FLEXICON | Decision 2418526 - ERIKS N.V. v. Fertigungsgerätebau Adolf Steinbach GmbH & Co. KG

Date Published: Sep 28, 2017

OPPOSITION No B 2 418 526

Eriks N.V., Robonsbosweg 7 d, 1816 Mk Alkmaar, the Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, the Netherlands (professional representative)

a g a i n s t

Fertigungsgerätebau Adolf Steinbach GmbH & Co. KG, Strahlunger Straße, 97616 Salz bei Bad Neustadt, Germany (applicant), represented by (F200) ASG Rechtsanwälte GmbH, Friedrichstr. 200, 10117 Berlin, Germany (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 418 526 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 771 531 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 771 531. The opposition is based on, inter alia, Benelux trade mark registration No 934 670. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 934 670.

1. The goods and services

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

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electrical cables and wires of common metal; ironmongery and small items of metal hardware; metal pipes; safes; goods of common metal not included in other classes; ores; hoses, pipes, pipe fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), bolts, screw nuts, trays (containers), plates, blocks and bars of metal, all for technical uses and not included in other classes; seals, valves and shutoff valves of metal, not included in other classes; attachments of metal for pipes for industrial installations, in particular disconnecting, adaptation, distribution and safety fittings, sliding gates.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine couplings and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; machine parts for technical purposes made of rubber, asbestos, metal, textile fibers, glass, synthetic resins and other plastics, and of metal including steam valves, ball valves, steam traps, butterfly valves, reducers, membrane valves, valves, coupling discs and brake linings (not included in other classes), driving belts, conveyor belts, v-belts and other drive components (all the aforementioned goods not included in other classes), variable speed belts not included in other classes, taps not included in other classes, siphoning and filling machines, injectors (not included in other classes), cylinders (not included in other classes), machine parts, roller and wheel covers (machine parts); drives; couplings; shaft extensions; hydraulic, pneumatic, mechanical, electrical and electromagnetic operating installations systems for mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their components and parts, included in this class; aforesaid products with the exception of chains and their components.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculating machines, data-processing equipment and computers; monitoring devices; positioning monitoring units; electronic equipment (included in this class) for use in mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their parts and components; precision measuring equipment, automatic control equipment and equipment for testing of materials; distribution and control apparatus including switches, relays, circuit breakers, controllers, rectifiers, connectors, disconnectors, capacitors, switch boxes, distribution boxes, fuses, transformers and induction voltage regulators; telecommunications equipment, including telephone equipment, equipment for wire communication, wireless devices and equipment for measurement of distance; equipment for electronic applications (industrial x-ray apparatus, magnetic detection equipment, protective cases for magnetic disks, electronic computer equipment (including electronic circuits, which saved CPUs (central processing units) and electronic computer programs, magnetic discs, magnetic tapes and other peripherals), electron tubes, semiconductor devices, electronic circuits (excluding electronic circuits in which electronic computer software is stored), electromagnetic measuring equipment, including phase meters, oscillographs, detection meters, ground detectors, resistance meters, voltmeters, ammeters, oscillators and capacity gauges, electronic publications.

Class 35: Business management; business administration; office functions retail services and wholesale services, and the provision of business information and business advice and business mediation regarding the purchase, sale, import, export of common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electrical cables and wires of common metal, ironmongery and small items of metal hardware, metal pipes, safes, goods of common metal, ores, hoses, pipes, pipe fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), bolts, screw nuts, trays (containers), plates, blocks and bars of metal, all for technical uses, seals, valves and shutoff valves of metal, attachments of metal for pipes for industrial installations, in particular disconnecting, adaptation, distribution and safety fittings, sliding gates, machines and machine tools, motors and engines (except for land vehicles), machine couplings and transmission components (except for land vehicles), agricultural implements other than hand-operated, incubators for eggs, machine parts for technical purposes made of rubber, asbestos, metal, textile fibers, glass, synthetic resins and other plastics, and of metal including steam valves, ball valves, steam traps, butterfly valves, reducers, membrane valves, valves, ball valves, coupling discs and brake linings (as far as not included in other classes), driving belts, conveyor belts, V-belts and other drive components, variable speed belts, taps, siphoning and filling machines, injectors, cylinders, machine parts, roller and wheel covers (machine parts), drives, couplings, shaft extensions, hydraulic, pneumatic, mechanical, electrical and electromagnetic operating installations systems for mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their components and parts, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, calculating machines data-processing equipment and computers, monitoring devices, positioning monitoring units, electronic equipment for use in mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their parts and components, precision measuring equipment, automatic control equipment and equipment for testing of materials, distribution and control apparatus including switches, relays, circuit breakers, controllers, rectifiers, connectors, disconnecters, capacitors, switch boxes, distribution boxes, fuses, transformers and induction voltage regulators, telecommunications equipment, including telephone equipment, equipment for wire communication, wireless devices and equipment for measurement of distance, equipment for electronic applications (industrial x-ray apparatus, magnetic detection equipment, protective cases for magnetic disks, electronic computer equipment (including electronic circuits, which saved CPUs (central processing units) and electronic computer programs, magnetic discs, magnetic tapes and other peripherals), electron tubes, semiconductor devices, electronic circuits (excluding electronic circuits in which electronic computer software is stored), electromagnetic measuring equipment, including phase meters, oscillographs, detection meters, ground detectors, resistance meters, voltmeters, ammeters, oscillators and capacity gauges, electronic publications, vehicles, apparatus for locomotion by land, air or water, parts thereof, bicycles (including motorcycles, scooters and motorized bicycles), its components, bicycles and parts thereof, power generating machinery and tools for land vehicles, including internal combustion engines and turbines, mechanical components for land vehicles, including axle journals, couplings, bearings, transmissions, shock absorbers, springs, valves and brakes apparatus, continuous current power I DC motors and alternating current/ AC motors for land vehicles, aforementioned products with the exception of chains and their components, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal, cloth and adhesive tapes made of rubber and asbestos for technical purposes, gland packing and flange gaskets and seals, packing cones, valve rings, steam traps, steam valves, butterfly valves, packing plates, gasket sheets, valves, gaskets, stuffing rings, sealing rings, cord rings, oil and grease seals, dust seals, gauge rings, couplings disks, clutch discs, cuffs, hoses, pipes, fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), trays (containers), plates, blocks and bars, sealants, rubber vibration dampers and mats for vibration and shockproof installing of machines, of rubber, resins and other plastics manufactured tape and cloth for technical purposes.

Class 37: Building construction; repair; installation services; revision activities; cleaning services the aforesaid services also on behalf of “onshore and offshore business”, the flooring industry, the construction of pipelines, sealing industry, food industry, refining industry, maritime industry, transport industry and the construction of infrastructures; installation services, repair, maintenance and rental of common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, hoses, pipes, pipe fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), bolts, screw nuts, trays (containers), plates, blocks and bars of metal, all for technical uses, stop valves, shutoff valves, seals, valves and shutoff valves of metal, attachments of metal for pipes for industrial installations, in particular disconnecting, adaptation, distribution and safety fittings, sliding gates, machines and machine tools, motors and engines (except for land vehicles), machine couplings and transmission components (except for land vehicles), incubators for eggs, machine parts for technical purposes made of rubber, asbestos, metal, textile fibres, glass, synthetic resins and other plastics, and of metal, including steam valves, ball valves, steam traps, butterfly valves, reducers, membrane valves, valves, coupling discs and brake linings, driving belts, conveyor belts, v-belts and other drive components, variable speed belts, taps, siphoning and filling machines, injectors, cylinders, machine parts, roller and wheel covers (machine parts), drives, couplings, shaft extensions, hydraulic, pneumatic, mechanical, electrical and electromagnetic operating installations systems for mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their components and parts, 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, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, calculating machines, data-processing equipment and computers, monitoring devices, positioning monitoring units, electronic equipment for use in mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their parts and components, precision measuring equipment, automatic control equipment and equipment for testing of materials, distribution and control apparatus including switches, relays, circuit breakers, controllers, rectifiers, connectors, disconnectors, capacitors, switch boxes, distribution boxes, fuses, transformers and induction voltage regulators, telecommunications equipment, including telephone equipment, equipment for wire communication, wireless devices and equipment for measurement distance, equipment for electronic applications, industrial x-ray apparatus, magnetic detection equipment, protective cases for magnetic disks, electronic computer equipment (including electronic circuits, which saved CPUs (central processing units) and electronic computer programs, magnetic discs, magnetic tapes and other peripherals), electron tubes, semiconductor devices, electronic circuits (excluding electronic circuits in which electronic computer software is stored), electromagnetic measuring equipment, including phase meters, oscillographs, detection meters, ground detectors, resistance meters, voltmeters, ammeters, oscillators and capacity gauges, electronic publications, vehicles, apparatus for locomotion by land, air or water, parts thereof, bicycles (including motorcycles, scooters and motorized bicycles), its components, bicycles and parts thereof, power generating machinery and tools for land vehicles, including internal combustion engines and turbines, mechanical components for land vehicles, including axle journals, couplings, bearings, transmissions, shock absorbers, springs, valves and brakes apparatus, continuous current power I DC motors and alternating current I AC motors for land vehicles, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal, gland packing and flange gaskets and seals, packing cones, valve rings, steam traps, steam valves, butterfly valves, packing plates, gasket sheets, valves, gaskets, stuffing rings, sealing rings, cord rings, oil and grease seals, dust seals, gauge rings, couplings disks, clutch discs, cuffs, hoses, pipes, fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), trays (containers), plates, blocks and bars, sealants, rubber vibration dampers and mats for vibration and shockproof installing of machines, of rubber, resins and other plastics manufactured tape for technical purposes; advice and providing information regarding the aforesaid services.

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; the aforesaid services also in relation to the technical adaptation and application and the use of common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, hoses, pipes, pipe fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), bolts, screw nuts, trays (containers), plates, blocks and bars of metal, all for technical uses, stop valves, shutoff valves, seals, valves and shutoff valves of metal, attachments of metal for pipes for industrial installations, in particular disconnecting, adaptation, distribution and safety fittings, sliding gates, machines and machine tools, motors and engines (except for land vehicles), machine couplings and transmission components (except for land vehicles), incubators for eggs, machine parts for technical purposes made of rubber, asbestos, metal, textile fibres, glass, synthetic resins and other plastics, and of metal, including steam valves, ball valves, steam traps, butterfly valves, reducers, membrane valves, valves, coupling discs and brake linings, driving belts, conveyor belts, v-belts and other drive components, variable speed belts, taps, siphoning and filling machines, injectors, cylinders, machine parts, roller and wheel covers (machine parts), drives, couplings, shaft extensions, hydraulic, pneumatic, mechanical, electrical and electromagnetic operating installations systems for mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their components and parts, 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, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, calculating machines, data-processing equipment and computers, monitoring devices, positioning monitoring units, electronic equipment for use in mechanical engineering, apparatus engineering and driving unit and drive technology, as well as their parts and components, precision measuring equipment, automatic control equipment and equipment for testing of materials, distribution and control apparatus including switches, relays, circuit breakers, controllers, rectifiers, connectors, disconnecters, capacitors, switch boxes, distribution boxes, fuses, transformers and induction voltage regulators, telecommunications equipment, including telephone equipment, equipment for wire communication, wireless devices and equipment for measurement distance, equipment for electronic applications, industrial x-ray apparatus, magnetic detection equipment, protective cases for magnetic disks, electronic computer equipment (including electronic circuits, which saved CPUs (central processing units) and electronic computer programs, magnetic discs, magnetic tapes and other peripherals), electron tubes, semiconductor devices, electronic circuits (excluding electronic circuits in which electronic computer software is stored), electromagnetic measuring equipment, including phase meters, oscillographs, detection meters, ground detectors, resistance meters, voltmeters, ammeters, oscillators and capacity gauges, electronic publications, vehicles, apparatus for locomotion by land, air or water, parts thereof, bicycles (including motorcycles, scooters and motorized bicycles), its components, bicycles and parts thereof, power generating machinery and tools for land vehicles, including internal combustion engines and turbines, mechanical components for land vehicles, including axle journals, couplings, bearings, transmissions, shock absorbers, springs, valves and brakes apparatus, continuous current power I DC motors and alternating current I AC motors for land vehicles, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal, gland packing and flange gaskets and seals, packing cones, valve rings, steam traps, steam valves, butterfly valves, packing plates, gasket sheets, valves, gaskets, stuffing rings, sealing rings, cord rings, oil and grease seals, dust seals, gauge rings, couplings disks, clutch discs, cuffs, hoses, pipes, fittings, hose clamps, tube clamps and pipe clamps, belt connectors, flanges, sleeves, elbows, cylinders, roller and wheel covers, protection shields (guard plates), trays (containers), plates, blocks and bars, sealants, rubber vibration dampers and mats for vibration and shockproof installing of machines, of rubber, resins and other plastics manufactured tape for technical purposes.

The contested goods and services are the following:

Class 7: Machines for grinding, honing, drilling, millworking, sawing, shaping; machine tools; bearing grinding machines; notch grinding and blasting installations; portal saws; bending and testing installations; caulking installations; ultrasonic welding installations; testing installations, in particular installations for testing materials (machines).

Class 9: Measuring apparatus and instruments; electrical test apparatus and testing apparatus; measuring and testing apparatus for checking product quality, in particular eddy current testing apparatus, ultrasonic testing apparatus, structure-borne sound testing apparatus and optical testing devices; electric measuring apparatus and measuring instruments, in particular material testing instruments and machines, measuring devices, electric, probes for scientific purposes.

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, in particular for machines and installations, in particular for special-purpose machines, in particular for testing installations, electric drives, and testing apparatus, in particular for material testing and quality control; construction of apparatus and machines, in particular special-purpose machines, in particular testing installations, electric drives, and testing apparatus, in particular for material testing and quality control.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The expression ‘the aforesaid services also in relation to’ in the opponent’s list of services in Class 42 and the term ‘in particular’ used in the applicant’s list of services in Class 42 indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 machine tools include, as a broader category, the opponent’s machine tools; aforesaid products with the exception of chains and their components. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the word ‘machines’ in Class 7 lacks the clarity and precision to specify the scope of protection that it gives, as it does not provide a clear indication of what machines are covered. Machines can have different characteristics or different purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, could target different consumers, can be sold through different sales channels and therefore may relate to different market sectors.

The contested machines for grinding, honing, drilling, millworking, sawing, shaping; bearing grinding machines; notch grinding and blasting installations; portal saws; bending and testing installations; caulking installations; ultrasonic welding installations; testing installations, in particular installations for testing materials (machines) are all kinds of machines, some of them installed as part of a structure, with different functions, such as grinding, honing, drilling or sawing.

When comparing the contested goods with the opponent’s machines; aforesaid products with the exception of chains and their components, their nature can be considered the same (machines) and their purpose is also the same in the very broadest sense, that is, that they do a particular kind of work, and to that extent these goods are considered similar to a low degree, but, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use are the same or that they have the same distribution channels.

Contested goods in Class 9

The contested measuring apparatus and instruments; electrical test apparatus and testing apparatus; measuring and testing apparatus for checking product quality, in particular eddy current testing apparatus, ultrasonic testing apparatus, structure-borne sound testing apparatus and optical testing devices; electric measuring apparatus and measuring instruments, in particular material testing instruments and machines, measuring devices, electric, probes for scientific purposes are all apparatus for testing and controlling purposes. They are included in the broader category of the opponent’s measuring, checking (supervision) apparatus and instruments. Therefore, they are identical.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; industrial analysis and research services are identically contained in the opponent’s list of services.

The contested design and development of computer hardware and software, in particular for machines and installations, in particular for special-purpose machines, in particular for testing installations, electric drives, and testing apparatus, in particular for material testing and quality control are identical to the opponent’s design and development of computer hardware and software; the aforesaid services also in relation to [...].

The contested construction of apparatus and machines, in particular special-purpose machines, in particular testing installations, electric drives, and testing apparatus, in particular for material testing and quality control are similar to the opponent’s installation services, repair, maintenance of machines and machine tools in Class 37. They may be provided through the same channels and have the same commercial origin and relevant public, since an undertaking assembling apparatus and machines may also install, maintain and repair them.

2. Relevant public — degree of attention

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

In the present case, the relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise (engineers, researchers, IT experts, etc.). The degree of attention may vary from average to high, depending on the nature and type of goods and services concerned and, particularly, due to the highly technical nature, specificity and price of some of them, as well as the infrequency with which they will be purchased/offered.

3. The signs

FLEXION	FLEXICON
Earlier trade mark	Contested sign

The relevant territory is Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch- and German-speaking parts of the relevant public, for which neither of the signs as a whole has a meaning.

The earlier mark is the word mark ‘FLEXION’ and the contested sign is the word mark ‘FLEXICON’. Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The earlier mark, ‘FLEXION’, and the contested sign, ‘FLEXICON’, as a whole have no meaning for the relevant public and are, therefore, distinctive. However, the first part of both signs, ‘FLEXI’, will be seen by the relevant public as an understandable reference to the adjective ‘flexible’, since in German and Dutch the equivalent word is ‘flexibel’. The relevant public will perceive ‘FLEXI’ as indicative of the characteristics – for example the function – of some of the goods in question, such as bending apparatus. Therefore, this element is weak for some goods while it is distinctive for all the other goods and services, as it is neither descriptive nor allusive for them.

Visually and aurally, the signs coincide in the letters ‘FLEXI*ON’, which constitute the entire earlier mark and seven out of the eight letters of the contested sign. However, they differ in the additional letter, ‘C’, in the middle of the contested sign. The fact that the marks coincide in their first letters, ‘FLEXI’, is especially important, since consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

However, account must be taken of the fact that, for some of the goods, the coinciding element ‘FLEXI’ will have only a limited impact, on account of its lower than average degree of distinctiveness.

Bearing in mind the above considerations, it is concluded that the degree of visual and aural similarity between the marks is low for some of the goods (for which ‘FLEXI’ is weak) and high for all the other goods and services (for which ‘FLEXI’ is distinctive).

Conceptually, and bearing in mind the above considerations about the concepts with which the signs will be associated, neither of the signs as a whole has a meaning for the public in the relevant territory. However, as mentioned above, the relevant public will associate the element ‘FLEXI’ in both signs with the concept of ‘flexibility’ and therefore the signs are conceptually highly similar for those goods and services for which ‘FLEXI’ is distinctive and similar to a low degree for those goods for which ‘FLEXI’ is weak.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark (for some of the goods) as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods and services are identical or similar to various degrees. The degree of attention of the public may vary from average to high and the earlier mark has a normal degree of distinctiveness.

The signs are visually, aurally and conceptually similar to a high degree for some of the goods and services.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Taking into account especially the fact that the signs coincide in the sequence of letters ‘FLEXI*ON’, placed in the same order, which constitute the entire earlier mark, ‘FLEXION’, it is considered that the similarities between the signs are enough to counteract the dissimilarity, consisting in only the additional letter, ‘C’, of the contested mark, ‘FLEXICON’. Consequently, when encountering the contested sign, consumers will be led to believe that the goods and services found to be identical or similar, including those goods found to be similar to a low degree, originate from the opponent or from an economically linked undertaking.

This is also true for the contested goods in relation to which the element ‘FLEXI’ is weak, because the first coinciding part, namely ‘FLEXI’, is not an independent element but forms part of an indivisible entity in each mark and is not the only coinciding element that contributes to the likelihood of confusion. The marks under comparison also coincide in the last two letters, ‘ON’, and differ in only the additional letter, ‘C’, of the contested trade mark, as mentioned above, which is in the middle of the sign and will therefore not stay long in the mind of the consumers. Therefore, the fact that the marks coincide almost completely is also sufficient to find likelihood of confusion in relation to those goods for which ‘FLEXI’ is less distinctive.

Considering all the above, there is a likelihood of confusion on the part of the Dutch- and German-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 934 670. It follows that the contested sign must be rejected for all the contested goods and services.

As the earlier right Benelux trade mark registration No 934 670 leads to the success of the opposition and to the rejection of the contested sign for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Belén IBARRA DE DIEGO

Angela DI BLASIO

María Clara IBÁÑEZ FIORILLO

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.