powertec | Decision 2613662

Date Published: Sep 25, 2017

OPPOSITION No B 2 613 662

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, Germany, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- Und Rechtsanwälte PARTGMBB, Maximiliansplatz 14, 80333 München, Germany  (professional representative)

a g a i n s t

Gg Profits SP. Z O.O., Spacerowa no 6/8, 95-200 Pabianice, Poland, (applicant), represented by Agnieszka Plucińska, ul. Maratońska 33/52, 94-102 Łódź, Poland

(professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 613 662 is partially upheld, namely for the following contested goods:

Class 9:        Apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; measuring cables; power cables; electronic cables; electric cables; connecting electrical cables; adapter cables (electric -); starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; galena crystal detectors for use in electronics; mains power units (electric -); electric and electronic components; uninterruptable power supply apparatus; uninterruptible power supply apparatus [battery]; regulated power supply apparatus; power-line transmission apparatus; electricity mains apparatus; junction boxes [electricity]; ducts [electricity]; electrical cabling; measuring tapes; electricity conduits; insulated electrical cables; ignition spark detectors, all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing.

2.        European Union trade mark application No 14 265 581 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 all the goods and services of European Union trade mark application No 14 265 581. The opposition is based on, inter alia, European trade mark registration No 8 802 902. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remarks – 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.

In the present case, the applicant in its letter of 20/06/2016 requested that the opponent submit proof of use of the earlier marks on which the present opposition was based.

The request was submitted in due time and is admissible as far as it concerns the earlier European trade mark registrations No 7 177 827 for the figurative mark and No 7 177 918 for the figurative trade mark .

The applicant’s request is not admissible as far as the remaining earlier marks are concerned, namely European trade mark registrations No 8 802 902 for the figurative mark , No 12 323 127 for the figurative mark and No 12 352 035 because these earlier trade marks were not registered more than five years prior to the date of publication of the contested EUTM application No 14 265 581, namely before 26/08/2015.

The contested application was published on 26/08/2015. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union during the period 26/08/2010 to 25/08/2015 inclusive.

In the letter of 30/06/2016 the Office informed the opponent that he needed to provide the observations in reply and the proof of use of its earlier marks by 05/09/2016. This deadline has been extended until 05/11/2016.

In the letter of 28/07/2016 the opponent informed the Office that the opposition is withdrawn as far as based on the earlier European trade mark registrations No 7 177 827 and No 7 177 918.

Since, as mentioned above, the remaining earlier trade marks were not registered more than five years prior to the date of publication of the contested EUTM application No 14 265 581, they cannot be subject of proof of use.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 8 802 902.

1. The goods and services

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

Class 7:        Machines, machine tools and motorised apparatus (included in class 7), for household, kitchen, garden and DIY purposes, including electric tools and electric household utensils (included in class 7); All the aforesaid goods except welding apparatus and welding accessories.

class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, including protractors, rules, spirit levels; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; safety clothing, gloves, headgear, goggles, helmets and shoes, knee pads; spectacles, in particular reading glasses and sunglasses, including cases; electric irons; mouse pads; all the aforesaid goods except welding apparatus and welding accessories.

Class 11:        Lighting apparatus, in particular electric lights, lamps and lighting devices, and parts for all the aforesaid goods, included in class 11; apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

After the limitation done by the applicant on 04/02/2016, the contested goods and services are the following:

Class 7:        Workpiece clamping attachments [parts of machines]; joints for tubes (metal -) [parts of machines]; joints for tubes (metal -) [parts of engines]; electric motors; automotive exhaust pipe; exhaust pipes for land vehicles; reels [parts of machines]; injectors; fuel injection systems for engines; petrol injection instruments; fuel injector parts for land and water vehicle engines; spark plugs for vehicle engines; electric ignition apparatus for internal combustion engines; ignition devices for motors of land vehicles; electronic ignitions for vehicles; ignition devices for motors of land vehicles; points [ignition parts for internal combustion engines]; condensers [ignition parts for internal combustion engines]; ignition distributors for internal combustion engines; spark plugs for vehicle engines; ignition wires for motor vehicles; spark plug ignition wires; spark plugs for engines; electronic ignitions for vehicles; electric ignition devices [other than for igniting at a distance]; sparking-plugs; igniting magnetos; electric ignition coils; spark plugs for land vehicle engines,  all the before said goods not relating to welding, cutling and/or brazing machines, not relating to household, kitchen, garden and DIY utensils, not relating to spraying machines and not for use in the field of welding and/or cutling and/or brazing. 

Class 9:        Apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; connection cables; jump leads; jump leads; jump leads; measuring cables; power cables; electronic cables; electric cables; ignition cables; connecting electrical cables; adapter cables (electric -); cables and wires; starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; battery booster cables; galena crystal detectors for use in electronics; mains power units (electric -); electric and electronic components; uninterruptable power supply apparatus; uninterruptible power supply apparatus [battery]; regulated power supply apparatus; power-line transmission apparatus; electricity mains apparatus; piezoelectric igniters; photovoltaics; ignition cables; junction boxes [electricity]; ducts [electricity]; electrical cabling; ignition cables; measuring tapes; batteries for lighting; batteries for lighting; ignition cables; ignition cables; electricity conduits; insulated electrical cables; cables and wires; ignition spark detectors, all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing. 

Class 12:        Parts and fittings for vehicles; spoilers for vehicles.

Class 20:        Cable fasteners, connectors and holders, non-metallic; Cable fasteners, connectors and holders.

Class 35:        Import and export services; demonstration of goods; distribution of advertising material; retailing and wholesaling of parts for vehicles; sale of parts for vehicles; writing of publicity texts; sales promotion of parts for motor vehicles for others; publication of publicity texts relating to operation, parts, materials and raw materials for the operation, repair, maintenance and renovation of motor vehicles; distribution of advertising material.

Class 37:        Advisory services relating to vehicle repair; service stations for the maintenance of vehicles; hygienic cleaning [vehicles]; automobile cleaning; automobile cleaning and car washing; cleaning and polishing of motor vehicles; car cleaning; car cleaning; provision of information relating to the repair of vehicles; provision of information relating to the maintenance of vehicles; fitting of replacement vehicle parts; custom installation of automobile interiors; installation of parts for vehicles; installation of automobile accessories; vehicle detailing; maintenance of parts and fittings for commercial motor land vehicles; vehicle maintenance and repair; assembly [installation] of accessories for vehicles; assembly [installation] of parts for vehicles; motor vehicle maintenance; overhaul of vehicles; vehicle tuning; tuning of engines; refurbishment of vehicles; vehicle breakdown repair services; advisory services relating to vehicle maintenance; advisory services relating to vehicle repair; advisory services relating to the repair of motor vehicles; vehicle breakdown repair services; vehicle breakdown assistance [repair]; mobile vehicle tuning services; replacement of exhaust pipes; anti-rust treatment for vehicles; motor vehicle maintenance.

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

All the contested workpiece clamping attachments [parts of machines]; joints for tubes (metal -) [parts of machines]; joints for tubes (metal -) [parts of engines]; electric motors; automotive exhaust pipe; exhaust pipes for land vehicles; reels [parts of machines]; injectors; fuel injection systems for engines; petrol injection instruments; fuel injector parts for land and water vehicle engines; spark plugs for vehicle engines; electric ignition apparatus for internal combustion engines; ignition devices for motors of land vehicles; electronic ignitions for vehicles; ignition devices for motors of land vehicles; points [ignition parts for internal combustion engines]; condensers [ignition parts for internal combustion engines]; ignition distributors for internal combustion engines; spark plugs for vehicle engines; ignition wires for motor vehicles; spark plug ignition wires; spark plugs for engines; electronic ignitions for vehicles; electric ignition devices [other than for igniting at a distance]; sparking-plugs; igniting magnetos; electric ignition coils; spark plugs for land vehicle engines,  all the before said goods not relating to welding, cutling and/or brazing machines, not relating to household, kitchen, garden and DIY utensils, not relating to spraying machines and not for use in the field of welding and/or cutling and/or brazing refer, on the one hand, to different parts of machines and, on the other hand, to different parts of vehicles and therefore, they are distinct from the opponent’s specific machines, machine tools and motorised apparatus mostly used for household purposes. Their nature and intended purpose are different from those of the opponent’s goods. Furthermore, these goods do not have the same producers, relevant consumers or distribution channels as the opponent’s goods, nor are they in competition with or complementary to those goods. Therefore, they are dissimilar to all the opponent’s goods.

Contested goods in Class 9

The contested apparatus, instruments for electricity; apparatus and instruments for controlling electricity; galena crystal detectors for use in electronics; mains power units (electric -); uninterruptable power supply apparatus; uninterruptible power supply apparatus [battery]; regulated power supply apparatus; power-line transmission apparatus; electricity mains apparatus, ignition spark detectors, all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, all the aforesaid goods except welding apparatus and welding accessories. Therefore, these goods are identical. 

The contested cables for electricity; power cables; electronic cables; electric cables; connecting electrical cables; adapter cables (electric -); starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; junction boxes [electricity]; ducts [electricity]; electrical cabling, electricity conduits; insulated electrical cables; all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing have the same distribution channels, users and producers as the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electricity conduits; insulated electrical cables, all the aforesaid goods except welding apparatus and welding accessories. Furthermore, they are complementary. Therefore, they are highly similar.

The contested measuring cables, measuring tapes, all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing have the same distribution channels, users and producers as the broad category of the opponent’s measuring apparatus and instruments, all the aforesaid goods except welding apparatus and welding accessories. Furthermore, they are complementary. Therefore, they are highly similar.

The contested electric and electronic components; all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing are similar to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, all the aforesaid goods except welding apparatus and welding accessories. These goods are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public. Furthermore, they can be complementary.

The remaining contested connection cables; jump leads; jump leads; jump leads; battery booster cables; piezoelectric igniters; photovoltaics;  ignition cables; cables and wires; ignition cables; ignition cables; batteries for lighting; batteries for lighting; ignition cables; cables and wires, all the before said goods relating to automotive industry and not relating to welding, cutling and/or brazing machines and not for use in the field of welding and/or cutling and/or brazing have the same distribution channels, users and producers as the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, all the aforesaid goods except welding apparatus and welding accessories. Therefore, they are similar to a low degree.

Contested goods and services in Classes 12, 20, 35 and 37

The contested goods in Class 12 and 20 refer either to parts and fittings for vehicles; spoilers for vehicles or to cable fasteners, connectors and holders, non-metallic; cable fasteners, connectors and holders. None of these goods coincide in any relevant points of contact with those of the earlier right, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore, they do not share a complementary nature nor are they in competition with one another. Therefore, they are dissimilar. 

Likewise, the contested services in Classes 35 and 37 are dissimilar to all the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent’s goods refer mainly to different kind of machines, electric apparatus and instruments and lighting apparatus used mainly for household purposes. This is not the purpose of the applicant’s services referring mostly to the automotive field. Furthermore, goods and services in question have different methods of use and are neither in competition nor complementary. Therefore, the contested services are dissimilar to all the opponent’s goods.

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 similar to various degrees are directed at the public at large and at the professional public. The level of attention is considered to vary from average to higher than average, depending on the price and frequency of purchase of these goods.

3. 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).

Both marks are figurative marks.

The earlier mark is composed of the verbal element ‘powertec’, written in rather standard, partly lower- and partly uppercase letters on the first line, partly in black and beige/grey. There is a third verbal element ‘light’, written in white uppercase letters on a black/grey background and placed below the element ‘powertec’. The earlier mark includes also a graphical oval symbol of light placed behind the word ‘LIGHT’.

The contested sign is composed of the verbal element ‘powertec’, written partly in lower- and partly in uppercase, rather standard letters in white and grey on a black background. There is also a white oval shape surrounding the string of letters ‘rTEC’.

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. Since the signs in question are composed of the terms which are meaningful in certain territories, for example in those countries where English is understood, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Therefore, the relevant public will perceive the single word ‘powertec’ in both signs as being composed of the elements ‘power’ and ‘tec’, because both words will convey a meaning to them.

The common verbal element ‘powertec’, considered as such, has no clear univocal meaning for the relevant public. However, the stylisation of the letters, which are written partly in lower and partly in uppercase letters (although their size is small) and in different colours, will lead the consumer to perceive this element as a combination of two terms ‘power’ and ‘tec’, both associated with a meaning by the relevant public in the relevant territory. The term ‘Power’ refers, inter alia, to ‘energy, especially to electricity’ and term ‘tec’, although as such does not constitute a correct abbreviation for the term ‘technology’, it will be understood as such by the relevant public, due to its closeness to a correct abbreviation ‘tech’. The additional verbal element ‘light’ of the earlier mark refers to ‘brightness, luminosity or illumination’ (definitions extracted from Collins online dictionary).

In the context of the relevant goods, the common element ‘powertec’ will be associated by the relevant public, as analysed above, with the field of electricity and technology and therefore, is weak in relation to the relevant electric and electronic goods in Class 9. The term ‘LIGHT’ playing a secondary role, due to its position within the earlier mark, will be perceived as referring to electric and electronic goods in Class 9, like measuring devices or power supply apparatus, in which light factor plays an important role because these devices, when functioning, transmit light signals which often accompany sound signals. Consequently, bearing in mind the nature of the opponent’s goods, this element is considered non-distinctive in relation to the relevant goods in Class 9. This assumption is reinforced by the graphical oval symbol of light placed behind the word ‘LIGHT’. Therefore, the inherent distinctiveness of all these elements is limited.

In addition, as regards the other figurative elements of the signs (stylisation of the letters, colour, oval shape and the background of the contested sign, etc.), account must be taken that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the signs, the verbal elements are the ones that will be used to refer to them.

The signs have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Visually, the signs coincide in the element ‘powertec’ and differ in the additional verbal element ‘LIGHT’, which plays a secondary role within the earlier mark. Additionally, this differing element is non-distinctive. The degree of visual similarity must therefore be considered high.

The same considerations as above apply to the conceptual and aural comparison (taking into account the fact that the graphic and figurative elements do not play an aural role, as they will not be pronounced), and the signs must be considered similar to a high degree on these two levels of comparison.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for a part of the relevant goods, as explained above.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
The goods target the general public and a professional public and the degree of attention varies from average to high. In this regard, it must be remembered, however, that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16/03/2005, T-112/03 ‘Flexi Air’).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity and similarity of the goods covered by the respective marks, combined with a visual and phonetic similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (see judgment of 12/01/2006, T-147/03 ‘Quantum’).

The contested goods and services have been found partly identical, partly similar (including similar to a low degree) and partly dissimilar to the ones covered by the earlier mark.

The signs contain the same verbal element ‘powertec’ which is the first and an independent element of the earlier mark and the only verbal element of the contested sign. Although, this element is weak for a part of the relevant goods, as mentioned above, the additional verbal element ‘LIGHT’ is considered non-distinctive and plays a secondary role within the earlier mark. Furthermore, the remaining elements present in both signs are less important because they are purely figurative and rather banal elements to which the relevant consumer will not pay much attention. Consequently, all these factors make the marks similar to a high degree on all three levels of comparison that will induce a likelihood of confusion on the part of the relevant public.

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 and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 802 902. 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 that the contested trade mark must be rejected for the goods found identical and similar to those of the earlier mark.

Given the above weakness of the common element ‘powertec’ and taking into account the interdependence principle, the Opposition Division considers that there is no likelihood of confusion for the contested lowly similar goods in Class 9.

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)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European trade mark registration No 12 323 127 for the figurative mark and goods in Classes 7, 8, 9, 11, namely:

Class 7: Electric household and kitchen utensils (included in class 7), in particular vacuum cleaners, vacuum cleaner bags, electric cleaning machines and apparatus, cleaning appliances utilising steam, robots (machines), electric pastry presses, electric mini-choppers and electric meat grinders, electric can openers, electric cutters and shears, electric kitchen machines, electric blenders for household purposes, electric beaters, electric sewing machines, electric flour mills, coffee grinders, other than hand-operated, milk frothers, potato-peeling machines, electric juicers, electric fruit presses, bread cutting machines, electric multi-purpose sharpeners, electric ice crushers, electric film-sealing devices; Dishwashers; Parts for the aforesaid goods, included in class 7.

Class 8: Flat irons.

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Weighing and measuring apparatus, including kitchen scales; Smoke detectors; Parts for the aforesaid goods, included in class 9.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water supply; Coffee machines, automatic coffee machines, espresso machines, hot dog machines, bread baking machines, bread-making machines, electric cooking utensils, microwave ovens, electric kettles, electric steamers, electric fondue pots, electric raclette apparatus, electric yoghurt makers, electric cooking rings, egg boilers, electric rice cookers, grills, toasters, electric waffle irons, ovens, mini-ovens, electric chocolate fountains, electric deep-fat fryers, electric multi pans, electric apparatus for making doughnuts, omelettes, muffins and sandwiches, electric popcorn making machines, electric hot plates, electrical ice-cream makers, water filtering apparatus, fans, air-conditioning apparatus, ionisation apparatus for the treatment of air and air purifiers, air humidifiers; Parts for the aforesaid goods, included in class 11.

• European trade mark registration No 12 352 035 for the figurative mark and the goods in Classes 4, 5, 6, 7,8,11, 19, 21, namely:

Class 4: Fuels, candles, in particular lamp oil containing insect repellents, candles containing insect repellents.

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Insect attractants, preparations for destroying insects, insect repellents, insecticides.

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Ironmongery, small items of metal hardware; Goods of common metal not included in other classes, in particular insect screens of metal for doors, insect screens of metal for windows.

Class 7: Machines, agricultural implements other than hand operated, in particular spraying apparatus (machines) for horticulture for spraying insecticides, spraying apparatus (machines) for domestic purposes for spraying insecticides, insecticide sprayers (hand-held tools, electric).

Class 8: Hand tools and implements (hand-operated), in particular spraying apparatus for horticulture for spraying insecticides (hand-operated tools), spraying apparatus for domestic purposes for spraying insecticides (hand-operated tools), hand-operated atomisers for insecticides.

Class 11: Lighting apparatus, luminous tubes for apparatus for destroying insects; all the aforementioned goods only in connection with insecticides.

Class 19: Building materials (non-metallic); Non-metallic transportable buildings; Insect screens, not of metal, in particular for windows and doors.

Class 21: Household or kitchen utensils and containers; Insect traps, including electric ones; Electrical devices for attracting and killing insects.

As far as the earlier European trade mark registration No 12 323 127 is concerned it covers the goods in Class 7, all related to electric household and kitchen utensils and their parts (contrary to the contested goods in Class 7), flat irons in Class 8, various electric and electronic apparatus and their parts in Class 9 and lighting and household electric apparatus and their parts in class 11. These goods are equally dissimilar to the remaining contested goods and services in Classes 7, 12, 20, 35 and 37. Regarding the goods, they have different purposes and method of use when compared to the opponent’s goods in Class 7, and even more so when compared to the opponent’s goods in Classes 8, 9 and 11.  Their nature and/or intended purpose are different from those of the opponent’s goods. Furthermore, they do not coincide in the same producers, relevant consumers or distribution channels as the opponent’s goods, nor are they in competition with or complementary to those goods. Therefore, they are dissimilar to all the opponent’s goods. Likewise, the contested services in Classes 35 and 37 are dissimilar to all the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent’s goods refer mainly to different kind of machines, electric apparatus and instruments and lighting apparatus used mainly for household purposes. This is not the purpose of the applicant’s services referring mostly to the automotive field. Furthermore, goods and services in question have different methods of use and are neither in competition nor complementary.

The goods covered by the earlier European trade mark registration No 12 352 035 are also different from the remaining contested goods and services in Classes 7, 12, 20, 35 and 37. These goods have different purposes and method of use when compared to the opponent’s goods in Class 7, and even more so when compared to the opponent’s goods in Classes 4, 5, 6, 8, 11, 19 and 21. The opponent’s goods refer mainly to products containing insect repellents, pharmaceuticals, metal building materials, spraying apparatus for spraying insecticides, hand operated spraying apparatus for insecticides, lighting apparatus in connection with insecticides, non-metallic building materials and household or kitchen utensils and insect traps. They are sold through different distribution channels and target different relevant public. These goods are neither complementary to each other nor in competition. Likewise, the contested services in Classes 35 and 37 are dissimilar to all the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The applicant’s services referring mostly to the automotive field. Furthermore, goods and services in question have different methods of use and are neither in competition nor complementary. Therefore, the remaining contested goods and services are equally dissimilar to the opponent’s earlier European trade mark registration No 12 352 035.

The above-mentioned earlier rights invoked by the opponent include other figurative and verbal elements which render them less similar to the contested EUTM application and, as explained above, cover goods which are clearly different to the goods and services applied for in the contested trade mark.

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

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

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.