+OBRA | Decision 2699299

Date Published: Sep 25, 2017

OPPOSITION No B 2 699 299

Knipex-Werk C. Gustav Putsch Kg, Oberkamperstr. 13, 42349 Wuppertal, Germany (opponent), represented by Rieder & Partner Mbb Patentanwälte - Rechtsanwalt, Corneliusstr. 45, 42329 Wuppertal, Germany (professional representative)

a g a i n s t

Bigmat Logistica S.A., Avda. de los Pirineos, 7 1ª Planta -28703 San Sebastián de Los Reyes (Madrid), Spain (applicant), represented by Protectia Patentes y
Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 299 is partially upheld, namely for the following contested goods and services:

Class 8: Hand tools and implements (hand operated).

Class 35: Retailing in shops, wholesaling and sale via global computer networks of all kinds of tools.

2.        European Union trade mark application No 14 946 156 is rejected for all the above goods and services. 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 and services of European Union trade mark application No 14 946 156, namely against all the goods in Class 8 and some of the services in Classes 35 and 39. The opposition is based on international trade mark registration designating the European Union No 498 711. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMMINARY REMARK

The opponent indicated in the Notice of Opposition that the opposition was based on “all the goods and services covered by the registration/application”.

The opponent explains in its arguments that the earlier mark is registered for
Class 8: hand tools, and according to this statement carries out the comparison of the goods and services involved.

However, the Opposition Division notes that, according to the registration certificate, the earlier international trade mark is, after a limitation (date of recording 09/07/2014), registered in the European Union for Class 8: Hand tools, namely water pump pliers and pipe wrenches, and therefore the opposition is understood to be based on them, independently of the discrepancy with the opponent´s arguments.

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 on which the opposition is based are the following:

Class 8: Hand tools, namely water pump pliers and pipe wrenches.

The contested goods and services are the following:

Class 8: Hand tools and implements (hand operated); Side arms; Razors; Cutlery.

Class 35: Retailing in shops, wholesaling and sale via global computer networks of all kinds of tools.

Class 39: Transport, distribution, storage and warehousing of all kinds of tools.

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’, is used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 8

The contested hand tools and implements (hand operated) covers, as a broader category, the opponent´s hand tools, Hand tools, namely water pump pliers and pipe wrenches. 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 side arms consist of weapons carried on the person by sling, belg or holster (e.g. sword or pistol). The contested razors are sharp implements used for shaving. Lastly, the contested cutlery consists of knives, forks and spoons, used to eat the food. These contested goods are dissimilar to the opponent´s Hand tools, namely water pump pliers and pipe wrenches. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kinds of undertakings.

The opponent argues that these goods share some coincidences, such as the fact that they are all produced by smiths. However, even if this was the case time ago, nowadays they are produced by different kinds of companies which, through automated production, are capable of producing a big number of them in much shorter time. Therefore, the common origin no longer exists.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. 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.

Therefore, the contested retailing in shops of all kinds of tools are similar to a low degree to the opponent’s Hand tools, namely water pump pliers and pipe wrenches.

According to the Guidelines for Examination in the Office, Part C, Opposition, the principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping.

Therefore, the contested wholesaling and sale via global computer networks of all kinds of tools are similar to a low degree to the opponent’s Hand tools, namely water pump pliers and pipe wrenches.

Contested services in Class 39

The contested transport, distribution, storage and warehousing of all kinds of tools are dissimilar to the opponent´s goods, according to the reasoning that follows.

The contested services transport of all kinds of tools is not considered similar to goods of the opponent. The transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar. This same reasoning applies to the distribution services (i.e. the contested distribution of all kinds of tools), being also provided by specialist transport companies.

The contested services storage and warehousing of all kinds of tools refer to services whereby a company’s merchandise is kept in a particular place for a fee. Those services are not similar to the goods in Class 8 of the opponent which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition. Therefore, these services are dissimilar.

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 found to be identical and the services found to be similar to a low degree are directed at both, the public at large and at professionals. The attention paid during the purchase of the goods and services is deemed to be average.

3. The signs

COBRA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word “Obra” in the contested sign means “construction work” or “work” in Spanish, and it is meaningless for consumers in other parts of the relevant territory, such as the English-speaking.

The Opposition Division will focus the comparison on the part English-speaking consumers for which the word “obra” has no meaning, and which constitute a significant part of the public.

The earlier mark “COBRA” is perceived by relevant public as having the concept of a kind of snake. The reason for this is that equivalent in English is the word “kobra”. The similarities between “cobra” and “kobra” will unavoidably lead consumers to attributing the concept of a snake to the word “cobra”, despite the difference in spelling (i.e. “c” vs. “k”)

The contested sign is formed by verbal and figurative elements. The sign is blue in its upper half and red and white in the lower half. The figurative elements consist of triangular shapes forming what seem to be stylised representations of houses or rooftops. The opponent has argued that they consist of stylised representations of snake eyes.

Even if it cannot be totally disregarded that part of the public would perceive them as a mere combination of shapes with no concept, or as representing different things, the comparison will be focused on the parts of the public perceiving the figurative elements as the stylised representations of houses or rooftops or as the stylised representation of snake eyes.

The lower half of the mark contains a sign “+” and the verbal element “Obra”. The word “obra” is perceived as meaningless by the English-speaking part of the public, and it is of average distinctive character. The ‘+’ symbol in the contested sign is perceived as the (mathematical) symbol used to represent the notion of positive or addition calculations. It is frequently used as an allusive element, used to indicate certain characteristics of the goods, such as an extra strength, quality, flavour or durability. For the kind of goods and services involved, it is considered to be at least allusive of their characteristics (e.g. extra strong tools or services with especial positive characteristics), and therefore of lower than average distinctive character.

The figurative elements, if perceived as stylised representations of roof tops or houses, are also of lower than average distinctive character, for being at least allusive of the characteristics of the goods and services, since they consist of or are directly related to tools, which are commonly used for construction or building purposes. In case they are perceived as snake eyes, they are of average distinctive character.

The earlier mark has no elements more distinctive or dominant (visually eye-catching) than others.

If the figurative elements of the contested mark are perceived as representations of roof tops or houses (and therefore of lower than average distinctive character) this sign is formed by the distinctive element “Obra” and the less distinctive elements “+” and figurative elements.

If the figurative elements are perceived as snake eyes (and are therefore of average distinctive character) the contested mark is formed by the distinctive elements “Obra” and the snake eyes´ representation, and the less distinctive element “+”.

The impact of the elements considered to be of lower than average distinctive character is reduced when assessing the similarity of signs.

The contested mark has no elements more dominant (visually eye-catching) than others. However, 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). Accordingly, in this case, the element “+Obra” has a stronger visual impact than the figurative elements accompanying it.  

Visually, the coincidences between the marks are found in the verbal elements “COBRA” and “Obra”, which share the sequence of letters “o-b-r-a”.

According to the analysis above regarding the distinctiveness of the elements and their visual impact, the common sequence of letters “o-b-r-a”, which constitutes almost the entirety of the only element forming the earlier mark (i.e. except for the first letter “C”), is  of average distinctive character. In addition, the element “Obra” is, together with the symbol “+”, the part of the contested mark causing more visual impact.

In this same line, the differing elements “+” and the figurative elements, if perceived as representations of houses or roof tops, are of less distinctive character than the elements where the coincidences are found. In addition, the differing figurative elements of the contested mark, independently of the way in which they are perceived, are of less visual impact than the rest of elements of the sign, as explained above.

According to the above, and to the reduced impact of the differing elements (i.e. due to their less distinctive character, if perceived as rooftops or houses, and/or less visual impact) it can be considered that the marks are visually similar to at least an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters “o-b-r-a”, present identically in both signs.

The pronunciation differs in the sound of letter “c” in the earlier mark. The signs also differ aurally in the sound of the symbol “+”, which will be pronounced as “plus”, in English. It is even likely that, due to the lower than average distinctiveness of the element “+”, part of the public omits its pronunciation, and refers to the contested sign by pronouncing only the word “obra”.

Once again, the coincidences between the marks are found in their more distinctive elements. The aural difference in the pronunciation of the symbol “+” is found in the element of lower than average distinctive character.

According to the above, and to the reduced impact of the elements of less distinctive character, it can be considered that the marks are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. If the figurative elements are perceived as roof tops or houses, the signs will be associated with a dissimilar meaning, and are therefore not conceptually similar.

If the figurative elements are perceived as stylised representations of snake eyes, the signs are conceptually similar to an average degree, to the extent that they both refer to snakes.

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

The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the goods on which the opposition is based.

The signs are visually and aurally similar to at least an average degree. Depending on the scenarios described in the previous sections, the marks are perceived either as not conceptually similar or as conceptually similar to an average degree.

The impact of the differing elements is reduced for the different reasons described in detail in the previous sections (e.g. their less visual impact and/or their lower than average distinctive character).

The differences between the marks are not enough to totally exclude confusion between them. Consumers will be confronted with important similarities between the confronted signs which, together with the identity and similarity (even if low) of the goods and services, and an average degree of attention of consumers, are capable of leading consumers to confusion between the signs or at least association regarding their commercial origin.

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. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. The opposition is also successful insofar as the contested services that are similar to a low degree, since they relate to the same market field, are directed at the same consumers, and are frequently offered by the same companies manufacturing the goods in relation to which the similarity has been found.

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.