(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No B 1 841 900
Omega Engineering, Inc.
, One Omega Drive, Stamford, Connecticut 06907-0047,
United States of America (opponent), represented by Bromhead Johnson ,
19 Buckingham Street, London WC2N 6EF, United Kingdom (professional representative) a g a i n s t
Teknomega S.R.L.
, Via Giacomo Puccini, 3, 20121 Milano, Italy (applicant), represented by Giambrocono & C. S.P.A.
, Via Rosolino Pilo, 19/b, 20129 Milano,
Italy (professional representative).
On 12/07/2012, the Opposition Division takes the following
DECISION:
1.
Opposition number B 1 841 900 is rejected in its entirety.
2.
The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods in classes 9 and 11 of
Community trade mark application No 9 649 625, based on, inter alia , Community trade mark registration No 8 477 820. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first proceed with the examination of the opposition in relation to earlier Community trade mark No 8 477 820. a) The goods
The relevant factors relating to the comparison of the goods or services include, inter alia , the nature and purpose of the goods or services, the distribution channels, sales

Decision on Opposition No B 1 841 900 page : 2 of 6 outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
The goods on which the opposition is based, among others, are the following:
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, checking (supervision), life-saving and teaching apparatus and instruments; measuring and signalling apparatus and instruments not relating to timing, speed, distance, height nor breadth; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, fire-extinguishing apparatus; radio frequency shielding for electrical currents; radio frequency switches; limit switches; data logging and capture devices and apparatus; ferrite elements to control stray radio frequency currents; apparatus for radio telemetry identification or tracking of animals, people, vehicles, goods or parcels; radio frequency transponders located on or within animals or parcels for identification and location and data logging; parts and fittings for all the aforementioned goods in class 9.
Following a limitation the contested goods are the following:
Class 9: electrical panelboard, electrical panelboard and switchboard components, insulating supports for conductive bars, power repartitors 1, 2, 3, 4 poles, isolators and insulating columns for use in electrical switchboards, electrical distribution blocks, electrical connectors for bars, flexible bars, cables, flexible copper bars, copper and aluminium bars, plein, prepunched and threaded, electrical connections in shape of bars and braid, cable sleeves for electrical switchboards .
All the contested goods are similar to the opponent’s electric apparatus and instruments.
The contested electrical panelboard, electrical panelboard and switchboard components, power repartitors 1, 2, 3, 4 poles are components of an electricity supply system that divides an electrical power feed into subsidiary circuits, while providing a protective fuse or circuit breaker for each circuit, in a common enclosure.
These goods and all the remaining contested goods, namely insulating supports for conductive bars, isolators and insulating columns for use in electrical switchboards, electrical distribution blocks, electrical connectors for bars, flexible bars, cables, flexible copper bars, copper and aluminium bars, plein, prepunched and threaded, electrical connections in shape of bars and braid, cable sleeves for electrical switchboards , are elements, parts or accessories of the type used in the opponent’s electric apparatus . Consequently, they are complementary to each other, are of a similar nature and can be distributed through the same trade channels.
b) The signs
OMEGA
Earlier trade mark Contested sign

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The relevant territory is the European Union.
The earlier mark is a word mark. The contested sign is a figurative mark consisting of the word ‘TEKNOMEGA’ written in standard upper-case italic letters, the first five letters ‘TEKNO’ being depicted in light grey and the last four ‘MEGA’ in black, thus giving the appearance of two words. In the background there is a figurative element similar to the Greek letter
Ω ‘omega’.
Visually , the marks are similar to the extent that they both include the letters ‘O-M-E-
G-A’. On the other hand they differ in the additional letters ‘T-E-K-N’ and in the above mentioned shading and figurative elements of the contested mark.
Aurally , irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the marks coincides in the sound of the letters O-
M-E-G-A present identically in both signs, and to that extent the marks are aurally similar. In the event that the contested mark is pronounced as two different elements because of the striking different colours that isolate two pronounceable terms (TEKNO and MEGA), there will be a caesura between ‘****O’ and ‘MEGA’). The pronunciation differs in the sound of the letters ‘T-E-K-N’ of the contested mark, which have no counterpart in the earlier mark.
Conceptually , the earlier mark will be associated by the majority of the relevant public with the letter omega, which is the last letter of the Greek alphabet. It is also used in various fields of science to designate certain scientific concepts, the meanings of which are not relevant to the current case.
The contested mark as a whole has no meaning in any of the relevant languages.
However, because of its representation in two different colours, it is likely that the majority of the relevant public will recognise the element ‘TEKNO’ as referring to
‘techno’ a common short form for ‘ technology ’ or ‘ technics ’ and the element ‘MEGA’ as referring to ‘ great’ or ‘ impressive’ . It cannot be ruled out that part of the relevant public may perceive the contested mark as ‘TEKN-OMEGA’ (in particular because of the presence of the G reek letter Ω ‘omega’). Consequently, for the part of the public that perceives the word ‘OMEGA’ and/or the Greek letter Ω ‘omega’ in the contested sign, the marks are similar to that extent. However, the public that perceives the contested sign in such a way will also perceive a strong wordplay wherein the letter
O functions as the last letter of ‘techno’ and the first letter of ‘omega’. For the remaining part of the public, which does not perceive or recognise ‘omega’ as an element within the contested sign, the marks have no concept in common.
Taking into account the abovementioned visual, aural and for part of the relevant public also conceptual coincidences, it is considered that the signs under comparison are similar. c) Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The earlier mark has no elements which could be considered clearly more distinctive or dominant (visually eye-catching) in comparison to other elements.

Decision on Opposition No B 1 841 900 page : 4 of 6
The depiction of the verbal element ‘TEKNOMEGA’ is the dominant element of the contested mark as it catches the eye first, due to its size and position.
As mentioned above, the element of the contested sign ‘TEKNO’, may be associated with the technical goods in conflict, while its other element ‘MEGA’ would refer to something of great importance and is commonly used in the context of something being described as ‘super’ or mega . Consequently, for some, the distinctiveness of the contested mark mainly lies in the combination of elements ‘TEKNO’ and ‘MEGA’ and in the typeface and colour of the letters. Others will also recognise the wordplay between these terms, as described above. d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se . In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. e) Relevant public – level of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.
In the case at hand, the goods are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the field of electronic and electrical apparatus. f) Global assessment, other arguments and conclusion
The goods at issue are similar. The earlier mark enjoys a normal degree of inherent distinctiveness but no more. The signs are similar to the extent that the verbal element of the contested mark includes the earlier word mark ‘omega’. The contested mark also contains the
Greek letter Ω, omega, as a figurative element.
However, for the reasons given above, this similarity will only be recognised by some of the relevant consumers because the structure of the contested mark, in particular the shading, conspires against recognition of the verbal element ‘omega’.
The fact that some consumers may perceive ‘omega’ in the contested sign does not inexorably lead to the conclusion that consumers will confuse one sign with the other. It has to be borne in mind that trade marks cannot be split artificially into various

Decision on Opposition No B 1 841 900 page : 5 of 6 arbitrary parts. Thus, the dominant element ‘TEKNOMEGA’ of the contested mark will likely be perceived as a composite term of the elements ‘TEKNO’ and ‘MEGA’ due to the different colour of the elements and because the word elements will be associated with the goods in conflict. The consumers who will split the contested mark into the elements ‘TEKN’ and ‘OMEGA’ will also be fully aware of the wordplay that is present. Furthermore, the letter
Ω is partly hidden in the contested mark by its dominant element ‘TEKNOMEGA’. Consequently, as the word or concept ‘omega’ will have a secondary importance within the contested mark at most, the overall impression created by the signs is sufficiently different for consumers to distinguish them – especially as the earlier mark does not enjoy an enhanced degree of distinctiveness.
The opponent has also based its opposition on the following earlier marks: o Community trade mark registrations No 8 376 311 and No 174 458 for the word mark OMEGA.
Since these marks are identical to the one that has been compared and effectively cover the same goods, the outcome cannot be different. Therefore no likelihood of confusion exists with respect to these other earlier rights. o Community trade mark registrations No 2 229 169 for figurative mark
and No 174 466 for figurative mark .
These earlier rights are even less similar to the contested mark than the earlier right compared above. They consist of thick black Greek letters. However, as mentioned, the impact of the thin letter omega in the background of the contested sign is secondary to that of the dominant element ‘TEKNOMEGA’. A fortiori, no likelihood of confusion exists with respect to these earlier rights.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Decision on Opposition No B 1 841 900 page : 6 of 6
COSTS
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Hugh O’NEILL András SZÁSZ Sarah WEBER
Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. Under Rule 94(4) CTMIR such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100
(Article 2(30) CTMFR) has been paid.