ARCO | Decision 2308842 - ARCOS HERMANOS, S.A. v. WAHL GmbH
Date Published: Oct 1, 2017
OPPOSITION No B 2 308 842
Arcos Hermanos, S.A., Poligono Industrial Campollano, C/B Num. 7, 02006 Albacete, Spain (opponent), represented by Isern Patentes Y Marcas, S.L., Paseo de la Castellana, 115 - 1º Dcha., 28046 Madrid, Spain (professional representative)
a g a i n s t
Wahl GmbH, Roggenbachweg 9, 78089 Unterkirnach, Germany (applicant), represented by Westphal Mussgnug & Partner, Patentanwälte mit beschränkter Berufshaftung, Am Riettor 5, 78048 Villingen-Schwenningen, Germany (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 308 842 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 of European Union trade mark application No 12 178 761 ‘ARCO’ (word mark). The opposition is based on European Union trade mark registrations No 6 242 391 and No 10 042 257 . The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 6 242 391
Class 8: Cutlery.
European Union trade mark registration No 10 042 257
Class 21: Household or kitchen utensils and containers.
Class 35: Wholesaling and retailing in shops and via global computer networks of cutlery and household or kitchen utensils and containers.
The contested goods are the following:
Class 7: Shearing machines for animals, hair clippers for animals, parts for the aforesaid goods, in particular cutting sets, hairdressing combs, trimming attachments.
Class 8: Electric hair clippers, beard clippers, razors, accessories and parts for the aforesaid goods, in particular cutting sets, hairdressing combs, trimming attachments, cutting sets for shaving foils.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 7
The contested shearing machines for animals, hair clippers for animals, parts for the aforesaid goods, in particular cutting sets, hairdressing combs, trimming attachments are machines and fittings used to cut the wool of sheep or the hair of other animals. The opponent’s cutlery refers to implements used for eating and cutting, such as knives, forks and spoons.
Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that, in this case, the relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02, Praktiker, EU:C:2005:425).
The opponent’s goods in Class 21 are utensils and containers used in a household or domestic setting.
The contested goods in Class 7 are not similar to the opponent’s goods and services in Classes 8, 21 and 35, since they have different natures, purposes and methods of use. These goods do not have the same origin, since they are normally manufactured by different companies. Finally, these goods are not in competition or complementary.
Contested goods in Class 8
The opponent’s cutlery is a broad category, covering cutting devices used generally in the kitchen and household, while the contested goods in Class 8, electric hair clippers, beard clippers, razors, accessories and parts for the aforesaid goods, in particular cutting sets, hairdressing combs, trimming attachments, cutting sets for shaving foils are aimed at general care of the human body and beauty. Therefore, they have different purposes. It is true that they are used for cutting, but this does not mean that their purpose is the same, since the purpose of cutlery is to cut food or other items in the household, while the purpose of the contested goods is care of the human body by cutting hair and shaving. In this context, the goods target different consumers. The distribution channels are also different; although both types of goods might be sold in supermarkets, they are offered in completely different departments – those for household-related goods and for human care and beauty goods. Their methods of use are also different and there is no complementary or competitive relationship. Razors and related articles are specialised goods, the production of which, as a rule, requires specific knowledge of human anatomy and the human body, while such knowledge is irrelevant for cutlery manufacture. The opponent argues that cutlery and the contested goods in Class 8 can be produced by the same manufacturer, but does not invoke any evidence in support. The specific function of the goods, that is, to be used for cutting, is not sufficient to explain or prove that they are produced by the same manufacturer. Therefore, the contested electric hair clippers, beard clippers, razors, accessories and parts for the aforesaid goods, in particular cutting sets, hairdressing combs, trimming attachments, cutting sets for shaving foils are dissimilar to the opponent’s cutlery in Class 8.
Furthermore, they are also dissimilar to the opponent’s goods and services in Classes 21 and 35, as none of the criteria for a finding of similarity applies.
The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous case referred to by the opponent (12/06/2013, R 2374/2011, URBAN STYLE / urban:tribe) is not relevant to the present proceedings. The Second Board of Appeal declared the contested decision (14/10/2011, B 1 609 422) legally non-existent and null and void in respect of some goods and services, including those discussed in the opponent’s observations (the contested hand tools and implements (hand operated); razors). Therefore, the goods and services to be compared in the current decision are different from those compared in the decision of the Board of Appeal cited by the opponent.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since, contrary to the opponent’s observations, the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Teodora TSENOVA-PETROVA | Carlos MATEO PÉREZ | Inés GARCÍA LLEDÓ |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.