VSM | Decision 2648650
Date Published: Sep 25, 2017
OPPOSITION No B 2 648 650
VSM • Vereinigte Schmirgel- und Maschinen-Fabriken AG, Siegmundstr. 17, 30165 Hannover, Germany (opponent), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative)
a g a i n s t
Limited liability company "RM VENT", Gjatskaya Street 27, St. Petersburg 195220, Russia (holder), represented by Jeck & Fleck, Klingengasse 2/1, 71665 Vaihingen/Enz, Germany (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 648 650 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 251 276 for the figurative mark . The opposition is based on European Union trade mark registration No 13 036 033 for the word mark ‘VSM’ and European Union trade mark registration No 13 577 572 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following (for both earlier marks invoked):
Class 3: Abrasive preparations, abrasive preparations with backings, namely of fabric, paper, fibre, and combinations of the aforesaid backings, abrasive sheets, abrasive paper, abrasive cloths, non-woven abrasive fabrics, abrasive rolls, abrasive belts, abrasive rings, included in class 3.
Class 7: Grindstones, abrasive flap discs, abrasive mop wheels, abrasive fibre discs, all being parts of machines.
Class 8: Abrasive blocks (hand tools); Abrading instruments (hand instruments), all being parts of tools; Abrading instruments [hand instruments].
Class 35: Advertising; Business management; Office functions; Wholesaling in the fields of sanding machines, abrasive preparations, tools and goods of common metal for building; Business administration.
The contested goods and services are the following:
Class 9: Accumulators, electric; aerials; high-frequency apparatus; remote control apparatus; monitoring apparatus, electric; air analysis apparatus; electric apparatus for commutation; intercommunication apparatus; computer memory devices; camcorders; switchboxes [electricity]; gas testing instruments; detectors; electronic notice boards; signal bells; buzzers; measures; pressure measuring apparatus; inverters [electricity]; temperature indicators; measuring instruments; interfaces for computers; ionization apparatus not for the treatment of air or water; cables, electric; identity cards, magnetic; wire connectors [electricity]; collectors, electric; commutators; computers; laptop computers; distribution boxes [electricity]; microprocessors; modems; magnetic data media; computer software, recorded; signalling panels, luminous or mechanical; transmitters of electronic signals; printed circuit boards; weighing apparatus and instruments; apparatus and instruments for physics; measuring apparatus; measuring devices, electric; regulating apparatus, electric; precision measuring apparatus; computer programmes [programs], recorded; computer programs [downloadable software]; computer operating programs, recorded; central processing units [processors]; electronic publications, downloadable; distribution consoles [electricity]; control panels [electricity]; voltage surge protectors; relays, electric; integrated circuit cards [smart cards]; connections, electric; printed circuits; transformers [electricity]; step-up transformers; electric loss indicators; electric installations for the remote control of industrial operations; data processing apparatus; battery chargers; acoustic [sound] alarms; anti-theft warning apparatus; adding machines; heat regulating apparatus; USB flash drives; switchboards; distribution boards [electricity].
Class 11: Steam accumulators; heat accumulators; desiccating apparatus; disinfectant apparatus; air deodorising apparatus; ionization apparatus for the treatment of air or water; refrigerating apparatus and machines; boilers, other than parts of machines; fans [air-conditioning]; fans [parts of air-conditioning installations]; electric fans for personal use; refrigerating display cabinets [display cases]; air reheaters; stills; refrigerating containers; evaporators; chimney flues; thermostatic valves [parts of heating installations]; solar thermal collectors [heating]; ventilation hoods; air conditioning apparatus; air conditioners for vehicles; gas boilers; germicidal lamps for purifying air; stoves; refrigerating appliances and installations; water intake apparatus; deodorising apparatus, not for personal use; air purifying apparatus and machines; cooling appliances and installations; sanitary apparatus and installations; heating apparatus, electric; water sterilizers; air sterilisers; air driers [dryers]; heat exchangers, not parts of machines; humidifiers for central heating radiators; air conditioning installations; air filtering installations; ventilation [air-conditioning] installations and apparatus; ventilation [air-conditioning] installations for vehicles; filters [parts of household or industrial installations]; filters for air conditioning.
Class 37: Rebuilding engines that have been worn or partially destroyed; rebuilding machines that have been worn or partially destroyed; building sealing; disinfecting; construction information; building construction supervision; pump repair; factory construction; construction; irrigation devices installation and repair; heating equipment installation and repair; air conditioning apparatus installation and repair; electric appliance installation and repair; office machines and equipment installation, maintenance and repair; interference suppression in electrical apparatus.
Class 42: Computer system analysis; architecture; recovery of computer data; industrial design; graphic arts designing; technical project studies; engineering; installation of computer software; mechanical research; research and development of new products for others; technical research; calibration (measuring); computer software consultancy; updating of computer software; monitoring of computer systems by remote access; maintenance of computer software; data conversion of computer programs and data [not physical conversion]; computer system design; rental of web servers; rental of computer software; duplication of computer programs; construction drafting; computer software design; consultancy in the field of energy-saving; computer programming; surveying.
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’, 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 and services in Classes 9, 11, 37 and 42
When comparing the contested goods in Class 9, which mainly include scientific, weighing, measuring and signalling apparatus and instruments; 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; data processing equipment; computer hardware and computer software; in Class 11, which mainly include apparatus for lighting, heating, steam generating, refrigerating, ventilating, water supply and sanitary purposes; in Class 37, which mainly include services relating to building construction, repair and installation services and in Class 42, which mainly include scientific and technological services and research and design relating thereto; industrial analysis and research services, computer hardware and software services, etc., with the opponent’s goods in Class 3, which include abrasive preparations and materials; in Class 7, which include abrasive parts of machines; in Class 8, which include abrading hand tools and parts of tools and in Class 35, which mainly include services rendered by persons or organizations principally with the object of help in the operating or managing of a commercial undertaking, or help in the managing of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and wholesaling in the fields of sanding machines, abrasive preparations, tools and goods of common metal for building, these goods and services are all dissimilar. They differ in nature and purpose. They are not in competition or complementary to each other. These services have a different origin, distribution channels and they target a different public.
The opponent points out in its observations that for the services claimed in Class 37 of the application to be performed, the goods claimed for the earlier trade marks are needed, for example the services in Class 37 include rebuilding engines and machines that have been worn or partially destroyed and it is obvious that such a work requires the use of tools, among others abrasives. However, even though some of the goods are used when offering some of the services, this does not make them similar either. Goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T 74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T 558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T 504/11, Dignitude, EU:T:2013:57, § 44). The Opposition Division cannot establish that there is an essential or a significant connection between the opponent’s goods and the contested services in Class 37.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Martin MITURA | Chantal VAN RIEL | Inés GARCÍA LLEDÓ |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.