; creating indexes of information, web sites and other resources available on a global computer network; provision and/or rental of advertising space on the Internet; the bringing together, for the benefit of others, of computer electronic products and automobiles, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site; price comparison services including, but not limited to, all the aforesaid provided by electronic means including the Internet; information, advisory and consultancy services relating to all the aforesaid services. Facilitating change of suppliers on behalf of consumers of goods and services including telecommunications, telephony, ISP, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance, provision of information and advice relating to the aforementioned services; Retail store services, including online retail store services, in the field of phones, laptops, computers, tablets, PDAs, computers, major household appliances, home theater equipment, photographic equipment, cellular phones, video equipment audio equipment, portable electronic devices and accessories, personal computers, video and electronic games, video and electronic game equipment and accessories, computer software, entertainment software, compact discs, digital versatile discs or DVDs, audio and video recordings, ring tones, gift cards, books, magazines batteries, automotive

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audio equipment; provision of product information and consumer advice relating to the foregoing; promoting the sale of the goods and services of others through customer loyalty and incentive programs for retail customers; promoting the use of credit cards through customer loyalty and incentive programs for retail customers; retail store services, including online retail store services connected with the sale of computer hardware, servers, monitors, imaging equipment, storage devices, networking devices, portable electronic equipment and photographic equipment, and peripherals, supplies, and accessories related to the foregoing, and computer software for businesses, government institutions, and educational institutions; providing product information and advice relating to electronic equipment and computer software for businesses, government institutions, and educational institutions. Marketing, sales promotion and market research. Provision of price information relating to the supply of consumer goods and services, including insurance,telecommunication services, utilities and financial products and for all the aforesaid services and goods included in class 35. Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; insurance services; insurance services provided via the Internet; provision of insurance information; provision of insurance services including general insurance, life insurance, health care insurance, medical and dental insurance, home insurance, car insurance, van insurance, motorbike insurance, motor breakdown insurance, building insurance, contents insurance, mortgage payment insurance, income insurance, critical illness insurance; travel insurance; pet insurance; insurance brokerage; insurance underwriting; financial services; financial services provided via the Internet; provision of financial information; loan and credit services; credit card, debit card and bank card services; electronic payment services; mortgage services; banking services; savings and investment services; pensions and pension fund services; business finance services; financial advice and consultancy services; stock broking services; share advice services; real estate services; estate agency services; valuation services; estate and real estate management services; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services. Brokerage services; financial consultancy; financial evaluation; financial information; financial management; brokerage services relating to the taking of applications and contracts for the supply of various goods and services to consumers and businesses from suppliers of telecommunications, telephony, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance and financial services generally. Provision of advice relating to the supply of insurance and insurance products; provision of financial advice relating to the supply of consumer goods and services, including insurance, telecommunications services, utilities and financial products for all the aforesaid services and goods included in class 36. Class 37: Installation, maintenance and repair of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets, paging apparatus, radio paging apparatus, radio telephone apparatus, computers and personal organisers, computer hardware, satellite transmitters and receivers; information, advisory and consultancy services relating to all the aforementioned provided on-line from a computer database or the Internet or provided by other means; information and advisory services relating to household construction, maintenance and repair all provided by means of a telecommunications link; information and advisory services relating to vehicle maintenance and repair all provided by means of a telecommunications link; information services relating to repair or installation, provided on-line from a computer database or the Internet for all the aforesaid services and goods included in class 37. Class 38: Telecommunication and communication services; distribution of electronic information over computer networks, global information networks and wireless networks; rental and/or leasing of telecommunications and/or communications apparatus, installations, networks and infrastructure; broadcasting services; digital broadcasting services; provision of telecommunications access and links to computer databases, computer networks, global information networks and wireless networks; providing access to an on-line link to information in the fields of finance, insurance, travel, motoring, computing and telecommunications; electronic mail services; bulletin board services via global information network; communication of information via electronic means; consultancy, advisory and information services relating to all the aforesaid services and goods included in class 38; provision and operation of electronic conferencing, discussion groups and chat rooms. Class 39: Electricity supply services, Distribution of gas, gas supply services, energy distribution services. Electricity, gas and water supply services; transmission, distribution and supply of energy,

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electricity, gas and water; storage, transportation and delivery of gas and electricity; distribution and supply of effluent, waste water, sewage, sludge, industrial effluents and waste; transmission and supply of gas and oil. Class 40: Electricity generation; gas production and processing; disposal and treatment of waste water from industrial processes and generating operations; ash disposal; disposal of solid residues; generation of power and electricity; operation of energy generation plants. Industrial waste treatment services, in particular by means of vitrification;studies and research relating to waste disposal;providing information to others in the field of energy and electricity by means of a global computer network. Class 41: Education and training services; entertainment services; sporting and cultural activities; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; electronic games sevices provided from a computer database or by means of the Internet; video and audio rental services; radio and television entertainment services; providing on-line electronic publications; publication of electronic books and journals on-line; publication of texts in electronic format or otherwise; exhibition services; provision of on-line access to exhibitions and exhibition services; news programming services for transmission across the Internet; arranging and conducting of conferences, seminars, symposia, tutorials and workshops; interactive and distance learning courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; art gallery services provided on-line via a telecommunications link; gaming services; club services; ticket reservation and booking services for entertainment, sporting and cultural events; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; electronic games services provided by means of the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 Internet websites; provision of information and advice relating to all of the aforesaid services in class 41. Class 42: Advisory and consultancy services relating to computer hardware, computer software, computer networks; analysis (computer systems -); computer hardware, software and programme design; computer programs (duplication of -); computer rental and updating of computer software; computer site design; computer software (installation of -); computer software (maintenance of -); computer software (rental of -); computer software development and design for others; computer system design; conversation of data and computer programs (except physical conversion); creating and maintaining computer sites (web sites) for others; leasing, hire and rental of computers, computer systems, computer programs and computer software; search engines (providing -) for the Internet; recovery of computer data; conversion of data or documents from physical to electronic media; rental of web servers; design services; providing and/or operating search engines; Providing facilities for others to access and use the Internet, such facilities to be provided utilising a café, bar, cafeteria, bistro, restaurant or coffee house setting; computer services; maintenance, updating and design of computer software and programs; computer programming services; preparation and provision of information in relation to computers and computer network facilities; on-line computer services; programming services given online; computer rental; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; hosting the web sites of others; installation and maintenance of computer software; leasing of access time to a computer database; security and fraud prevention information and consultancy services; protection of personal property; horoscope forecasting; weather forecasting; news and current affairs clippings and information services; provision of information and advice on environmental awareness issues; interior design services and information and advisory services relating thereto; translation services; fashion information provided by telecommunications means from a computer database or via the Internet; information and advice relating to food and cookery; Information, advice and consultancy services relating to all of the aforementioned services in class 42. 2. Edison S.P.A. (“the opponent”) opposes the registration of both applications on grounds under section 5(2)(b) of the Trade Marks Act 1994 (“the Act”). The opponent relies on its Community trade mark (“CTM”) registration 10642825, the details of which are as follows:

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CTM registration 10642825 which was filed on 14 February 2012 and which completed its registration procedure on 25 November 2012. The mark (which claims the colour green) itself consists of:

and is registered in respect of: Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting. Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines. 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; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus. Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Class 37: Building and construction services; Installation services,Repair and maintenance of systems and installations for generating and distributing electric energy. Class 39: Distribution and transmission of electricity, distribution and transmission of gas and hydrocarbons;Distribution and transmission of energy, accumulating and storage of gas, electricity and hydrocarbons, rental of energy plants for others in order to distribute electricity, distribution of gas and hydrocarbons via pipelines or gas pipes. Class 40: Treatment of materials. Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities. Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software. 3. The opponent’s mark has a date of filing prior to the applied for mark and, thus, constitutes an earlier mark in these proceedings. Furthermore, the earlier mark completed its registration procedure within the five year period preceding the date on which both of the applicant’s applications were published, so meaning that there is no requirement to establish that the earlier mark has been genuinely used; the earlier mark may be relied upon for all its goods and services. 4. The applicant filed counterstatements denying the basis of the oppositions. The counterstatements are broadly similar, including statements such as:

Whilst some of the goods and services may be similar, not all of them are.

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That the average consumer will be attentive during the purchasing process. That the average consumer will not recognise the respective marks as

consisting of (or containing) the letter E. Even if the letters were recognised, they are highly (and differently) stylised. That the letter E alone is devoid of distinctive character, particular in relation

to goods and services that relate to energy.

5. The cases were consolidated. Only the applicant filed evidence (together with written submissions), the opponent filed written submissions only. Neither side requested a hearing, both opting to file written submissions in lieu of a hearing. The evidence & submissions The opponent’s submissions 6. The opponent provided a set of written submissions dated 2 June 2014. The main points made are that:

“E logos” are not commonplace in the industry. The marks clearly depict the letter E. “The visual impact of the similar shaped letter E that proportionately tapers in

the same way towards the tail, gives rise to a striking degree of similarity between the respective trade marks”.

For stylisation to function as a differentiating element, it must be striking and uncommon, so that it will be mentally retained by the public1.

The applicant’s marks do not have any additional distinctive matter. The minor difference between the marks will go unnoticed by the average

consumer. The distinctiveness of the letter E and the commonness of the colour green

(which it states adds to the degree of visual similarity) is not particularly relevant, given that the marks are strikingly similar.

Whilst it recognises that single letter marks are generally afforded a narrow scope of protection, the opponent is still entitled to rely on an earlier mark in particular where the figurative elements are similar.

The marks are aurally and conceptually identical. The same reasoning applies to the applied for mark which includes the words

ECONOMY ENERGY given that the e logo is the dominant and distinctive component.

The decisions in opposition cases Nos B571770 & B2004193 (referred to by the applicant) are not pertinent because of the further visual, phonetic and conceptual dissimilarities in those cases.

The goods/services are all identical or similar (but the opponent does little to explain this other than list them side by side).

1 This is a reference to case R457//20003

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The opponent does not agree with the applicant’s view (in its counterstatement) that the goods and services in classes 16, 32, 35, 36 & 38 do not overlap. It provides two submissions by way of example: that water in class 32 is similar to apparatus for steam generating, water supply and sanitary purposes in class 11, and that the goods claimed in class 16 by the applicant are similar to “education, providing of training, entertainment” in class 41; the arguments are based upon the average consumer assuming some form of connection such as a license.

The earlier mark is inherently distinctive and this increases confusion. Reference is made to the mark not alluding to the goods/services and that the letter e is not commonly used in the marketplace. There is also a reference to acquired distinctiveness, but as no evidence was filed this point is not pertinent.

The level of care and attention used will not be high as sometimes energy suppliers are inherited and are not indefinite selections because the consumer often changes supplier.

Imperfect recollection is important to bear in mind. There is a likelihood of confusion.

The applicant’s evidence and submissions 7. The applicant’s evidence was filed by its trade mark attorney, Mr Peter Mansfield of Collier IP Management Ltd. His evidence is given in support of various points made in the applicant’s written submissions. The main points are that:

The letter “e” is an acronym for “energy” according to the freedictionary.com (exhibit 1 of Mr Mansfield’s witness statement).

The opponent’s argument that the marks clearly depict an “e” is unfounded. If the opponent wished to register an “e” as a character then why did if file for the loops and hoops in its mark.

The marks must be compared as they appear on the register. The marks are strikingly different and the earlier mark is not reproduced in the

applicant’s marks. The tapering of lines and logos is very common. Mr Mansfield provides the

logos of Coca Cola and Google in apparent support of this (Exhibit PM2). Green is meaningful in the industry, indicating green (environmentally friendly)

products (Exhibit PM3). The opponent’s claim that its mark is striking and uncommon and presented in

an eye catching manner is not really disputed, but that this helps to differentiate between the marks as those striking features are not part of the applicant’s mark.

The distinctiveness of the letter e is pertinent because the opponent leaps between relying on the mark being an e and between the device mark as registered.

The marks are not pronounceable and, thus, are not aurally similar. The opponent’s mark could be seen, for example, as a light bulb or merely a symbol. This follows through to the applicant’s conceptual argument.

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The earlier decisions it referred to should be borne in mind as it is a fundamental principle of law that decisions from existing cases are followed. It accepts that no two cases are ever the same, but the ones quoted are the most similar2.

Not all of the goods/services are similar. The letter e is not particularly distinctive in the energy sector. There is no

evidence to show enhanced reputation and even if the applicant does attempt to show this the opponent does not trade in the UK. Prints from the opponent’s website are provided in Exhibit PM4 showings it locations, none of which are in the UK.

The selection of a new energy provider is not an impulse decision. Imperfect recollection is important when the marks are very similar, which is

not the case here. The example quoted by the opponent is more understandably similar.

There is no likelihood of confusion. Opponent’s reply submissions 8. The submissions, for the most part, repeat the submissions I summarised earlier. I note the following:

That “whilst the opponent appreciates that they cannot enforce their rights against use of the standard letter “e” they can do so when the figurative marks that share visual similarity with their own registration”.

That the marks will be seen as the letter E, and are therefore aurally and conceptually identical.

That the examples of green being used in trade are limited (and are from after the relevant date), but even if the colour lacks distinctiveness, the marks are still similar.

There is no evidence as to why the opponent’s e logo is not distinctive. 9. Both sides filed additional written submissions in lieu of attending a hearing. They either repeat or build upon the points already summarised so I will not detail them here, although, they will be borne in mind in the substantive findings I make. Decision in relation to application 3009810 10. I begin by assessing the opposition against application 3009810 because if the opponent does not succeed here, it is even less likely, on account of the additional differences, to succeed in relation to the other application. Section 5(2)(b) of the Act states that:

“5.-(2) A trade mark shall not be registered if because – ..

2 In relation to the earlier cited cases, I have looked at them, but each case must be considered on its own merits so have had little bearing on my findings.

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(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

11. The following principles are gleaned from the judgments of the EU courts in Sabel BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98, Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.

(a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;

(f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

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(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks creates a risk that the public will wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

Comparison of goods/services 12. In the judgment of the Court of Justice of the European Union (“CJEU”) in Canon, Case C-39/97, the court stated at paragraph 23 of its judgment that:

“In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary”.

13. The relevant factors identified by Jacob J. in the Treat case, [1996] R.P.C. 281, for assessing similarity were:

a) The respective users of the respective goods or services;

b) The physical nature of the goods or acts of services

c) The respective trade channels through which the goods or services reach the market

d) In the case of self serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;

e) The extent to which the respective goods or services are competitive. This

inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.

14. In terms of understanding what terms mean/cover, I note that in YouView TV Ltd v Total Ltd ,[2012] EWHC 3158 (Ch), Floyd J. stated that:

"… Trade mark registrations should not be allowed such a liberal interpretation that their limits become fuzzy and imprecise: see the observations of the CJEU in Case C-307/10 The Chartered Institute of Patent Attorneys (Trademarks) (IP TRANSLATOR) [2012] ETMR 42 at [47]-[49]. Nevertheless the principle should not be taken too far. Treat was decided the

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way it was because the ordinary and natural, or core, meaning of 'dessert sauce' did not include jam, or because the ordinary and natural description of jam was not 'a dessert sauce'. Each involved a straining of the relevant language, which is incorrect. Where words or phrases in their ordinary and natural meaning are apt to cover the category of goods in question, there is equally no justification for straining the language unnaturally so as to produce a narrow meaning which does not cover the goods in question."

15. In Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd and Another, [2000] F.S.R. 267 (HC), Neuberger J. stated that:

“I should add that I see no reason to give the word “cosmetics” and “toilet preparations”... anything other than their natural meaning, subject, of course, to the normal and necessary principle that the words must be construed by reference to their context.”

16. In Avnet Incorporated v Isoact Limited, [1998] F.S.R. 16, Jacob J. stated that:

“In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”

17. In terms of being complementary, in Boston Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), Case T-325/06, the General Court (“GC”) stated that “complementary” means that:

“...there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking”.

18. In Sanco SA v OHIM, Case T-249/11, the GC indicated that goods and services may be regarded as “complementary” and therefore similar to a degree in circumstances where the nature and purpose of the respective goods and services are very different, i.e. chicken against transport services for chickens. The purpose of examining whether there is a complementary relationship between goods/services is to assess whether the relevant public are liable to believe that responsibility for the goods/services lies with the same undertaking or with economically connected undertakings. As Mr Daniel Alexander Q.C. noted as the Appointed Person in Sandra Amelia Mary Elliot v LRC Holdings Limited BL-0-255-13:

“It may well be the case that wine glasses are almost always used with wine – and are, on any normal view, complementary in that sense - but it does not follow that wine and glassware are similar goods for trade mark purposes.”

whilst on the other hand:

“.......it is neither necessary nor sufficient for a finding of similarity that the goods in question must be used together or that they are sold together.

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19. I also bear in mind the principle that derives from the judgment of the GC in Gérard Meric v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T-133/05 – “Meric”) in that, when comparing goods/services, if a term clearly falls within the ambit of a term in the competing specification then identical goods/services must be considered to be in play. Finally, I also bear in mind that if the similarity between the goods/services is not self evident, it may be necessary to adduce evidence of similarity. In Commercy AG, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Case T-316/07, the GC pointed out that:

“43. Consequently, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, it is still necessary, even where the two marks are identical, to adduce evidence of similarity between the goods or services covered by them (see, to that effect, order of 9 March 2007 in Case C-196/06 P Alecansan v OHIM, not published in the ECR, paragraph 24; and Case T-150/04 Mülhens v OHIM – Minoronzoni(TOSCA BLU) [2007] ECR II-2353, paragraph 27).”

20. Thus, where the similarity between the respective goods or services is not self evident, the opponent must show how, and in which respects, they are similar. 21. The goods/services of the respective parties are wide-ranging. I will, therefore, group goods/services together where it is reasonable to do so. This is consistent with the approach in Separode Trade Mark BL O-399-10:

“The determination must be made with reference to each of the different species of goods listed in the opposed application for registration; if and to the extent that the list includes goods which are sufficiently comparable to be assessable for registration in essentially the same way for essentially the same reasons, the decision taker may address them collectively in his or her decision.”3

22. The applicant’s class 4 goods read:

Class 4: Electricity; gas; fuels; fuel gas; natural gas; coal; mineral fuels. 23. The opponent’s goods in class 4 include fuel at large. I consider all of the above to constitute a fuel of some form and, consequently, the goods are identical. 24. The applicant’s class 7 goods read:

Class 7: Generators; generators of electricity, power and/or energy; wave machines for the purposes of generating electricity, power and/or energy; methane producers for the purposes of generating electricity, power and/or energy; current generators; biomass heaters for the purposes of generating electricity, power and/or energy; ground source heat pumps for the purposes of generating electricity, power and/or energy; hydro power systems for the purposes of generating electricity, power and/or energy; micro-hydro electric

3 See, also: BVBA Management, Training en Consultancy v. Benelux-Merkenbureau [2007] ETMR 35 at paragraphs [30] to [38] (CJEU).

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power systems turbines (other than for land vehicles); micro-generators; parts and fittings included in Class 7 for all the aforementioned goods; machines for washing dishes, linen and textiles; components and accessories for the aforementioned goods all included in Class 7.

25. The bulk of the applied for terms are generators of one form or another. The opponent’s specification includes machines at large which would cover the various generating machines applied for. The goods are identical. The other items in the applicant’s class 7 specification are various washing machines, which, again, would fall within the term machines. These goods are also identical. The applicant specifically lists parts, fittings, components and accessories whereas the opponent does not. However, parts, fittings, components and accessories for machines which are identical to the machines of the earlier mark introduce a reasonably high degree of similarity. 26. The applicant’s class 9 goods read:

Class 9: Apparatus and instruments for storing, conducting, switching, transforming, accumulating, discharging, regulating or controlling electricity, power and/or energy; electricity conduits; electric connections; connections for electric lines; connectors; couplings; distribution boards; distribution boxes; distribution consoles; discharge tubes; distribution machines; ducts; materials for electricity mains; electrolysers; fuse wire; fuses; electrolytic cells; galvanic cells; gauges; heat regulating apparatus; electricity indicators; electricity inductors; measuring apparatus; measuring instruments; micrometers; readers; reducers; relays; testing apparatus; transformers; transistors; transmitters; current regulators; voltage regulators; voltage surge protectors; voltmeters; wire connectors; [parts and fittings included in Class 9 for all the aforementioned goods]; solar panels for the purposes of generating electricity, power and/or energy; wind turbines for the purposes of generating electricity, power and/or energy; parts and fittings included in Class 9 for all the aforementioned goods. Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith ; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods in class 9.

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27. The opponent’s specification in class 9 (and also its other classes) consists of what is, essentially, the class heading for that class. It is now, of course, well documented that the class heading does not necessarily cover everything in that class4. Nevertheless, the goods I have identified in bold above fall within the ambit of the opponent’s “Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity” and are identical or highly similar to those goods. In relation to the solar panels and other power generating goods (first paragraph of the above list, not in bold), I consider these to be reasonably similar to the aforesaid terms because they form part and parcel of a person’s electrical or other power system. Furthermore, on the basis that the opponent’s machines in class 7 would notionally cover generating machines, the goods are also reasonably similar on this basis. The rest of the applied for specification in class 9 (second paragraph in the above list) covers various computing goods and parts and fittings. I consider these to fall within the ambit of “data processing equipment”, “computers” of the earlier mark and are therefore identical. 28. The applicant’s goods in class 11 read:

Class 11: Air conditioning apparatus; air reheating apparatus; air cooling apparatus; air driers; heaters for baths; bed warmers; brackets for gas burners; boiler pipes; boilers; burners; gas burners; carbon for arc lamps; central heating systems; central heating radiators; cooling appliances, installations and/or machines; heating dampers; heating appliances, apparatus, installations and/or machines; drying apparatus, appliances, installations and/or machines; gas boilers; gas burners; gas condensers; gas generators; cooking appliances, apparatus, installations and/or machines; heat pumps; heat regenerators; heaters; heating apparatus; heating boilers; heating installations; hot air apparatus; humidifiers; ovens; lamps; lamp burners; lanterns; laundry appliances, apparatus, installations and/or machines; laundry room boilers; light bulbs; lighting apparatus and installations; microwave ovens for industrial purposes; oil burners; oil lamps; radiators; refrigerating apparatus, appliances, installations and/or machines; regulating accessories for water or gas apparatus and pipes; regulating and safety accessories for gas apparatus; regulating and safety accessories for gas pipes; regulating and safety accessories for water apparatus; safety accessories for water or gas apparatus and pipes; showers; solar collectors; solar furnaces; nuclear power generators; steam accumulators; steam boilers; steam generating installations; stoves; refrigerating apparatus, appliances, installations and/or machines; water heaters; water heating apparatus; water purifying apparatus and machines; water purification installations; micro- generation appliances and equipment parts and fittings for all the aforesaid goods included in class 11.

29. I consider all of the above to fall within the ambit of one (or more) of the terms in the opponent’s class 11 specification (as below) with the consequence that they are all identical:

4 See IP Translator Case C-307/10

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Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

30. The applicant’s class 16 specification reads.

Class 16: Paper articles, cardboard articles; materials for the recordal of computer programs and for the recordal of data; all included in Class 16; printed matter, printed publications, directories, books, stationery; instructional and teaching materials (other than apparatus); typewriters; office requisites (other than furniture); parts and fittings included in Class 16 for all the aforesaid goods; paper and cardboard, all included in Class 16.

31. The opponent submits that the above goods are similar to the following services in its class 41 specification:

Education; Providing of training; Entertainment 32. Although the submission has been made, little argument is provided to explain the point. However, I can see, for example, that the provider of training and education may produce books and teaching materials to support its service and that a complementary relationship exists which creates a reasonable degree of similarity with the goods I have emboldened in the applicant’s list of goods. Beyond that, I see no obvious similarity with any of the goods and services of the earlier mark. The remaining goods are not similar to the goods/services of the earlier mark. 33. The applicant’s specification in class 32 reads:

Class 32: Water. 34. The opponent has submitted that water is similar to its goods in class 11. Whilst such goods include apparatus for water supply, the opponent’s argument is not a strong one. Apparatus for water supply would include goods such as taps, pipes etc. and I see no reason whatsoever to regard them as similar to water. Any argument that the goods and services are complementary is weak and the type of complementary relationship discussed at paragraph 18 is not established. The goods are not similar to the goods/services of the earlier mark. 35. The opponent’s class 35 specification reads:

Class 35: Advertising and promotional services; business services; business management services; business administration services; marketing services; business operating, promotion, administration and management services; commercial information agency services; provision of information relating to businesses and companies; auctioneering services including via the Internet; compilation of business directories; compiling, storing, analysing and retrieving data and information; maintaining and indexing information materials; creating indexes of information, web sites and other resources available on a global computer network; provision and/or rental of advertising space on the Internet;

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the bringing together, for the benefit of others, of computer electronic products and automobiles, enabling customers to conveniently view and purchase those goods from a general merchandise Internet web site; price comparison services including, but not limited to, all the aforesaid provided by electronic means including the Internet; information, advisory and consultancy services relating to all the aforesaid services. Facilitating change of suppliers on behalf of consumers of goods and services including telecommunications, telephony, ISP, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance, provision of information and advice relating to the aforementioned services; Retail store services, including online retail store services, in the field of phones, laptops, computers, tablets, PDAs, computers, major household appliances, home theater equipment, photographic equipment, cellular phones, video equipment audio equipment, portable electronic devices and accessories, personal computers, video and electronic games, video and electronic game equipment and accessories, computer software, entertainment software, compact discs, digital versatile discs or DVDs, audio and video recordings, ring tones, gift cards, books, magazines batteries, automotive audio equipment; provision of product information and consumer advice relating to the foregoing; promoting the sale of the goods and services of others through customer loyalty and incentive programs for retail customers; promoting the use of credit cards through customer loyalty and incentive programs for retail customers; retail store services, including online retail store services connected with the sale of computer hardware, servers, monitors, imaging equipment, storage devices, networking devices, portable electronic equipment and photographic equipment, and peripherals, supplies, and accessories related to the foregoing, and computer software for businesses, government institutions, and educational institutions; providing product information and advice relating to electronic equipment and computer software for businesses, government institutions, and educational institutions. Marketing, sales promotion and market research.

Provision of price information relating to the supply of consumer goods and services, including insurance, telecommunication services, utilities and financial products and for all the aforesaid services and goods included in class 35.

36. The services I have emboldened in the above list, are, essentially, services for the retailing of goods, goods which in one form or another are covered by the goods of the opponent’s mark. This can (but not always) create similarity due to the complementary relationship that exists. I consider there to be at least a low degree of

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similarity between the emboldened services and the respective goods of the earlier mark. 37. In relation to the services at paragraphs 1, 5 & 7 of the applicant’s list, these are, essentially, promotional services offered to other businesses. I see no obvious similarity with any of the goods and services of the earlier mark. The opponent has presented no arguments or evidence to suggest that there is. The services are not similar to the goods/services of the earlier mark. 38. In relation to the services at paragraphs 3 & 8 of the applicant’s list, these relate to price comparison services and other services which help a customer change utility supplier. Whilst the opponent’s services include distribution of energy and energy itself, this does not itself create any meaningful degree of similarity. Even on a complementary basis the argument is weak because the applicant’s services would normally be provided by a different undertaking to the energy supplier. The services are not similar to the goods/services of the earlier mark. 39. The opponent’s class 36 services read:

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; insurance services; insurance services provided via the Internet; provision of insurance information; provision of insurance services including general insurance, life insurance, health care insurance, medical and dental insurance, home insurance, car insurance, van insurance, motorbike insurance, motor breakdown insurance, building insurance, contents insurance, mortgage payment insurance, income insurance, critical illness insurance; travel insurance; pet insurance; insurance brokerage; insurance underwriting; financial services; financial services provided via the Internet; provision of financial information; loan and credit services; credit card, debit card and bank card services; electronic payment services; mortgage services; banking services; savings and investment services; pensions and pension fund services; business finance services; financial advice and consultancy services; stock broking services; share advice services; real estate services; estate agency services; valuation services; estate and real estate management services; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services. Brokerage services; financial consultancy; financial evaluation; financial information; financial management; brokerage services relating to the taking of applications and contracts for the supply of various goods and services to consumers and businesses from suppliers of telecommunications, telephony, broadband, ADSL, DSL, ISP, WI-FI, electricity, gas, water, insurance and financial services generally. Provision of advice relating to the supply of insurance and insurance products; provision of financial advice relating to the supply of consumer goods and services, including insurance, telecommunications services, utilities and financial products for all the aforesaid services and goods included in class 36.

40. I see no obvious similarity with what are, effectively, financial services, with any of the goods and services of the earlier mark. The opponent has presented no

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augment or evidence to suggest that there is. The services are not similar to the goods/services of the earlier mark. 41. The applicant’s class 37 specification reads

Class 37: Installation, maintenance and repair of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets, paging apparatus, radio paging apparatus, radio telephone apparatus, computers and personal organisers, computer hardware, satellite transmitters and receivers; information, advisory and consultancy services relating to all the aforementioned provided on-line from a computer database or the Internet or provided by other means; information and advisory services relating to household construction, maintenance and repair all provided by means of a telecommunications link; information and advisory services relating to vehicle maintenance and repair all provided by means of a telecommunications link; information services relating to repair or installation, provided on-line from a computer database or the Internet for all the aforesaid services and goods included in class 37.

42. The opponent’s specification in class 37 reads:

Class 37: Building and construction services; Installation services, Repair and maintenance of systems and installations for generating and distributing electric energy.

43. The first paragraph of the applicant’s list relates to the installation, maintenance and repair of various telecommunications and computing devices. The opponent’s specification includes “installation services” per se so is identical to the installation services applied for. In respect of the maintenance and repair services applied for, these are not identical (nor even similar) to the opponent’s maintenance and repair services because the latter are also limited (to systems and installations for generating and distributing electrical energy) but, nevertheless, the installation services (unqualified) of the opponent could be in the same field as the applicant’s maintenance and repair services which creates a reasonable degree of similarity. 44. The second paragraph of the applicant’s list is the service of information and advice about household construction. I do not consider that the opponent’s installation/repair/maintenance services assists it. However, the opponent’s specification covers building and construction which would cover household building and construction. There must, in my view, be a reasonable degree of similarity between that and an information and advisory service relating to the same potential subject matter. 45. The third paragraph of the applicant’s list relates to information and advice about vehicle maintenance and repair. The opponent’s specification provides no real point

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of convergence. No arguments have been presented. The services are not self-evidently similar. I conclude that these services are not similar. 46. The fourth paragraph relates to the provision of information (in certain medium) relating to the previously assessed services. I consider this term to rest and fall with the preceding assessments. 47. The applicant’s services in class 38 read:

Class 38: Telecommunication and communication services; distribution of electronic information over computer networks, global information networks and wireless networks; rental and/or leasing of telecommunications and/or communications apparatus, installations, networks and infrastructure; broadcasting services; digital broadcasting services; provision of telecommunications access and links to computer databases, computer networks, global information networks and wireless networks; providing access to an on-line link to information in the fields of finance, insurance, travel, motoring, computing and telecommunications; electronic mail services; bulletin board services via global information network; communication of information via electronic means; consultancy, advisory and information services relating to all the aforesaid services and goods included in class 38; provision and operation of electronic conferencing, discussion groups and chat rooms.

48. I see no obvious similarity with what are, effectively, various telecommunication services, with any of the goods and services of the earlier mark. The opponent has presented no argument or evidence to suggest that there is. The services are not similar to the goods/services of the earlier mark. 49. The applicant’s services in class 39 read:

Class 39: Electricity supply services, Distribution of gas, gas supply services, energy distribution services. Electricity, gas and water supply services; transmission, distribution and supply of energy, electricity, gas and water; storage, transportation and delivery of gas and electricity; distribution and supply of effluent, waste water, sewage, sludge, industrial effluents and waste; transmission and supply of gas and oil.

50. The opponent’s class 39 services read:

Class 39: Distribution and transmission of electricity, distribution and transmission of gas and hydrocarbons; Distribution and transmission of energy, accumulating and storage of gas, electricity and hydrocarbons, rental of energy plants for others in order to distribute electricity, distribution of gas and hydrocarbons via pipelines or gas pipes

51. Although not expressed in identical terms, it is clear that the services are, in essence, identical. 52. The applicant’s services in class 40 read:

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Class 40: Electricity generation; gas production and processing; disposal and treatment of waste water from industrial processes and generating operations; ash disposal; disposal of solid residues; generation of power and electricity; operation of energy generation plants. Industrial waste treatment services, in particular by means of vitrification; studies and research relating to waste disposal; providing information to others in the field of energy and electricity by means of a global computer network.

53. The opponent’s services in class 40 cover only “treatment of materials”. However, this could be for the purpose of treating waste, which is then subsequently disposed of. As such, I consider the applicant’s terms in paragraphs 2 and 4 in the above list to be highly similar and, by extension, the services in paragraph 5 as the study and research relates to the same subject matter. In terms of the services in paragraph 1, 3 and 6, these are more to do with generation of electricity, gas and energy and strike me as reasonably similar to the distribution of the same things in class 39. The services are reasonably similar. 54. The applicant’s class 41 services read:

Class 41: Education and training services; entertainment services; sporting and cultural activities; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; electronic games sevices provided from a computer database or by means of the Internet; video and audio rental services; radio and television entertainment services; providing on-line electronic publications; publication of electronic books and journals on-line; publication of texts in electronic format or otherwise; exhibition services; provision of on-line access to exhibitions and exhibition services; news programming services for transmission across the Internet; arranging and conducting of conferences, seminars, symposia, tutorials and workshops; interactive and distance learning courses and sessions provided on-line via a telecommunications link or computer network or provided by other means; art gallery services provided on-line via a telecommunications link; gaming services; club services; ticket reservation and booking services for entertainment, sporting and cultural events; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and amusements; electronic games services provided by means of the Internet; providing digital music (not downloadable) from the Internet; providing digital music (not downloadable) from MP3 Internet websites; provision of information and advice relating to all of the aforesaid services in class 41.

55. One way or the other I consider the above services to fall within one or more of the broad terms in the opponent’s class 41 service which reads:

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Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

56. The applicant’s class 42 specification reads:

Class 42: Advisory and consultancy services relating to computer hardware, computer software, computer networks; analysis (computer systems -); computer hardware, software and programme design; computer programs (duplication of -); computer rental and updating of computer software; computer site design; computer software (installation of -); computer software (maintenance of -); computer software (rental of -); computer software development and design for others; computer system design; conversation of data and computer programs (except physical conversion); creating and maintaining computer sites (web sites) for others; leasing, hire and rental of computers, computer systems, computer programs and computer software; search engines (providing -) for the Internet; recovery of computer data; conversion of data or documents from physical to electronic media; rental of web servers; design services; providing and/or operating search engines; Providing facilities for others to access and use the Internet, such facilities to be provided utilising a café, bar, cafeteria, bistro, restaurant or coffee house setting; computer services; maintenance, updating and design of computer software and programs; computer programming services; preparation and provision of information in relation to computers and computer network facilities; on-line computer services; programming services given online; computer rental; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; hosting the web sites of others; installation and maintenance of computer software; leasing of access time to a computer database; security and fraud prevention information and consultancy services; protection of personal property; horoscope forecasting; weather forecasting; news and current affairs clippings and information services; provision of information and advice on environmental awareness issues; interior design services and information and advisory services relating thereto; translation services; fashion information provided by telecommunications means from a computer database or via the Internet; information and advice relating to food and cookery; Information, advice and consultancy services relating to all of the aforementioned services in class 42.

57. The opponent’s specification in class 42 reads:

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

58. As can be seen, the opponent’s specification contains a number of broad terms such as scientific and technological services. It also covers services such as design and development of computer hardware and software. Given this, I consider that the services I have emboldened in the applicant’s list to either fall within the ambit of one

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(or more) of the opponent’s terms or else are highly similar to one (or more) of them. In relation to the other terms, none strike me as being particularly scientific or technological, nor do they have any obvious points of similarity with any of the other terms in the opponent’s list of services. They are in no better position with regard to any other goods or service class. Average consumer and the purchasing act 59. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. For the purpose of assessing the likelihood of confusion, it must be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question: Lloyd Schuhfabrik Meyer, Case C-342/97. In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014] EWHC 439 (Ch), Birss J. described the average consumer in these terms:

“60. The trade mark questions have to be approached from the point of view of the presumed expectations of the average consumer who is reasonably well informed and reasonably circumspect. The parties were agreed that the relevant person is a legal construct and that the test is to be applied objectively by the court from the point of view of that constructed person. The words “average” denotes that the person is typical. The term “average” does not denote some form of numerical mean, mode or median.”

60. As can be seen from the assessments already made, the goods and services are extremely varied and, consequently, the average consumer and the degree of care and attention they pay may also vary. I will take this into account when I make my findings on the likelihood of confusion. However, I note that the submissions of both sides focus on the average consumer of goods and services provided by energy suppliers. In this respect, I agree with the applicant’s submission that this is certainly not a casual selection and at least a slightly higher than average level of care and attention will be deployed. In terms of selection, this will be by way of, primarily, visual means, the marks being seen in advertisements, brochures leaflets and, as is often the case these days, perusal of websites. Distinctive character of the earlier trade mark 61. The degree of distinctiveness of the earlier mark must be assessed. This is because the more distinctive the earlier mark, based either on inherent qualities or because of use made, the greater the likelihood of confusion (see Sabel BV v. Puma AG, paragraph 24). In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97 the CJEU stated that:

“22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined

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Cases C-108/97 and C-109/97 WindsurfingChiemsee v Huber and Attenberger [1999] ECR I-0000, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).”

62. The earlier mark looks like this:

63. The parties disagree on whether the mark will be seen as a letter e. For my part, whilst I accept that some average consumers will just see the mark as a series of curved lines, a good many will see it as a stylised letter e. However, even if it is seen as an e, the earlier mark still has at least an average level of inherent distinctive character but this will be due, primarily, to the way in which the mark is presented. The contribution the letter e per se makes to the distinctive character of the earlier mark is, in my view, limited. Whilst letter marks must be assessed for distinctive character in relation to the goods/services in question, as with other types of marks, and that there can be no hard and fast rules, letter marks, particularly single letters marks, may be harder to register as trade marks compared to some other types of marks: in OHIM v BORCO-Marken-Import Matthiesen GmbH & Co. KG, Case C-265/09 P, the CJEU stated:

“It follows that, particularly as it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, OHIM is required to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on those goods or services.”

64. The letter E used in the energy field is unlikely to strike the average consumer as particularly distinctive as it may be seen as the initial letter of that word. Even in other fields, the letter e could be seen as the initial letter of the word electronic, a common abbreviation. For the purpose of my decision I do not need to find that the letter e itself is completely devoid of distinctiveness. It is sufficient to say that for the purpose of assessing the inherent distinctiveness of the earlier mark, its distinctiveness comes more from the way in which the letter has been stylised and less from the letter itself. The opponent seems to accept this general point because in its written submissions it states:

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“whilst the opponent appreciates that they cannot enforce their rights against use of the standard letter “e”” they can do so when the figurative marks that share visual similarity with their own registration”

65. I also add that the colour green in the earlier mark is not something which materially contributes to its distinctiveness. Even without the applicant’s evidence, I would have been prepared to accept that the concept of being “green” is now so well known across a broad spectrum of fields (but particularly in the energy field) that the colour performs a descriptive role (or at least it is not distinctive). 66. In its written submission, the opponent refers to enhanced distinctiveness. However, this, as the applicant has submitted, is not pertinent because no evidence of use of the opponent’s mark has been presented. Comparison of marks 67. It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The same case also explains that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks, bearing in mind their distinctive and dominant components. The CJEU stated at paragraph 34 of its judgment in Case C-591/12P, Bimbo SA v OHIM, that:

“.....it is necessary to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion.”

68. It would be wrong, therefore, to artificially dissect the trade marks, although, it is necessary to take into account the distinctive and dominant components of the marks and to give due weight to any other features which are not negligible and therefore contribute to the overall impressions created by the marks. The competing marks are: Opponent’s mark Applicant’s marks

&

69. In terms of the overall impression of the marks, I have already held that the opponent’s mark will be seen, by a good number of consumers, as the letter e in a stylised form. Given my earlier observations, I consider the stylisation to play a strong role in the overall impression of the mark, the letter per se only playing a weak role. The colour also plays only a weak role. The same applies to the applicant’s

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marks, a good number of consumers will see it as a letter e, but its stylisation plays a strong role in the overall impressions, the letter e per se and the colour playing only weak roles. 70. Given the above findings, there is aural and conceptual identity for those that see the marks as being based upon the letter E. 71. From a visual perspective, the opponent refers to the way in which the respective mark’s share the same tapering of the tail which, it argues, gives rise to a striking degree of similarity. I do not agree. The shared tapering is present, but I do not consider this aspect of similarity to be particularly striking. What is more striking, in my view, is the highly unusual way in which the opponent’s mark continues from its horizontal centre line to create an additional and large curve that bends almost fully back over itself. This is absent from the applicant’s mark. Another point which I think is more striking is the broken nature of the curved lines in the applicant’s mark, which creates a quite distinct visual impact. Any similarity between the marks on a visual level is in my view very low. Likelihood of confusion 72. The factors assessed so far have a degree of interdependency (Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc, paragraph 17), a global assessment of them must be made when determining whether there exists a likelihood of confusion (Sabel BV v. Puma AG, paragraph 22). However, there is no scientific formula to apply. It is a matter of considering the relevant factors from the viewpoint of the average consumer and determining whether they are likely to be confused. 73. I begin by observing that in classes 32, 36, 38 and partially in classes 16, 35, 37 and 42, the applied for goods/services are not similar to the goods/services of the earlier mark. Consequently, there can be no likelihood of confusion5. 74. In terms of where there is similarity/identity, the goods and services applied for are varied. I will consider firstly the goods and services in classes 4 and 39 which cover, essentially, the distribution of energy and the various forms of energy themselves. There is identity in relation to the respective goods and services. However, even bearing in mind the principle of imperfect recollection, the degree of similarity between the marks is not sufficient for the marks to be directly mistaken for one another. I consider the figurative differences inherent in the marks to be striking. When this is coupled with the reasonable (or more likely a slightly higher) degree of care and attention used by the average consumer (which will ordinarily be a member of the general public), the differences will not be missed. Whilst I accept that the average consumer does not have a photographic memory and that precise and exact configurations will not be recalled, the configurations will nevertheless be recalled with sufficient precision that the differences will be noted. The look and feel of the marks is quite different. I have, of course, borne in mind that the marks are aurally identical, however, notwithstanding that a person may sometimes telephone his or her energy supplier, in circumstances where the degree of distinctiveness of 5 As per Waterford Wedgwood plc v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case C-398/07.

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the letter E per se is limited and in circumstances where the purchasing process is more of a visual one, I am not satisfied that this equates to a likelihood of confusion. In any event, in most scenarios a telephone call or other form of aural communication will most often be made after some form of visual inspection of the marks, perhaps after looking at a website for example. This reduces further the likelihood of confusion. I have also considered whether there is a likelihood of confusion on an indirect, or same stable basis. I come to the view that there is not. That some consumers may realise that both marks are based upon a letter E, will be put down to mere co-incidence. The striking visual differences will inform the average consumer that these are different undertakings. There is no likelihood of confusion in classes 4 and 39. 75. It does not automatically follow that the same finding applies in relation to the other goods and services. However, in the case before me I consider that it does. Even if the goods and services were chosen with a lesser degree of care and consideration, and even if the link between the letter E per se and the goods and services was less suggestive, I still feel that the marks are sufficiently distinct to avoid the average consumer from being confused. 76. The opposition against application 3009810 fails completely. In relation to the opposition against application 3008456, the opposition also fails. The assessment between the goods/services is largely similar (although I accept that the applied for goods/services are not wholly the same as the applicant’s other mark) but the key principles as to why there is no likelihood of confusion remains. Indeed, this mark is even further away from the opponent’s mark on account of the additional words economy energy, even if these words are considered descriptive. Costs 77. The applicant has been successful and is entitled to a contribution towards its costs. In the circumstances, I award the applicant the sum of £1400 as a contribution towards the cost of the proceedings. The sum is calculated as follows:

Preparing statements and considering the other side’s statements - £600 Filing evidence - £2006 Various written submissions - £600

78. I therefore order Edison S.P.A. to pay Economy Energy Limited the sum of £1400. The above sum should be paid within seven days of the expiry of the appeal period or within seven days of the final determination of this case if any appeal against this decision is unsuccessful. Dated this 12th day of December 2014 Oliver Morris For the Registrar, The Comptroller-General

6 This is below the scale minimum, but reflects that the evidence was very light and not highly determinative.