KSM | Decision 2221052 - BOMBAS ERCOLE MARELLI, S.L.U. v. KSM Castings Group GmbH
Date Published: Oct 1, 2017
OPPOSITION No B 2 221 052
Bombas Ercole Marelli, S.L.U., ctra. Madrid -Toledo, KM. 30,800, 45200, Illescas, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043, Madrid, Spain (professional representative)
a g a i n s t
KSM Castings Group GmbH, Cheruskerring 38, 31137, Hildesheim, Germany (applicant), represented by Thömen & Körner, Zeppelinstr. 5, 30175, Hannover, Germany (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 221 052 is partially upheld, namely for the following contested goods:
Class 7: Cast parts (parts of machines); Cast parts (parts of motors and engines); Motors and engines (except for land vehicles); Parts for motors and engines (of all kinds); Housings [parts of machines]; Engine housings; Cylinder head covers for motors and engines; Engine cradles, Oil sumps (engine parts); Housings and chassis for machine, motor and engine electrics; Pumps (parts for machines and motors and engines), in particular injection pump housings for fuel injection, oil and water pump housings; All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; Cast parts of light metal combined with parts of metal, in particular steel, rubber or plastic, being parts and housings for motors, engines and machines (except for land vehicles); machine tools; except centrifugal pumps and parts thereof.
2. European Union trade mark application No 11 764 909 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 11 764 909 ‘KSM’, namely all the goods in Class 7. The opposition is based on Spanish trade mark registration No 1 655 881 ‘’. The opponent invoked Article 8(1)(a) and (b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 1 655 881.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 27/05/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 27/05/2008 to 26/05/2013 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 7: Centrifugal pumps.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 26/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/03/2016 to submit evidence of use of the earlier trade mark. On 28/03/2016, within the time limit, the opponent submitted evidence of use. The evidence to be taken into account is the following:
Annex 1: Numerous invoices dated between 2008 and 2013 (some of them outside the relevant period). Many of the invoices include the mark ‘KSMK’ and are addressed to various businesses throughout Spain. The mark appears alongside the word ‘BOMBA’ which is Spanish for pump, as explained by the opponent in its observations. The price per unit is high, i.e. thousands of euros.
More specifically, there are two invoices addressed to Repsol-Petroleo, S.A. in Madrid including, amongst other products, ‘BOMBA KSMK’ amounting to €2.386,00 and €3.874,00, dated 27/04/2010 and 24/06/2010 respectively.
Another invoice is to a company called Initec Plantas Industriales SA in Madrid for €3.033,00. It is dated 27/09/2010.
An invoice to BP Oil España, S.A.U. in Alcobendas (Madrid) amounts to €3.445,00 and is dated 25/02/2013.
Annex 2: A brochure which contains the copyright date of 2009. The applicant is critical of the brochure stating that it is not clear when it was published, where it was issued and viewed by whom. Therefore, it states that this Annex does not assist the opponent in establishing use of the mark on the relevant goods. However, it is noted that the mark ‘KSMK’ appears on the first page of the brochure and on page two it states: ‘More than 40 years of experience in centrifugal pump design, development, manufacturing and services, to fulfil the latest standards for petroleum, petrochemical process and heavy duty processing industries, as full compliance machinery.’ The brochure also makes reference to the ‘European Sales Office’ in France and another office in Spain.
Assessment of the evidence
Place
The invoices show that the place of use is Spain. This can be inferred from the language of the documents (‘Spanish’), the currency mentioned (‘Euros’) and the Madrid addresses. Therefore, the evidence relates to the relevant territory.
Time
Most of the invoices are dated within the relevant period. The invoices which refer to ‘Bomba KSMK’ are dated July 2008, June 2009 (two), April 2010, June 2010, September 2010 plus January and February 2013. Further the brochure includes the copyright date of 2009.
Extent and nature of use
The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Whilst the number of items sold is not particularly high, they are expensive items and the Opposition Division would not, therefore, expect the number of items sold to be high.
The evidence shows that the mark has been used as registered for the goods for which the mark is registered. The applicant argues that it is not clear whether the invoices actually relate to centrifugal pumps. It is acceptable to the Opposition Division that the invoices include the reference ‘bomba’ (meaning pump) since it would be unreasonable to expect specific reference to centrifugal pumps.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
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
Preliminary remark
On 23/06/2016 the applicant wrote to the Office requesting that Class 7 of its application is amended by adding the following limitation, ‘except centrifugal pumps and parts thereof’.
On 14/07/2016 the Office wrote to the opponent notifying it of the limitation and requested confirmation of whether it maintained the opposition. On 14/11/2016 the opponent confirmed its intention to proceed with the opposition. Therefore, the opposition shall proceed against the list of Class 7 goods, as amended.
The goods on which the opposition is based are the following:
Class 7: Centrifugal pumps.
The contested goods are the following:
Class 7: Cast parts (parts of machines); Cast parts (parts of motors and engines); Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles), and parts therefor; Parts for motors and engines (of all kinds); Housings [parts of machines]; Engine housings; Cylinder head covers for motors and engines; Engine cradles, Oil sumps (engine parts); Housings and chassis for machine, motor and engine electrics; Pumps (parts for machines and motors and engines), in particular injection pump housings for fuel injection, oil and water pump housings; All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; Cast parts of light metal combined with parts of metal, in particular steel, rubber or plastic, being parts and housings for motors, engines and machines (except for land vehicles); Machines for metal working and machine tools; Casting machines, in particular for the manufacture of cast parts of light metals, in particular of aluminium alloys; Casting moulds (parts of machines), in particular for the manufacture of parts of machines and vehicles; except centrifugal pumps and parts thereof.
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.
The opposition is based solely on centrifugal pumps which have been expressly removed from the Class 7 list of goods. This is clearly an attempt by the applicant to avoid conflict. Whilst centrifugal pumps have been excluded from the applicant’s goods this in itself is generally not sufficient to avoid there being similarity. Comparison of goods is a multi-factor assessment (as listed above) and whilst a limitation of this nature cannot result in the goods being considered to be identical, they may nevertheless coincide in other aspects resulting in similarity.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested motors and engines (except for land vehicles); All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; except centrifugal pumps and parts thereof are considered to be similar to a low degree to the opponent’s centrifugal pumps since they coincide in producers and relevant public. Further they are complementary.
The contested pumps (parts for machines and motors and engines), in particular injection pump housings for fuel injection, oil and water pump housings; All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; except centrifugal pumps and parts thereof would generally be considered identical to the opponent’s centrifugal pumps. However, in view of the limitation this cannot be the case. Notwithstanding this they must be considered similar since they coincide in nature, producer, distribution channels and sold in the same outlets. Therefore, they are similar.
The contested cast parts (parts of machines); Cast parts (parts of motors and engines); Parts for motors and engines (of all kinds); Housings [parts of machines]; Engine housings; Cylinder head covers for motors and engines; Engine cradles, Oil sumps (engine parts); Housings and chassis for machine, motor and engine electrics; All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; Cast parts of light metal combined with parts of metal, in particular steel, rubber or plastic, being parts and housings for motors, engines and machines (except for land vehicles); except centrifugal pumps and parts thereof mainly comprise various parts and fitting for machines and engines but they are specifically not for centrifugal pumps. Notwithstanding this, manufacturers of parts and fitting for engines and motors are also likely to produce the same for pumps. Further, they are likely to be sold in the same outlets via similar channels. Accordingly, all of the aforementioned goods are considered to be similar to the opponent’s centrifugal pumps, albeit to a low degree.
The contested machine tools; except centrifugal pumps and parts thereof except centrifugal pumps are similar to a low degree to the opponent’s centrifugal pumps since they coincide in producer and relevant public. Furthermore they are complementary.
The contested machine coupling and transmission components (except for land vehicles), and parts therefor; All of the aforesaid good being in particular in the form of cast parts; All the aforesaid goods in particular of light metal, in particular of aluminium alloys; except centrifugal pumps and parts thereof are dissimilar to the opponent’s centrifugal pumps. This is because the contested goods are used to connect two shafts together in order to transfer power. They are not typically used on pumps per se and they are not likely to be manufactured by the same entities and distributed through the same distribution channels. These goods have different nature, purpose and method of use. They are neither complementary nor in competition.
The contested Machines for metal working; Casting machines, in particular for the manufacture of cast parts of light metals, in particular of aluminium alloys; Casting moulds (parts of machines), in particular for the manufacture of parts of machines and vehicles; except centrifugal pumps and parts thereof are specific machines used for metal and casting purposes. They are specific machines which exclude centrifugal pumps and therefore have different natures, purposes and distribution channels. They are neither complementary nor in competition. They are considered to be dissimilar.
- 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 found to be similar are generally specialised goods which are directed at business customers with specific professional knowledge or expertise. The degree of attention will be high.
- The signs
| KSM |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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).
Whilst the earlier mark is referred to as a figurative mark, there is little (if any) stylisation. The letters are merely presented in a thicker font. For the relevant public the letters ‘KSMK’ have no meaning and have an average degree of distinctiveness in relation to the goods in question.
The contested sign is a word mark, ‘KSM’. The word will be perceived by the relevant public as meaningless and is distinctive in relation to the goods in question.
The contested mark is fully incorporated in the earlier sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.
Visually, the signs coincide in the letters ‘KSM’. They differ only in the additional letter ‘K’ at the end of the earlier trade mark. Therefore, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KSM’, present identically in both signs. The pronunciation differs in the sound of the last letter ‘K’ present in the earlier trade mark. Therefore, the signs are aurally similar to an above average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 contested goods are partly similar to varying degrees and partly dissimilar to the opponent’s goods. The earlier trade mark enjoys a normal degree of inherent distinctiveness and the degree of attentiveness is high since the goods target a professional public.
The signs in dispute are visually and aurally similar to an above average degree, due to the commonality in the string of letters ‘KSM’, which constitutes the entirety of the contested sign. Neither of the signs has a meaning for the relevant public; therefore, there are no conceptual differences between the signs that would distinguish between their overall impressions.
In the present case, the difference in a single letter placed at the end of the sign is not sufficient to overcome the fact that the earlier mark is entirely included in the contested sign even for consumers who pay a high degree of attention (they too still to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The applicant argues since the respective marks are short signs the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Although the marks are only four and three letters long respectively, the coincides between the signs are too great for them to be counteracted by one letters difference even for shorter marks. Therefore, this argument is taken into consideration but is dismissed.
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). This is known as the interdependency principle.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 1 655 881. It follows from the above that the contested trade mark must be rejected for the goods to be similar to those of the earlier trade mark. Where the goods were found to be similar to a low degree, this is offset (applying the interdependency principle set out above) by the higher than average degree of similarity between the marks.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Ioana MOISESCU | Mark KING | Zuzanna STOJKOWICZ |
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.