GCM GROUP | Decision 2701046 - GCM NV v. GCM MAKİNA SANAYİ VE TİCARET LİMİTED ŞİRKETİ

Date Published: Sep 28, 2017

OPPOSITION No B 2 701 046

GCM NV, Sagastraat 1, 9041 Gent, Belgium (opponent), represented by Remarkable Europe NV, Onafhankelijkheidslaan 14, 9000 Gent, Belgium (professional representative)

a g a i n s t

GCM Makina Sanayi ve Ticaret Limited Şirketi, Atatürk Sanayi Bölgesi, İbni Sina Caddesi, No:2 Hadımköy, Arnavutköy, Istanbul, Turkey (applicant), represented by Ufficio Internazionale Brevetti Ing. C. Gregorj S.R.L., Via Muratori 13/B, 20135 Milano, Italy (professional representative).

On 16/05/2017 the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 046 is upheld for all the contested goods and services, namely:

Class 7:        Recycling machines (for plastics); textile machines; packaging machines.

Class 35:        The bringing together, for the benefit of others, of a variety of goods, namely, recycling machines (for plastics), textile machines, packaging machines, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

2.        European Union trade mark application No 15 021 091 is rejected for all the contested goods and services. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 021 091, namely against all the goods in Class 7 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 14 545 792. 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.

1. The goods and services

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

Class 7:        Installations for processing bulk goods; moving and handling equipment; industrial machines and machine tools for moving materials; industrial machines and industrial machine tools; agricultural machines and agricultural machine tools; conveyors and conveyors belts; material production and processing machines.

Class 37:        Building, construction and demolition; repair of industrial machines and agricultural machines; installation services in relation to industrial machines and agricultural machines; installation of bulk handling systems; installation and maintenance of systems for loading and unloading bulk goods; rental of tools, apparatus, personnel and equipment for construction, maintenance, repairs and demolition; advice relating to the installation of apparatus; installation services and maintenance of conveyor belts; building construction, maintenance and demolition of transport installations.

Class 40:        Recycling and waste treatment; material treatment information; custom assembling of electronic components for communication devices; custom assembling of materials for others; air and water conditioning and purification; energy production.

The contested goods and services are the following:

Class 7:        Recycling machines (for plastics); textile machines; packaging machines.

Class 35:        The bringing together, for the benefit of others, of a variety of goods, namely, recycling machines (for plastics), textile machines, packaging machines, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

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 ‘namely’, used in the applicant’s list of services in Class 35 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods that are being sold.

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 recycling machines (for plastics); textile machines; packaging machines are machines used in the recycling, textile and packaging industries and are included in the broad category of the opponent’s industrial machines. Therefore, they are identical.

Contested services in Class 35

The contested the bringing together, for the benefit of others, of a variety of goods, namely, recycling machines (for plastics), textile machines, packaging machines, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues is considered similar to a low degree to the opponent’s industrial machines in Class 7. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

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 goods and services found to be identical or similar to a low degree are directed at business customers with specific professional knowledge or expertise. Taking into consideration the price and specialised nature of the industrial machines, the degree of attention is considered higher than average.

3. The signs

GCM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, considering that the element ‘GROUP’ is an English word and will be understood by the English-speaking public, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, ‘GCM’. The combination of letters ‘GCM’ does not form an acronym that would be perceived as descriptive in relation to the relevant goods, and it will be perceived as meaningless by the relevant public. Therefore, it has a normal degree of distinctiveness.

The contested sign is a figurative mark composed of the verbal element ‘GCM’ depicted in red upper case letters, the verbal element ‘GROUP’ depicted in smaller black upper case letters under it and a figurative element consisting of a stylised depiction of a cogwheel in red and black. The word element ‘GCM’ will be perceived as indicated above and has a normal degree of distinctiveness in relation to the relevant goods and services. The element ‘GROUP’ will be understood as ‘an association of companies under single ownership and control’. Bearing in mind that the goods and services in question could all be manufactured and provided by an association of companies under single ownership and control, this element is considered weak. The depiction of a cogwheel is weak, because it will be seen as referring to characteristics and the nature of the goods, being industrial machines. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element ‘GCM’ is the most distinctive element of the contested sign.

Despite some differences in the sizes and colours of the word and figurative elements in the contested sign, it has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the earlier mark and the distinctive verbal element ‘GCM’ of the contested sign are identical. The signs differ in the colours of the contested sign, its word element ‘GROUP’ and its figurative element, which, however, will not have a significant impact, since consumers will focus on the most distinctive element, ‘GCM’, and pay less attention to these weaker elements. Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GCM’, present identically in both signs. The figurative element of the contested sign will not be referred to orally by the relevant public and does not have any impact on the aural comparison. The pronunciation differs in the sound of the letters ‘GROUP’ of the contested sign. However, considering the weight attributed to this element (as explained above), it is considered that the signs are aurally similar to a higher than average degree.

Conceptually, although the public in the relevant territory will perceive the meanings conveyed by the verbal element ‘GROUP’ and the figurative element of the contested sign, as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the contested goods are identical and the contested services are similar to a low degree to the opponent’s goods, and they target professional consumers with a higher than average degree of attention.

As explained in section c), the signs are considered conceptually not similar, visually similar to at least an average degree and aurally similar to a higher than average degree on account of the coinciding distinctive element ‘GCM’. The degree of distinctiveness of the earlier mark is average.

Taking into account that the differences between the signs arise from secondary elements of the contested sign, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public, even considering its higher degree of attention, is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods and services in question (even those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part 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 European Union trade mark registration No 14 545 792. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Anunciata SEVA MICO

Rasa BARAKAUSKIENE

Denitza STOYANOVA-VALCHANOVA

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.