gsp GENUINE SPARE PARTS | Decision 2558396
Date Published: Sep 28, 2017
OPPOSITION No B 2 558 396
Samoa Industrial, S.A., Pol. Ind. Porceyo, I-14 Camino del Fontán, 831, 33392 Gijón (Asturias), Spain (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative)
a g a i n s t
Fiac S.p.A., Via Vizzano, 23, 40037 Sasso Marconi (BO), Italy (applicant), represented by Bugnion S.p.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative).
On 12/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 558 396 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 international registration designating the European Union No 1 221 578. The opposition is based on European Union trade mark registration No 7 009 574. 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
The goods on which the opposition is based are the following:
Class 7: Pumps (machines and parts of machines, engines or motors), pneumatic and hydraulic pumps, pneumatic oil, coolant and diaphragm pumps, fluid decanting pumps, air pumps (garage installations), centrifugal pumps, compressed air pumps, vacuum pumps (machines), pump diaphragms; lubricating pumps, lubricators (parts of machines), mobile and stationary high- and low-pressure lubricating machines, grease rings, grease boxes (machines), fluid drainage pumps; machines for recovering and changing brake fluid; fixed and movable oil dispensers; greasing benches (machines);filtering machines, cartridges for filtering machines, filters (parts of machines or engines), filter presses; used filter compactors; lifts, elevating apparatus, slide rests, drum trolleys; feeders and hydraulic devices; suction machines for industrial purposes, air suction machines, oil suction machines, gravity oil recovery machines, vacuum fluid suction machines; hydraulic couplings; mobile lubrication machines and platforms; Reels, mechanical, for flexible hoses; electric motors and engines (except for land vehicles), electric generators, electric pumps for decanting fluids, blowing engines, air suction machines, injectors for engines; compressors; painting machines and spray guns for paint, compressed air guns for the extrusion of mastics, electric glue guns; 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; finishing machines; aerocondensers; sizing machines, smoothing presses and tarring machines, feeders, axles for machines; hydraulic rams (machines); belts for conveyors; engines and motors, all for boats; waste disposals; waste compacting machines; mixers; connecting rods for machines, motors and engines; reels (parts of machines); candles; bulldozers; capstans; transmission chains and gear boxes (other than for land vehicles); mangles; carburettors; brushes being parts of machines; condensers; fuel converters and converters for steel works; belts for machines; packaging machines; extractors; metal drawing machines; labellers (machines); excavators; threading machines; filtration machines; milling machine; casting machines; washing and cleaning machines and apparatus; hydraulic and pneumatic controls; power and air hammers; mixing machines; molds (parts of machines); boring machines; presses; (machines for industrial purposes); separating machines; dyeing and stamping machines, typographic machines; conveyors; vibrating machines, glassworking machines; vulcanisation apparatus; steam engines; steam/oil separators, mechanical reels for flexible hoses.
Class 8: Hand pumps; hand-operated grease guns; manually operated lever, push and screw grease guns, made of metal; manually operated control valves for use with lubrication or material handling pumping machines; lever-operated grease guns and hand oil and grease filling apparatus; hand-operated apparatus for connecting belts and conveyor belts, hand-operated assembly apparatus for belt and conveyor belt connecting rods; hand-operated belt tensioners, belt planes, belt cutters, belt strippers and apparatus for preventing belt waves; cutting torches and tips, fuel gas-air torches for low temperature brazing and welding, cutting attachments for cutting torches.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments; automatic vending machines, measuring apparatus, volumetric measuring apparatus, electric measuring and precision measuring apparatus and instruments, surveying instruments, levelling instruments, level indicators and gasoline gauges; flow meters; calibrators, calibrating rings; meters; electric accumulators, including for vehicles (batteries);electric welding and arc cutting apparatus; distribution boxes and junction boxes (electricity); motor fire engines; self-regulating fuel pumps; fuel dispensing pumps for service stations or workshops; gasometers; material for electricity mains (wires, cables); control apparatus; diagnostic apparatus (not for medical purposes); dosage dispensing apparatus; balancing apparatus ;electronic components for fluid control and management systems; fuses, navigation instruments including for vehicles (onboard computers); pressure measuring apparatus; automatic low-pressure indicators; over-voltage and voltage regulators for vehicles; respirators for filtering air; temperature indicators, thermostats; wireless telegraphy apparatus; computer programmes (software);data processing equipment, computers and computer peripheral devices (hardware);communications and telecommunications equipment; mechanisms for coin-operated apparatus; fire-extinguishing apparatus; safety nets, protective suits and devices for personal use against accidents; alarms, luminous and mechanical signals.
The contested goods are the following:
Class 7: Compressors (machines); compressed air machines and engines; cocks and valves (parts of machines); compressed air pumps; pressure reducers; motorised and manually operable drills; atomisers; aspirators (suction machines); automatic hose reels; spray guns for paint; compressed air guns (tools); pneumatic starters.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 assumed to be identical, which are all sorts of machines and parts of machines, are directed both at the public at large and at a specialised public with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The only coinciding element, ‘GENUINE’, is understood in part of the EU as indicating ‘authentic’, either because similar words exists in other languages (for example, genuino in Spanish and Italian or genuíno in Portuguese) or because consumers have a good knowledge of English. This word is therefore weak for this part of the public for the relevant goods because it simply describes the quality of the goods.
However, for the other part of the public, such as the Hungarian-speaking public, it has no meaning and is distinctive.
The Opposition Division will first examine the opposition in relation to the part of the public for which ‘GENUINE’ has no meaning and has a normal degree of distinctiveness.
The earlier mark is a figurative sign containing the words ‘GENUINE COMPONENTS’ in black capitals. Above the words, there is a partial hexagon element containing what appears to be a stylised letter ‘G’ and ‘C’. No element is more dominant than the others.
The contested sign is a figurative mark containing the letters ‘gsp’ in lowercase, white, block letters, with a black outline. These letters appear in italics and are the most dominant (visually eye-catching) element in the mark due to their size. A white line divided into three sections appears below these letters. At the bottom of the sign, the words ‘GENUINE SPARE PARTS’ appear in smaller uppercase letters, in italics as well. There is a device element resembling an unidentifiable object below the letter ‘S’ and to the right of the sign, two star shapes which could resemble cogs or some sort of part for a machine.
As explained above, the element ‘GENUINE’ of the earlier mark and the contested sign has no meaning for the relevant public and is, therefore, distinctive. The same applies to the word ‘COMPONENTS’ in the earlier mark.
The words ‘SPARE PARTS’ in the contested sign will not be understood by the relevant public. They are, therefore, distinctive, as are the letters ‘gsp’, even if they may be seen as standing for ‘GENUINE SPARE PARTS’ which appear below. The device elements in the contested sign which represent parts of machines and an unidentifiable object are deemed to have less of an impact than the words in the sign.
Visually, the signs coincide in the word ‘GENUINE’, which is distinctive for the relevant public. However, they differ in all other regards, namely in the word ‘COMPONENTS’ and the hexagonal device element containing letters which occupies as much space in the sign as the remaining words. As for the contested sign, it contains the letters ‘gsp’ which are dominant, and other words which are distinctive, namely ‘SPARE PARTS’. The device elements contained in the contested sign, although weaker, will not be completely overlooked. Overall, the getup of each of the signs is quite different.
Taking into account all the above considerations, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GENUINE’, present identically in both signs. The pronunciation differs in all of the other words in the signs. While the letters contained in the device element in the earlier mark are less likely to be pronounced because they are hard to decipher, the Opposition Division considers that ‘gsp’ in the contested sign will probably be pronounced in the first place owing to its large size within the sign as a whole. It is less likely that the relevant public will pronounce ‘GENUINE SPARE PARTS’ in the contested sign, since they will probably focus on the visually dominant letters ‘gsp’.
Therefore, the signs are aurally similar to a low degree.
Conceptually, although the public in the relevant territory will perceive the meaning of some of the device elements in the contested sign, as explained above, the other sign 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.
- 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.
- Global assessment, other arguments and conclusion
The signs at issue have been found visually and aurally similar to a low degree. The goods have been assumed to be identical.
The case at hand concerns two figurative marks which in fact only coincide in one word, ‘GENUINE’. It is a matter of fact that this word will be understood in many Member States of the European Union and will be seen as weak, as it simply describes the authenticity of the products offered for sale. Nevertheless, there are some territories, such as Hungary, where the word ‘GENUINE’ will not be understood. The Opposition Division has therefore focused its analysis on the territory where there is the highest probability of confusion on the part of the consumer.
In this case, however, even accepting that the only coinciding word enjoys a normal degree of inherent distinctiveness, the Opposition Division holds the view that there are still sufficient differences between the marks to enable the relevant consumer to distinguish between them. First, at a visual level, the eye of the consumer will be drawn to the letters ‘gsp’ in the contested sign, on account of their dominance within the sign as a whole. This also means that the consumer is most likely to refer to the sign as ‘gsp’. In fact, it is questionable whether the consumer will actually pronounce the words ‘GENUINE SPARE PARTS’ at all. The earlier mark, on the other hand, will be referred to as ‘GENUINE COMPONENTS’. However, even assuming that the consumer does pronounce the word ‘GENUINE’ in the contested sign, there are still ample differences between the signs to enable consumers to distinguish between them. The words ‘COMPONENTS’ in the earlier mark and ‘SPARE PARTS’ in the contested sign will not be ignored. It is also worth bearing in mind that they are perfectly distinctive for the relevant consumer. The earlier mark also contains a device element which will not be overlooked, at least visually. The contested sign, as already mentioned above, contains the large letters ‘gsp’, as well as some weaker device elements. The overall stylisation and getup of the signs is quite different too. All of this leads the Opposition Division to conclude that the relevant consumer will not confuse the signs, even taking account of the most propitious circumstances for the opponent.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘GENUINE’ is weak. This is because, as a result of the weak character of that element, that part of the public will perceive the signs as being even less similar. Furthermore, the opponent claims in particular, that for English speakers, there is conceptual identity between the signs, because ‘GENUINE COMPONENTS’ and ‘GENUINE SPARE PARTS’ amount to the same thing. Even though the Opposition Division concedes that these expressions evoke similar ideas, the expressions are entirely descriptive of the goods at issue for English speakers. Under these circumstances, the English-speaking consumer would place very little importance on these weak expressions (which are not in any case identical visually or aurally) and would look to other elements to distinguish between the signs, in particular the visually dominant acronym in the contested sign. There would, therefore, be no likelihood of confusion for English speakers either.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Lucinda CARNEY | Vanessa PAGE |
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.