WELDURAL | Decision 2514472

Date Published: Oct 1, 2017

OPPOSITION No B 2 514 472

Weldur, S.L., Av. Marina 52 G, Pol. Ind. Can Calderon ll, 08830 Sant Boi de Llobregat (Barcelona), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Aleris Rolled Products Germany GmbH, Carl-Spaeter-Str. 10, 56070 Koblenz, Germany (holder), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft mbB, Bavariaring 11, 80336 München, Germany (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 514 472 is partially upheld, namely for the following contested goods:

Class 6:        Common metals and their alloys, in particular aluminum and aluminum alloys; semi-finished products made of aluminum alloys; aluminum and aluminum alloy ingots, sheets, foils, wires, slabs, strips, plates and molds; rolled, extruded and forged products made of aluminum and aluminum alloys; metal molds; aluminum molds.

Class 7:        Machine tools; wear plates for machines, molding machines; molds for injection molding tools; forging molds, molds [parts of machines].

2.        International registration No 1 232 353 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 232 353. The opposition is based on European Union trade mark registration No 4 098 216. The opponent invoked Article 8(1)(b) EUTMR.

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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, the European trade mark No 4 098 216.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 23/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union, from 23/07/2010 to 22/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 6:        Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7:        Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; egg incubators and in particular welding apparatus for autogenous working of metals, electrical machines for resistance welding and arc welding, accessories, parts and attachments therefor, electromotive machines and machine tools.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus 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-extinguishers and in particular electric welding apparatus, accessories and attachments therefor, and contact points or electrodes for electric welding apparatus.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 04/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/07/2016 to submit evidence of use of the earlier trade mark. This deadline was extended upon request by the opponent until 09/09/2016. On 09/09/2016, within the time limit, the opponent submitted the evidence of use.

The evidence to be taken into account is, in particular, the following:

• Photos of several products bearing the earlier trade mark.
• Photos of pens, business cards, order forms.
• Photo of a first page of what seems to be a leaflet bearing the earlier trade mark and depicting the products from coper or coper alloy.
• Several invoices for the period between 20/09/2010 and 10/04/2015 from Garcia Adhesivos S.L. to Weldur S.L. for adhesive tapes bearing the earlier mark, as well as photos of the adhesive tape.
• Several invoices from Ondunova S.A. to Weldur S.L. for the period between 22/06/2011 and 28/02/2015 for the carton boxes as well as the photos of the boxes bearing the earlier mark.
• Copy of an information booklet in English with the title  containing information about the opponent, its location, activities, products, clients.
• Several photos of the opponent’s products on different locations. According to the indication made by the opponent, these products are situated on different locations and used by e.g. SEAT, NISSAN.
• Extracts from a catalogue of the opponent’s products with the title  containing the photos and reference numbers of several products from different metals and their alloys.
• Several invoices from the opponent to Française de mécanique chez Renault in Le Plessis-Robinson, France for the period between 15/03/2010 and 15/11/2012 for electrodes pipes and tips. The reference numbers in these invoices correspond to the reference numbers in the catalogue. An order from Française de mécanique chez Renault addressed to the opponent, from 21/09/2012. The order is for electrodes pipes and tips.  
• Several invoices and order forms between SNC Renault Cleon in Le Plessis-Robinson, France and the opponent for the period between 15/03/2010 and 15/07/2014. The invoices and order forms are for electrodes pipes and tips.
• Two invoices and corresponding order forms for electrodes and electrodes holders with indication of the opponent and Nimak GmbH in Wissen, Germany, these documents are from the end of 2013 and December 2014/January 2015 respectively.
• Several invoices and order forms for electrodes and blocks of copper for the period between 01/06/2012 and 30/12/2014. The invoices are issued by the opponent to Sofedit Sermaises, Sermaises du Loiret in France.
• Several invoices and order forms for electrodes for the period between 01/12/2011 and 08/05/2014. The invoices are issued by the opponent to Peugeot Citroen Aut. Portugal, S.A. in Mangualde, Portugal.
• Several invoices from the opponent to Volkswagen Autoeuropa, LDA in Quinta do Anjo in Portugal for the period between 25/05/2010 and 15/01/2015 and corresponding order forms. The invoices and order forms include several products whereas some of them seem to be manufactured by company called Tunkers. Only the invoices from 13/06/2012, 11/06/2012 and 08/01/2015 include electrodes, electrodes holders, shims respectively which seemed to originate from the opponent.
• Several invoices from the opponent to Renault España S.A. in Valladolid, Spain for the period between 01/07/2011 and 13/09/2012 and corresponding order forms. These documents include electrodes, part of the electrodes.  Some of the reference numbers in the invoices correspond to the reference numbers in the provided catalogue.
• Affidavit of 13/07/2016 signed by Ms. Elionor Serra Hernández, the General Manager of Weldur S.L. (the opponent), where she declares that the earlier European trade mark No 4 098 216 has been used without interruption since 23/01/2010 for all the goods in Classes 6, 7 and 9, for which this trade mark enjoys the protection. According to Ms. Hernández the sales figures for the goods bearing the mark are as follows:

• Year 2010: 1 276 110€ for sale of products, especially products for welding in Spain, France, Portugal and Germany.
• Year 2011: 1 691 715€ for sale of products, especially products for welding in Spain, France, Portugal and Germany.
• Year 2012: 1 345 575€ for sale of products, especially products for welding in Spain, France, Portugal and Germany.
• Year 2013: 1 464 350€ for sale of products, especially products for welding in Spain, France, Portugal and Germany.
• Year 2014: 1 534 920€ for sale of products, especially products for welding in Spain, France, Portugal and Germany.

Ms Hernandez indicates further the amount spent on advertising and promotion of the earlier mark  in the period between 2010 and 2015. An overview of the sales figures for the period between 2010 and 2015 is included. The document is in Spanish and translated into English.

• Seven affidavits from the opponent’s clients and suppliers where they declare that they are aware of use of the earlier mark by the opponent.
• A description of the Weldur S.L. (the opponent) activities, their history and most important clients in Spanish, signed on 14/07/2016 by Ms. Elionor Serra Hernández where she states i.a. that the opponent supplies with all kinds of welding products Seat and VW in Spain. It furthermore claims that the opponent manufactures the products from its own material which is either cooper and cooper alloy or aluminium and aluminium alloy and that they produce also different part to be used for painting and different tools. Translation of this document in English is included.

The holder argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The holder’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Place of use

The evidence must show that the earlier mark has been genuinely used in the European Union. The documents submitted show that the place of use is mostly Spain, France, Portugal and Germany. This can be inferred from the languages of the documents submitted as well as from the addresses mentioned in the orders and invoices.

Time of use

A substantial part of the evidence is dated within the relevant period. Although some of the relevant evidence, for instance the photos of the products, the catalogues are undated, it has to be noted that, when assessed in its entirety the evidence contains sufficient proof that some of the goods bearing the trade mark were distributed within the relevant period.

The evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period, in particular the catalogues, gives an indication that the opponent’s mark was used within the relevant period. This is because some of the reference numbers included in some of the invoices corresponds to some of the product reference numbers in the catalogues.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the earlier European Union trade mark registration No 4 098 216 is registered as the figurative mark . Admittedly, this mark is placed only at the top of the invoices; however, the submitted photos show several products bearing this mark. This mark is also present next to the photos of the products depicted in the submitted catalogues whereas some of the reference numbers correspond to some of the reference numbers in the invoices and order forms. Hence, the combination of the mentioned documents show the earlier mark used in relation to various products such as electrodes, electrodes holders, electrode pipes, block of cooper.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the invoices, supported by the catalogues and photos of the products, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The main information as regards the extent of the opponent’s activities comes from the orders and invoices, which demonstrate sales during five years within the relevant period. The fact that the majority of the invoices are non-consecutive and cover an extensive period, from 2010 to 2015, must be also taken into consideration. It allows the inference that the invoices have been submitted merely as examples of sales and do not represent the total sales of goods under the earlier mark realised by the opponent during the relevant period. Hence, the submitted invoices in combination with the catalogues and the photos of the products bearing the earlier mark, whereas some of the reference numbers in the invoices correspond to the reference numbers in the catalogues and the photos, provide the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period and proves that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence shows genuine use of the earlier trade mark for electrodes, electrode holders, electrode pipes and blocks of cooper. It is very clear from the submitted evidence that the electrodes manufactured by the opponent are for welding. The same applies in relation to the electrode holders and electrode pipes. Electrodes for welding are included in the opponent list of goods as this contains electrodes for electric welding apparatus in Class 9. Even if the wording is slightly different; the scope of protection is the same. The opponent goods electrode holders and electrode pipes belong to the category of the following opponent’s goods accessories, parts and attachments of electrical machines for resistance welding and arc welding and of welding apparatus for autogenous working of metals. Regarding the blocks of copper, these belong to the category of the opponent’s common metals and their alloys in Class 6. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the latter mentioned goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for:

Class 6:        Common metals and their alloys.

Class 7:        Accessories, parts and attachments of electrical machines for resistance welding and arc welding and of welding apparatus for autogenous working of metals.

Class 9:        Electrodes for electric welding apparatus.

The remaining goods of the earlier trade mark are either not mentioned at all in the evidence (for instance scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments) or, as is the case of e.g. machine tools, small items of metal hardware for which some evidence was provided, the evidence is not sufficient. 

The Opposition Division points out that the earlier mark was applied for under the 8th Edition of the Nice Classification under which the welding electrodes were included in Class 9. However, these goods belong as of 2015 to the Class 7. This change does not alter the scope of the protection of the earlier mark nor does it introduce any alteration in the extent of the opposition filed.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and for which use has been proven are the following:

Class 6:        Common metals and their alloys.

Class 7:        Accessories, parts and attachments of electrical machines for resistance welding and arc welding and of welding apparatus for autogenous working of metals.

Class 9:        Electrodes for electric welding apparatus.

The contested goods and services are the following:

Class 6:        Common metals and their alloys, in particular aluminum and aluminum alloys; semi-finished products made of aluminum alloys; aluminum and aluminum alloy ingots, sheets, foils, wires, slabs, strips, plates and molds; rolled, extruded and forged products made of aluminum and aluminum alloys; metal molds; aluminum molds.

Class 7:        Machine tools; machine couplings and transmission components (except for land vehicles); wear plates for machines, molding machines; molds for injection molding tools; forging molds, molds [parts of machines].

Class 42:        Engineering services; technological services and research and technological design services related thereto; metallurgical testing; metallurgical analysis; scientific and technological research relating to metals, in particular to aluminum and aluminum alloys.

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 ‘in particular’, used in the holder’s list of goods and services indicates 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, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 6

Common metals and their alloys are identically contained in both lists of goods. As mentioned above, the use of ‘in particular’ indicates that aluminum and aluminum alloys, included in the holder’s list of goods in Class 6 are only examples of items included in the category. Therefore, the opponent’s common metals and their alloys are identical to the contested common metals and their alloys, in particular aluminum and aluminum alloys.

The contested semi-finished products made of aluminum alloys; aluminum and aluminum alloy ingots, sheets, foils, wires, slabs, strips, plates and molds; rolled, extruded and forged products made of aluminum and aluminum alloys; metal molds; aluminum molds and the opponent’s accessories, parts and attachments of electrical machines for resistance welding and arc welding and of welding apparatus for autogenous working of metals in Class 7 are considered similar. Although of a different nature, they can be used in combination, have the same distribution channels, target the same relevant public and may be produced by the same undertakings.

Contested goods in Class 7

The contested goods machine tools are similar to the opponent’s goods electrodes for electric welding apparatus (electrodes for welding) as they can coincide in producer and end user. Furthermore they are complementary.

The contested wear plates for machines, molding machines; molds for injection molding tools; forging molds, molds [parts of machines] are similar to the opponent’s accessories, parts and attachments of electrical machines for resistance welding and arc welding and of welding apparatus for autogenous working of metals as they can coincide in producer, end user and distribution channels.

However, the contested machine couplings and transmission components (except for land vehicles) and the opponent’s goods are dissimilar. They all have a different nature and purpose, are neither complementary nor in competition and neither they are normally produced by the same manufacturers nor target the same relevant public.

Contested services in Class 42

The contested services in Class 42 are very specific, relating to the theoretical and practical aspects of complex fields of activities, such as services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields and scientific research in relation to metal. As such their nature, purpose and method of use are different from those of the opponent’s goods.  Furthermore, they are not in competition, are distributed through different channels and tend to come from different undertakings. The fact that the opponent’s goods might be used for the execution of the opponent’s services in Class 42 is not sufficient to find a similarity, as the consumer will not expect them to originate from the same undertakings. Complementarity has to be distinguished from use in combination where goods / services are merely used together by choice or convenience in which case they are not essential for each other (see decision of 16/12/2013, R 634/2013 4, ‘ST LAB’, par. 20). Therefore, the contested services engineering services; technological services and research and technological design services related thereto; metallurgical testing; metallurgical analysis; scientific and technological research relating to metals, in particular to aluminum and aluminum alloys are dissimilar to 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price.

3. The signs

	WELDURAL
Earlier trade mark	Contested sign

The relevant territory is 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 applicant claims that the word element of the earlier mark is descriptive because it will be perceived as the English verb ‘weld’ by the relevant public, which clearly refers the purpose of the opponent goods.

However, the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details. In the opinion of the Opposition Division, it is very unlikely that the relevant public will split the signs at hand into the elements ‘weld’ and ‘ur’, ‘ural’ respectively.

The earlier mark is a figurative mark composed of the verbal element ‘Weldur’ written in standard bold black typeface whereas the first letter ‘W’ is in capital letters. The figurative element, placed to the left of the verbal element, is made up of a rectangular consisting of 4 bold interrupted lines inside of which are present two balls divided by a line.

The contested mark is a single-element word mark and has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

As regards the earlier sign, it is composed of a distinctive verbal element and less distinctive figurative elements. Therefore, the verbal element is more distinctive than the figurative elements. Yet, both of them are more or less of the same size and placed centrally, hence the contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of six letters ‘W-E-L-D-U-R’, which constitutes the entire word element of the earlier mark and form the major part of the contested mark. On the other hand, they differ in the last two letters ‘A-L’ of the contested mark, which have no counterpart in the earlier mark. The signs also differ in the figurative elements of the earlier mark.

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).

In addition, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the six letters /weldur/ present identically at the beginning in both signs. The pronunciation differs in the sound of the last two letters /al/ of the contested sign which has no respective counterpart in the earlier mark.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, neither of the signs have a meaning as a whole for the public in the relevant territories. Since a conceptual comparison is not possible, 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 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, for the reasons outlined in section c) of this decision, the earlier trade mark as a whole will be perceived as having 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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Moreover, 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.

In the present case, the goods at issue have been found partially identical, partially similar and partially dissimilar and are directed at the public at large and professionals whose degree of attention is deemed average to high. The earlier mark as a whole has a normal degree of distinctiveness and the signs are visually similar to an average degree, aurally highly similar and there is no conceptual aspect that could help consumers to differentiate the signs.

The similarities between the signs result from the six letters ‘WELDUR’, placed identically at the beginning of each sign’s verbal element. The differences are only in the slight stylisation of the earlier sign and in the last letters ‘AL’ of the contested sign. While the differences between the signs are not imperceptible, they are not sufficient to rule out any likelihood of confusion on the part of the relevant public. The differences between the signs at hand do not allow the consumers to distinguish between them safely and therefore those will likely to assume that the relevant goods bearing either one or another sign come from the same undertaking or from economically-linked undertakings.

In addition, account should also be 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 Meyer, EU:C:1999:323). 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).

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 4 098 216. It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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

Lars HELBERT

Renata COTTRELL

Claudia MARTINI

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.