M | Decision 2749201

Date Published: Sep 22, 2017

OPPOSITION No B 2 749 201

Svenska Metallkompaniet AB, Rallarvagen 23, 184 40 Akersberga, Sweden (opponent)

a g a i n s t

Multihela Oy, Kiilaniityntie 1, 02920 Espoo, Finland (applicant), represented by New Bridge IP, PO box 55, 00101 Helsinki, Finland (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 201 is upheld for all the contested goods.

2.        European Union trade mark application No 15 362 387 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 362 387 for the figurative mark , namely against all the goods in Classes 6, 9, 17 and 20. The opposition is based on European Union trade mark registration No 13 815 212 for the figurative mark . The opponent invoked Article 8(1)(a) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLES 8(1)(a) and (b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

On the other hand a likelihood of confusion, as stipulated in Artilce 8(1)(b), 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.

Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR that requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

1. The goods

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

Class 6:        Locks of metal; hinges of metal; suspension clamps of metal; hinges of metal incorporating a spring; window hinges of metal; door hinges of metal; hinges of metal for the fixing of pipes; hinges of metal for the fastening of electrical cables; metal handles; handles of metal for windows; drawer handles of metal; door handles of metal; door fittings of metal; door locks; ironwork for doors; metal components for doors; doors of metal; door holders of metal; door openers, non-electric; fire resistant doors of metal; revolving doors of metal; metallic insect screens for doors; metal door kick plates; metal nameplates and door nameplates; latches (metal -) being fittings for doors; metal door viewers [non-magnified]; window casement bolts; windows of metal; ironwork for windows; window guards of metal; metal window trim; window furniture of metal; window seals of metal; window casement bolts of metal; window surrounds of metal; shutters of metal; cladding of metal for windows; metal window pulleys; window openers, non-electric.

Class 9:        Electronic door locks; digital door locks; central door locking apparatus.

Class 20:        Hinges, not of metal; door hinge guards (non-metallic -); hinge clamps of non-metallic materials; hinges, not of metal having a spring action; hinges, not of metal for the fixing of pipes; hinges for doors and windows (non-metallic -); hinges, not of metal for the fastening of electrical cables; door handles of porcelain; handles made of plastics for doors; door handles, not of metal; window handles (non-metallic -); door fittings made of plastics; decorative edging strips of plastic for use with door fittings; door fittings, not of metal; door stops; door stops of plastic; door friction stays of non-metallic materials; door, gate and window fittings; door, gate and window fittings, non-metallic; horizontal slatted blinds [indoor] for doors; decorative doorstops (non-metallic -) in the form of animals; mechanisms (non-metallic, non-electric -) for locking doors; control apparatus (non-electric -), not of metal for closing doors; overhead suspension tracks of non-metallic materials for use with doors; window display units; window fasteners (non-metallic -); window fittings, not of metal; sash pulleys, not of metal; window glazing fixtures (non-metallic -); decorative edging strips of wood for use with window fittings; mechanisms (non-metallic, non-electric -) for opening windows; mechanisms (non-metallic, non-electric -) for lifting windows; mechanisms (non-metallic, non-electric -) for locking windows.

The contested goods are the following:

Class 6:        Metal building materials; fittings of metal for furniture; fittings of metal for windows; fittings of metal for building; metal building materials; metal locks for windows; locks and keys, of metal; non-electric locks of metal; non-electric locks of metal; metal locking mechanisms; retaining [fixing] devices of metal; metal door trim; hinges for doors and windows (metal -); window guards of metal; handles of metal for windows; ironwork for windows; ventilation grilles of metal for fitting in windows; hinges of metal; hinges of metal; strap-hinges of metal; metal handles; handles of metal for windows; locks of metal for vehicles; bicycle locks of metal; locks of metal for bags; bicycle locks of metal; padlocks; metal padlocks; metal locksets; sliding latches of metal; latches of metal; latches (metal -) being fittings for doors; latches (metal -) being fittings for doors; metal door bolts; catches (window -) of metal; latches (metal -) being fittings for doors; latches (metal -) being fittings for windows; cables, wires and chains, of metal; chains of metal; metal keys for locks; lock casings of metal; bolts (lock -); lock barrels of metal; lock parts of metal; striking plates of metal for locks; metal keys for locks; cremone bolts of metal for windows; locking gate hasps of metal; door locks; door knockers of metal; ironwork for doors; door sections of metal; catches (door -) of metal; door flaps of metal; door chains of metal; door buffers of metal; metal door trim; door pushes of metal; door fittings, of metal; safety fittings of metal for doors; door chains of metal; metal components for doors; door holding devices of metal; metal garage door rollers; door closers, non-electric; door closers, non-electric; non-electric door chimes; metal door viewers [non-magnified]; non-electric metal door bells; non-electric metal door bells; non-electric metal door bells; door friction stays of metal; overhead suspension tracks of metal for use with doors; fittings of metal for windows; window casement bolts of metal; window hinges of metal; window stops of metal; window stops of metal; window latches and hasps of metal; window closers, non-electric; locks and keys.

Class 9:        Mechanical locks [electric, non-metallic]; digital door locks; card operated electronic locks; mechanical locks [electric, metal]; electronic locks; protective and safety equipment; peepholes [magnifying lenses] for doors; fingerprint door locks; electronic door locks; electronic door locks; peepholes [magnifying lenses] for doors.

Class 17:        Draught excluders made of rubber; draught preventers for doors; weatherstripping for use in homes; draught preventers for windows; o-rings; weather seals (non-metallic -) for windows; draught excluders.

Class 20:        Furniture fittings, not of metal; mechanical locks [non-electric, non-metallic]; locks and keys, non-metallic; ventilation grilles (non-metallic -) for fitting in doors; hinges for doors and windows (non-metallic -); plastic handles; furniture locks (non-metallic -); locks, other than electric, not of metal; padlocks, not of metal; non-metal door bolts; non-metal door bolts; non-metal door latches; lock casings, not of metal; lock barrels, not of metal; keys (non-metallic -) for opening locks; striking plates (non-metallic -) for locks; handles made of plastics for doors; plastic doorknobs; door fittings made of plastics; door fittings, not of metal; plastic garage door rollers; catches (door -), not of metal; door buffers, not of metal; door, gate and window fittings, not of metal; furniture for doors [non-metallic]; door bells, not of metal, non-electric; closers (non-electric, non-metallic -) for doors; non-metal door viewers [non-magnified]; door, gate and window fittings, non-metallic; mechanisms (non-metallic, non-electric -) for opening doors; mechanisms (non-metallic, non-electric -) for locking doors; mechanisms (non-metallic, non-electric -) for lifting doors; door closers (non-electric -) of non-metallic materials; overhead suspension tracks of non-metallic materials for use with doors; window fittings, not of metal; window handles (non-metallic -); espagnolette mechanisms, not of metal; windows limiters, not of metal; sash fasteners, not of metal for windows; window casement bolts (non-metallic -).

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 6

The contested locks, of metal; hinges for doors and windows (metal -); window guards of metal; handles of metal for windows; ironwork for windows; hinges of metal (listed twice); metal handles; handles of metal for windows; latches (metal -) being fittings for doors (listed three times); door locks; ironwork for doors; door fittings, of metal; metal components for doors; metal door viewers [non-magnified]; window casement bolts of metal; window hinges of metal are identically contained in the opponent’s list of goods.

The contested metal building materials (listed twice) include, as a broader category the opponent’s hinges of metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested metal locks for windows; non-electric locks of metal (listed twice); metal locking mechanisms; locks of metal for vehicles; bicycle locks of metal (listed twice); locks of metal for bags are included in or overlap with the broad category of the opponent´s locks of metal. Therefore, they are identical.

The contested strap-hinges of metal are included in the broad category of the opponent’s hinges of metal. They are, therefore, identical.

The contested metal locksets; padlocks; metal padlocks; bolts (lock -) overlap with the opponent´s locks of metal. Therefore, they are identical.

The contested latches of metal include as a broader category the opponent´s latches (metal -) being fittings for doors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sliding latches of metal overlap with the opponent’s latches (metal -) being fittings for doors. Therefore, they are identical.

The contested safety fittings of metal for doors are included in the broad category of the opponent´s door fittings of metal. Therefore, they are identical.

The contested fittings of metal for building; retaining [fixing] devices of metal overlap with the opponent’s door fittings of metal, therefore, they are identical.

The contested metal door trim (listed twice); metal door bolts; door knockers of metal; door sections of metal; catches (door -) of metal; door flaps of metal; door chains of metal (listed twice); door buffers of metal; door pushes of metal; door holding devices of metal; metal garage door rollers; door friction stays of metal; overhead suspension tracks of metal for use with doors; door closers, non-electric (listed twice); chains of metal (listed twice) are included in or overlap with the broad category of the opponent’s metal components for doors. Therefore, they are identical.

The contested locks include as a broader category the opponent’s locks of metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

For having the same nature, purpose and method of use, the same producers, distribution channels and end users:

• the contested fittings of metal for furniture; fittings of metal for windows (listed twice) are highly similar to the opponent’s door fittings of metal.

• the contested cremone bolts of metal for windows are highly similar to the opponent’s window casement bolts of metal.

• the contested latches (metal -) being fittings for windows are highly similar to the opponent´s latches (metal -) being fittings for doors.

The contested keys of metal; keys; metal keys for locks (listed twice) are similar to the opponent’s locks of metal because they are complementary to each other, they have the same distribution channels, end users and can originate from the same undertaking.

For having the same producers, end users and distribution channels:

• the contested catches (window -) of metal; window stops of metal (listed twice); window latches and hasps of metal; window closers, non-electric are similar to the opponent’s window hinges of metal.

• the contested ventilation grilles of metal for fitting in windows are similar to the opponent’s door fittings of metal.

• the contested non-electric metal door bells (listed three times); non-electric door chimes are similar to the opponent’s metal door viewers [non-magnified].

• the contested lock casings of metal; lock barrels of metal; lock parts of metal; striking plates of metal for locks; locking gate hasps of metal are similar to the opponent’s locks of metal.

The contested cables, wires of metal, although they do not share the same nature, purpose and method of use with the opponent’s hinges of metal for the fastening of electrical cables, they can still target the same public and have the same producers and distribution channels. Therefore, they are similar.  

 

Contested goods in Class 9

Digital door locks and electronic door locks (listed twice) are identically contained in both lists of goods.

The contested mechanical locks [electric, non-metallic]; mechanical locks [electric, metal]; card operated electronic locks; electronic locks; fingerprint door locks overlap with the opponent’s electronic door locks and digital door locks and they are, therefore, identical.

The contested goods protective and safety equipment include, as a broader category, the opponent’s electronic door locks and digital door locks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

The contested peepholes [magnifying lenses] for doors (listed twice) are similar to the opponent’s metal door viewers [non-magnified] as they have the same purpose, distribution channels and end users and they are also in competition with each other.

Contested goods in Class 17

The contested goods in Class 17, namely draught excluders made of rubber; draught preventers for doors; weatherstripping for use in homes; draught preventers for windows; o-rings; weather seals (non-metallic -) for windows; draught excluders are similar to the opponent’s window seals of metal in Class 6. They have the same purpose, namely to seal and isolate outer influences like draught or water. They can also coincide in the producers, the distribution channels and the end users.

Contested goods in Class 20

The contested hinges for doors and windows (non-metallic-); handles made of plastics for doors; door fittings made of plastics; door fittings, not of metal; door, gate and window fittings, not of metal; door, gate and window fittings, non-metallic; mechanisms (non-metallic, non-electric - ) for locking doors; overhead suspension tracks of non-metallic materials for use with doors; window fittings, not of metal; window handles (non-metallic -) are identically contained in the opponent’s lists of goods.

The contested plastic handles include, as a broader category, the opponent’s handles made of plastics for doors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

The contested mechanical locks [non-electric, non-metallic]; locks and keys, non-metallic; furniture locks (non-metallic -); locks, other than electric, not of metal; padlocks, not of metal overlap with the opponent’s mechanisms (non-metallic, non-electric -) for locking doors. They are, therefore, identical.

The contested catches (door -), not of metal; door buffers, not of metal are included in the broad category of the opponent’s door, gate and window fittings. Therefore, they are identical.

The contested plastic garage door rollers; closers (non-electric, non-metallic -) for doors; door closers (non-electric -) of non-metallic materials overlap with the opponent’s control apparatus (non-electric -), not of metal for closing doors. Therefore, they are identical.

For having the same purpose and method of use, the same producers, distribution channels and end users the contested furniture fittings, not of metal; ventilation grilles (non-metallic -) for fitting in doors are highly similar to the opponent’s door fittings, not of metal.

For having the same purpose, method of use, producers, distribution channels and end users and for being in competition with each other:

•  the contested mechanisms (non-metallic, non-electric -) for opening doors; mechanisms (non-metallic, non-electric -) for lifting doors are highly similar to the opponent’s door openers, non-electric in Class 6.

• the contested plastic doorknobs are highly similar to the opponent’s door handles, not of metal.

For having the same nature, purpose and method of use, as well as producers, distribution channels and end users and differing just in being metal or non-metal:

• the contested window casement bolts (non-metallic -) are highly similar to the opponent’s window casement bolts in Class 6.

• the contested non-metal door latches are highly similar to the opponent’s latches (metal -) being fittings for doors in Class 6.

• the contested non-metal door viewers [non-magnified] are highly similar to the opponent’s metal door viewers [non-magnified] in Class 6.

For having the same producers, distribution channels and end users:

• the contested furniture for doors [non-metallic] are similar to the opponent’s door, gate and window fittings.

• the contested non-metal door bolts (listed twice) are similar to the opponent’s window casement bolts in Class 6.

• the contested espagnolette mechanisms, not of metal; windows limiters, not of metal are similar to the opponent’s mechanisms (non-metallic, non-electric -) for locking windows.

• the contested door bells, not of metal, non-electric are similar to the opponent’s metal door viewers [non-magnified] in Class 6.

• the contested sash fasteners, not of metal for windows are similar to the opponent’s sash pulleys, not of metal.

• the contested lock casings, not of metal; lock barrels, not of metal; keys (non-metallic -) for opening locks; striking plates (non-metallic -) for locks are similar to the opponent’s mechanisms (non-metallic, non-electric -) for locking doors.

2. The signs

Earlier trade mark	Contested sign

The frame contained in the contested sign is minimally thicker than the frame of the earlier sign. However, this difference is insignificant and it will go unnoticed by the average consumer. Therefore, the signs are considered to be identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the contested goods are identical or similar (to various degrees) to the opponent’s goods. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for the goods, listed above, found to be identical.

Furthermore, as regards the remaining goods that were found to be similar (to various degrees) to the goods covered by the earlier trade mark, given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lars HELBERT

Alexandra APOSTOLAKIS

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.