SWANSON | Decision 2414921 - Samson Aktiengesellschaft v. Swanson Industries, Inc.

Date Published: Sep 24, 2017

OPPOSITION No B 2 414 921

Samson Aktiengesellschaft, Weismüllerstrasse 3, 60314 Frankfurt, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Swanson Industries, Inc., 2608 Smithtown Road, Morgantown 26508, United States of America (applicant).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 414 921 is partially upheld, namely for the following contested goods and services:

Class 7: Electric pumps; hydraulic pumps; hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor.

Class 35: Wholesale distributorship services featuring fluid power equipment, mining equipment, drilling equipment, and parts therefor.

Class 37: Repair and remanufacturing of mining equipment, pumps, and hydraulic systems and cylinders.

Class 40: Contract manufacturing in the fields of fluid power equipment, mining equipment, and drilling equipment.

2.        European Union trade mark application No 12 860 383 is rejected for all the above goods and services. It may proceed for the remaining 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 12 860 383, for the word mark ‘SWANSON’. The opposition is based on the following earlier marks:

• European Union trade mark registration No 101 717, for the figurative mark , in relation to Classes 6, 7, 9, 11, 14 and 17;

• European Union trade mark registration No 4 537 131, for the word mark ‘SAMSON’, in relation to Classes 36, 37 and 42;

• German trade mark registration No 108 039, for the word mark ‘SAMSON’, in relation to Classes 7, 9 and 11;

• German trade mark registration No 173 017, for the word mark ‘SAMSON’, in relation to Classes 7 and 9;

• German trade mark registration No 470 590, for the word mark ‘SAMSON’, in relation to Classes 6, 7, 9 and 11;

• German trade mark registration No 751 055, for the figurative mark , in relation to Classes 6, 7, 9, 11 and 14;

• German trade mark registration No 874 411, for the word mark SAMSON’, in relation to Classes 7 and 9.

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was accompanied by a document in the language of the proceedings containing data concerning all the above earlier German trade marks on which, inter alia, the opposition is based.

However, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier German trade marks because the original certificates of registration (or their equivalents) as issued by the national authority have not been submitted. Furthermore, the document was printed from the on-line database www.polymark.de, which is not accepted as an official database for the purpose of substantiation of the earlier rights.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded as far as it is based on these earlier German trade marks.

The opposition will proceed on the basis of the other earlier rights claimed, namely European Union trade mark registrations No 101 717 and No 4 537 131.

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 and services on which the opposition is based are the following:

Earlier European Union trade mark registration No 101 717

Class 6: Ironmongery, pipes and tubes of metal; Flexible tubes of metal, spiral elements of metal, expansion bellows of metal, bellows expansion joints and vibration dampers for pipework.

Class 7: Pressure regulators, differential pressure regulators, steam pressure reducers, pressure reducers for liquids, air and gas; Valves, namely temperature control valves, pressure reducing valves, membrane valves, single seat valves, double seat valves, straight-way valves, mixing valves, three way valves, discharge valves, emergency trip valves, pipe-burst valves, safety valves, control valves, stop valves, choker valves, throttle valves, cut-off valves, and gate valves for steam, water, gas, air and for other liquid, gaseous or vaporous materials, electromagnetic valves; Pneumatic control mechanisms, in particular pressure regulators, pneumatic temperature regulators, pneumatic adjustable relays; Servomotors; Condensation regulators, steam separators, steam traps and steam/water separators, compressors and containers for compressed air producing installations; Semi-automatic and fully automatic machine tools, lathes, single-spindle or multi-spindle turning lathes, turret lathes, drilling machines, milling machines and trueing machines, drive motors and servo motors, and adjustable, semi-automatic and fully automatic control, copying, measuring and counting apparatus, tool holders, clamping apparatus, chucks, cogwheel gear changers, transmission, turret heads, feed apparatus, lead spindles and feed rods, tool slides and workpiece slides for the aforesaid machines; Pneumatic and hydraulic apparatus for adjusting and controlling the aforesaid kind of machine tools.

Class 9: Physical and electrotechnical apparatus (included in class 9), and parts therefor, optical, weighing, measuring, signalling, checking (supervision), control and monitoring equipment, apparatus and instruments, and parts therefor; Pressure and temperature regulators with electric commutators; Flowmeters; Fluidimeters; Gas meters; Water level sensors; Transducers; Thermometers; Pressure gauges; Water quantity alarms; Calorimeters, steam counters, thermostats, safety thermostats, room thermostats, heat and temperature detectors, humidity detectors (hygrostats);Safety temperature limiters, return temperature limiters; Differential pressure, flow and liquid level meters; Regulators with and without auxiliary power, in particular temperature regulators, pressure regulators, room temperature regulators; Electric high speed circuit breakers, pneumatic remote control mechanisms, for remote adjusting and remote controlling valves, throttle valves, jalousies, and other closing, regulating and monitoring apparatus; Control and switching apparatus for adjusting, controlling and switching valves, cut-off valves and gate valves, regulating apparatus and pneumatic measuring and control installations; Control apparatus and parts therefor and installations manufactured therefrom for automating industrial operations using pneumatic, hydraulic, electric or mixed signals and impulses; Pneumatic, electric, hydraulic and mechanical commutators, microswitches and reversing switches, calculating machines, switch boxes, switch cabinets; Apparatus for receiving, storing and reading pneumatic, hydraulic, electric signals, data, measurements and other technical information, apparatus for the input and output of digital or analog physical quantities; Digital-analog converters, analog-digital converters, analog display apparatus, pneumatic measuring apparatus and control apparatus, pneumatic control mechanisms for automating working processes in process technology and manufacturing engineering, and for machine tools, pneumatic keys and switch keys, pneumatic drop signals; Pneumatic binary displays, binary amplifiers, power circuit breakers, pulse counters, signal transmitters; Pneumatic valves, control valves, three way valves, relays, distributors, throttles, precision throttles, differential pressure switches, time relays; Electronic universal regulators for resistance teletransmitters, electronic humidity regulators, electronic synchronisation controls for actuators; Electric display apparatus; Set-point adjusters; Pneumatic and electric actuators and position controls, electric differential pressure switches, pneumatic and electropneumatic building elements (included in class 9) for automating industrial processes, pneumatic reading regulators, pneumatic and electric transducers, electric and pneumatic three position step controllers, pneumatic transducers for pressure, differential pressure and temperature, pneumatic limit signal transmitters, field regulators and air pressure amplifiers, pneumatic reducing apparatus.

Class 11: Heating, refrigerating, drying, ventilating, water supply and sanitary installations and parts therefor; Regulators and control apparatus for heating, cooking, refrigerating, drying, ventilating, air conditioning and pasteurising apparatus and installations, quantity controls for liquids, air, gases and steam, flow regulators, regulators for cooling water for motors and engines, furnace regulators, heating boiler regulators, regulators for remote heat supplying installations, radiator regulators, draught regulators; Mixer apparatus for hot and cold water or for other flowing media; Ventilators and aerators for steam, water and heating installations, dirt pans, dirt sieves for steam, water and gas pipelines and apparatus, fittings for heating, ventilating, furnace, water supply installations and bath plumbing fixtures; Electric cartridge-type heaters for radiators and boilers; Electric actuators for valves, ventilating and throttle valves, electronic heating and ventilating controls, electronic universal regulators for temperature and differential temperature control; Except electric apparatus for water heating.

Class 14: Technical clocks and watches; Movements for clocks and watches; Parts for clocks; Technical time measuring apparatus and program-controlled timer switches and parts therefor.

Class 17: Plastic conduits.

Earlier European Union trade mark registration No 4 537 131

Class 36: Leasing of measuring, regulating, signalling and control devices, instruments, apparatus and installations for industrial, commercial, domestic and similar purposes, of products and installations for precision mechanics, electrical engineering, apparatus and machine construction, heating technology for heating, ventilating, cooling, air conditioning and sanitary installations, of district heating and hot water supply plants, humidifying and dehumidifying plants, firing plants, temperature, pressure and flow control plants and equipment, process control devices, installations and equipment of safety equipment in connection with control devices, pipelines, domestic water and heating installations, machine and industrial plants, power supply plants, remote control and control equipment, regulating and control equipment and plants for process and production technology for the chemical, petrochemical, pharmaceutical, beverages, food and luxury food industries and for power station operation, of mechanical, pneumatic, electrical and electropneumatic regulating devices and control systems, of heat, steam, gas and liquid meters, machine tools, of control and regulating devices for automating industrial and commercial working processes and plants produced therefrom.

Class 37: Installation, fitting, repair and maintenance of measuring, regulating, signalling and control devices, instruments, apparatus and installations for industrial, commercial, domestic and similar purposes, of products and installations for precision mechanics, electrical engineering, apparatus and machine construction, heating technology for heating, ventilating, cooling, air conditioning and sanitary installations, of district heating and hot water supply plants, humidifying and dehumidifying plants, firing plants, temperature, pressure and flow control plants and equipment, process control devices, installations and equipment of safety equipment in connection with control devices, pipelines, domestic water and heating installations, machine and industrial plants, power supply plants, remote control and control equipment, regulating and control equipment and plants for process and production technology for the chemical, petrochemical, pharmaceutical, beverages, food and luxury food industries and for power station operation, of mechanical, pneumatic, electrical and electropneumatic regulating devices and control systems, of heat, steam, gas and liquid meters, machine tools, of control and regulating devices for automating industrial and commercial working processes and plants produced therefrom.

Class 42: Design planning and development, services of engineers and physicists, computer programming; planning (for others) of microprocessor components, as well as mechanical, pneumatic, electrical, electronic, electropneumatic and logical equipment of measurement and control technology for industrial, commercial and building installations; inspection of measuring, regulating, signalling and control devices, instruments, apparatus and installations for industrial, commercial, domestic and similar purposes, of products and installations for precision mechanics, electrical engineering, apparatus and machine construction, heating technology for heating, ventilating, cooling, air conditioning and sanitary installations, of district heating and hot water supply plants, humidifying and dehumidifying plants, firing plants, temperature, pressure and flow control plants and equipment, process control devices, installations and equipment of safety equipment in connection with control devices, pipelines, domestic water and heating installations, machine and industrial plants, power supply plants, remote control and control equipment, regulating and control equipment and plants for process and production technology for the chemical, petrochemical, pharmaceutical, beverages, food and luxury food industries and for power station operation, of mechanical, pneumatic, electrical and electropneumatic regulating devices and control systems, of heat, steam, gas and liquid meters, machine tools, of control and regulating devices for automating industrial and commercial working processes and plants produced therefrom; technical consultancy in the field of measuring, controlling and regulating of industrial processing; surveying services in the field of measuring, controlling and regulating of industrial processing; rental of data processing installations, particularly for processing data test values in the field of automating working sequences for industrial and commercial installations, for process and production engineering, machine construction, the electrical industry and chemical industry.

The contested goods and services are the following:

Class 7: Electric pumps; hydraulic pumps; hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor.

Class 35: Wholesale distributorship services featuring fluid power equipment, mining equipment, drilling equipment, and parts therefor.

Class 37: Repair and remanufacturing of mining equipment, pumps, and hydraulic systems and cylinders.

Class 40: Welding, laser cladding, electro-plating, and chromium plating services; heat treatment of metal components for hydraulic systems; contract manufacturing in the fields of fluid power equipment, mining equipment, and drilling equipment.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘particularly’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists 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.

Preliminary note

It is important to recall that identity or similarity of the goods and services in question must be determined on an objective basis. Accordingly, it is necessary to base the findings on the realities of the marketplace, such as established customs in the relevant field of industry or commerce.

The degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts that are already well known or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T-106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 76(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

In the present case, the opponent has only claimed that the compared products and services are partly identical and partly similar, but has not adduced any argument or evidence in support of this statement, whereas the applicant has not filed any observations. Therefore, taking into account that the goods and services to be compared require a certain degree of technical knowledge, the Opposition Division will proceed with the comparison under the above considerations.

Contested goods in Class 7

The contested electric pumps; hydraulic pumps are included in the broad category of, or overlap with, the opponent’s semi-automatic and fully automatic machine tools. Therefore, they are identical.

The contested hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor are similar to the opponent’s pneumatic and hydraulic apparatus for adjusting and controlling the aforesaid kind of machine tools (e.g. semi-automatic and fully automatic machine tools) in Class 7, as they have the same nature, namely they are all hydraulic apparatus or pneumatic components of machines and machine tools, they can have the same providers and distribution channels, and target the same end users.    

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. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as ‘retail store services’, ‘wholesale services’, ‘internet shopping’, ‘catalogue or mail order services’ in Class 35.

Therefore, the contested wholesale distributorship services featuring drilling equipment are similar to a low degree to the opponent’s drilling machines in Class 7 for the reasons above mentioned.

The contested wholesale distributorship services featuring fluid power equipment and mining equipment are similar to a low degree to the opponent’s semi-automatic and fully automatic machine tools in Class 7, since fluid power equipment and mining equipment may certainly include semi-automatic and fully automatic machine tools and these goods would then be identical.

Similarly, the contested wholesale distributorship services featuring parts therefor (fluid power equipment, mining equipment, drilling equipment) are similar to a low degree to some of the opponent’s goods in Class 7, which includes various parts of machines, such as spindles, turret heads or chucks, for instance, and these goods could fall under the parts of fluid power equipment, mining equipment and drilling equipment.

Contested services in Class 37

The contested repair of mining equipment, pumps, and hydraulic systems and cylinders may be certainly included in the broad category of, or overlap with, the opponent’s repair and maintenance of mechanical, pneumatic, electrical and electropneumatic regulating devices and control systems and of machine tools. Therefore, they are identical.

However, the contested remanufacturing of mining equipment, pumps, and hydraulic systems and cylinders may require some more complex technical works and, therefore, they are considered similar to the opponent’s repair and maintenance of mechanical, pneumatic, electrical and electropneumatic regulating devices and control systems and of machine tools, since they have a similar purpose and they can have the same providers and distribution channels.

Contested services in Class 40

‘Contract manufacturing’ refers to the production of goods by one firm, under the label or brand of another firm. It is a form of outsourcing.

In the present case, the contested contract manufacturing in the fields of fluid power equipment, mining equipment, and drilling equipment is similar to the opponent’s drilling machines in Class 7, since the subject matter of them either coincides or is closely related and, therefore, there is a reasonable expectation about the commercial relationship between the undertakings involved, that is, they would have the same distribution channels and end users.

The contested welding, laser cladding, electro-plating, and chromium plating services; heat treatment of metal components for hydraulic systems are specific activities within the field of treatment of materials/objects that are carried out by highly specialised technical professionals. As regards some of the opponent’s services (such as computer programming in Class 42) to which the contested services are compared, they are obviously dissimilar due to their different nature, purpose, public, provider/producers, distribution channels, they are not complementary or in competition. As regards the comparison between the contested services and other opponent’s goods and services that are of more technical and specialised nature (such as various apparatus in classes of the goods and services, including engineering), in the absence of any arguments submitted by the parties and given the specialised and technical nature of the goods and services, the Opposition Division cannot conclude that these goods and services could serve the same or similar needs or had similar methods of use or were in competition or complementary. Therefore, in the absence of any argument or evidence from the parties that could allow the Opposition Division to reach a conclusion that the goods and services were similar, they are deemed 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 and services found to be identical or similar to varying degrees are directed at business customers with specific professional knowledge or expertise, such as technicians or engineers. Taking into account the category of the goods and services in question and the high level of technical knowledge they may require, their sophistication and possibly also price, the degree of attention will be high.

3. The signs

Earlier EUTM No 101 717 SAMSON Earlier EUTM No 4 537 131	SWANSON
Earlier trade marks	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 element ‘SAMSON’ of the earlier marks will be perceived by part of the relevant public as the male first name known, for example, from the Old Testament, in which it is referring to the Israelite judge and powerful warrior who was betrayed to the Philistines by Delilah. Since the meaning of this word has no relation to any of the relevant goods and services, it is distinctive. For the other part of the relevant public for whom this element is meaningless, it is also distinctive.

The only element in the contested sign, ‘SWANSON’, has no apparent meaning for the relevant public and neither of the parties indicates that it would be associated with any specific concept. Therefore, it is distinctive.

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). This is particularly true in the case of the black circle depicted in earlier mark (1), which is considered a less distinctive figurative element of a purely decorative nature. Therefore, this figurative element will have a very limited impact in the overall assessment of the signs.

Visually, the signs coincide in the string of letters ‘S*A*SON’. However, they differ in the additional second letter ‘W’ of the contested sign and in the middle letters, ‘M’ in the earlier marks, which corresponds to the letter ‘N’ in the contested sign. Furthermore, the signs differ in the slight stylisation and the figurative element of earlier mark (1), with a less distinctive character, as explained above.

Therefore, the signs are visually similar at least to 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 ‘S*A*SON’, present identically in both signs. The pronunciation of the signs, ‘SAMSON/SWANSON’, which are both pronounced in two syllables, being their second syllables ‘SON/SON’ identical, differs slightly in the sounds of their middle letters, ‛M/N’; however, their sound is particularly close as they are both nasals. The pronunciation also differs in the sound of the additional letter ‘W’ of the contested sign, which does not preclude, however, a similarity in the pronunciation of the first syllables of the signs, ‘SAM/SWAN’.

Therefore, since the signs have identical lengths (two syllables) and very similar rhythms and intonations, they are aurally highly similar.

Conceptually, although part of the relevant public in the relevant territory will perceive the meaning of the earlier marks as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, for that part of the public, the signs are not conceptually similar.

For the other part of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, for that part of the public, 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.

4. Distinctiveness of the earlier marks

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 claimed that the earlier trade marks ‘SAMSON’ enjoy enhanced distinctiveness, in particular, that they are notorious and have been internationally used since 1996 in the European Union, but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods and services. The relevant public has a high degree of attention and the earlier marks have a normal distinctiveness.

The signs are visually similar at least to an average degree and aurally highly similar on account of the coincidences found between the verbal elements of the signs, ‘SAMSON’ in the earlier marks and ‘SWANSON’ in the contested sign. The similar letters ‘M/N’ are positioned in the middle of the signs, where this difference between ‘M/N’ might easily go unnoticed. As regards the additional letter ‘W’ of the contested sign, its presence does not sufficiently increase the distance between the first syllables of the signs, ‘SAM/SWAN’. In addition, the figurative aspects of earlier mark (1) have less impact, as explained above. From a conceptual perspective, the signs are either not conceptually similar or the conceptual comparison is not possible.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, it is very reasonable to consider that the relevant public, even with a high degree of attention, will believe that the earlier marks and the contested sign are marks deriving from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including likelihood of association) on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations No 101 717 and No 4 537 131.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar (to varying degrees) to those of the earlier trade marks.

The rest of the contested 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 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

Martin MITURA

Marta GARCÍA COLLADO

Vita VORONECKAITE

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.