ARCTOS | Decision 2580721 - Fettekno oy v. Paalupaikka Oy
Date Published: May 1, 2018
OPPOSITION No B 2 580 721
Fettekno Oy, Tuulissuontie 35, 21420 Lieto, Finland (opponent), represented by Berggren Oy, Turku, Tykistökatu 2-4 B, 20520 Turku, Finland (professional representative)
a g a i n s t
Paalupaikka Oy, Kivirannantie 9, PL 19, 74101 Iisalmi, Finland (applicant), represented by Sirpa Rönkkö, vannetukku.fi Oy, Kivirannantie 9, 74101 Iisalmi, Finland (employee representative).
On 10/02/2017, the Opposition Division takes the following
1. Opposition No B 2 580 721 is upheld for all the contested goods.
2. European Union trade mark application No 14 251 185 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 251 185. The opposition is based, inter alia, on European Union trade mark registration No 8 827 214. The opponent invoked Article 8(1)(b) EUTMR.
On 03/10/2016, in a parallel opposition proceeding against part of the goods of European Union trade mark application No 14 251 185, the Opposition Division rendered decision No B 2 577 693 which upheld the opposition for part of the contested goods. This decision became final. The opponent in the present case was informed and has maintained the opposition.
The Opposition Division will, therefore, render a decision as regards the remaining Class 12 goods.
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 Union trade mark registration No 8 827 214.
- The goods
The goods on which the opposition is based are the following:
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
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; incubators for eggs.
The contested goods are the following:
Class 12: Pneumatic tires [tyres]; Tyres for commercial vehicles; Tyres for motorcycles; Tyres for agricultural vehicles; Automobile tires [tyres]; Tyres for two-wheeled vehicles; Tyres for trucks; Retreaded tyres; Vehicle tires; Tyres for land vehicles; Tyres for buses; Tyres.
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 12
The contested goods in Class 12 cover all types of tyres, which are defined in the Oxford English Dictionary as ‘a rubber cushion around the wheel of a bicycle, motor-car, etc.’.
The opponent’s goods include lubricants, which are defined in the Oxford English Dictionary as ‘a fluid which makes motion or action smooth or removes friction’.
The opponent claimed that tyres and lubricants are highly similar as they can be made by the same manufacturers, target the same end users, are found in the same service shops and are complementary. In support of this argument the opponent filed various pieces of evidence, consisting of extracts from websites and truck tyre fitting and installation documents. These documents show that lubricants specifically for use with tyres exist and they are essential for the fitting of tyres; to quote the MICHELIN Truck Tire Data Book 2010, pages 4 and 6, which was supplied by the opponent, “It is essential that an approved tire mounting lubricant be used.”.
Therefore, it has been shown that lubricants are used in conjunction with tyre fitting. The purchase of tyres will be carried out not just by the public at large (who as the applicant correctly argued are unlikely to fit their own tyres) but they will also be purchased by tyre fitting professionals who will then fit them to vehicles for their customers or automotive enthusiasts who will fit their own tyres. This part of the public will also need to buy lubricants specifically for use with tyres. The Opposition Division is of the opinion that there is a low degree of similarity between all the contested goods and the opponent’s lubricants as one is essential for the installation of the other, regardless of who carries out the installations (professionals or automotive enthusiasts).
The applicant argued that tyre mounting grease is neither grease nor an oil based product. In the evidence supplied by the opponent the terms used are grease and lubricant. In the opponent’s specification there is no limitation to imply that the goods must be oil based and the term lubricants is sufficiently broad to cover a range of items including both those based on oil and those based on plant or other substances. Therefore, this argument must be set aside.
Likewise, the applicant argued that the opponent was not using the earlier right for lubricants for mounting tyres. However, the applicant’s argument regarding the actual use of the earlier mark as far as the goods are concerned cannot stand. As the opponent was not put under the requirement to prove use of the earlier marks, the comparison of the goods shall be made on the basis of the lists of goods as registered and not on the basis of the actual or intended use of the goods.
- 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 similar to a low degree are directed at the professional public and automotive enthusiasts. The degree of attention will be higher than normal.
- The signs
Earlier trade mark
The relevant territory is the European Union.
Both signs are word marks and, therefore, the words as such are protected and not their written form. The signs are, consequently, identical.
- 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 (eighth recital 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).
However, a global assessment of a 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 (see, to that effect, ‘Lloyd Schuhfabrik’§ 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17). This is relevant in the present case as the conflicting signs are identical, whilst the goods are only similar to a low degree.
Furthermore, 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.
The identity of signs, therefore, offsets the low similarity between the opponent’s goods in Class 4 and the contested goods in Class 12. Furthermore, even a professional public with a heightened level of attention would find it impossible to not assume that when fitting a tyre bearing the contested sign that it was not from the same or an economically-linked undertaking as the lubricants used during the fitting procedure which bear the same identical sign.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 8 827 214.
It follows from the above that the contested sign must be rejected in its entirety.
As the earlier European Union trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.