GUSTO | Decision 2548546
Date Published: Oct 2, 2017
OPPOSITION No B 2 548 546
KASTO Maschinenbau GmbH & Co. KG, Industriestr. 14, 77855 Achern, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Bismarckstr. 16, 76133 Karlsruhe, Germany (professional representative)
a g a i n s t
GustoMSC Resources B.V., Karel Doormanweg 25, 3115 JD Schiedam, Netherlands (holder), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).
On 26/06/2017, the Opposition Division takes the following
1. Opposition No B 2 548 546 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods and services (in Classes 6, 7, 9, 12 and 42) of international registration designating the European Union No 1 218 164 (figurative mark: “”). The opposition is based on international trade mark registration No 671 334 designating the European Union (word mark:
“KASTO”). 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 in Classes 6, 7, 9, 37 and 42 on which the opposition is based are the following:
Class 6: Means, namely cassettes, stacking frames, pallets and transport magazines made of metal to handle material to be cut, to be transported and to be stored.
Class 7: Bandsawing machines, power hacksaws, cold and warm circular sawing machines, all machines for straight and mitre cuts, including suitable cutting tools namely saw blades and bandsaw blades, grinding machines for cutting tools; storage systems made of metal for storing material such as plates, bars, sections, blocks, semi-finished parts and finished parts, the aforementioned storage systems comprising storage racks, pull type locations or stacked storage locations arranged parallel to each other as well as removal and storing devices allocated to storage racks, pull type locations or stacked storage locations, handling equipment for removal and storing devices; transport, removal and storing devices for the listed storage systems in form of operating gantry cranes or cranes and their drive systems; machines and machinery for sorting, palletizing, deburring, cleaning and end treatment of the aforementioned materials as well as for the linking of machines, roller tracks, machines for making material bundles and wrapping for packaging and transport securing purposes, marking devices.
Class 9: Measuring stops; mechanical, electrical and electronic control systems for the machines and devices listed in classes 6 and 7; computers for controlling the sawing machines as well as for operating and managing the storage systems.
Class 37: Assembly, maintenance and repair of all products listed in classes 6, 7 and 9; setting-up and assembly of the aforementioned production facilities and erection of the necessary buildings.
Class 42: Development of programs for the control of sawing machines and for the operation and management of the storage systems; planning of factories comprising the goods listed in classes 6, 7 and 9 including the required buildings.
The contested goods and services in Classes 6, 7, 9, 12 and 42 are the following:
Class 6: Transportable structures of metal; structures of metal for transporting mobile platforms; supports and floats (being constructions) of metal for cranes, machines, offshore drilling platforms and drilling rigs; structures of metal for securing cranes, machines and drilling rigs; floating containers of metal; floating docks of metal for mooring ships; offshore drilling platforms (floating or non-floating).
Class 7: Machine tools; apparatus for moving or shifting cranes, machines and drilling rigs; machines for securing cranes, machines and drilling rigs; motors (with the exception of motors for land vehicles); clutches and transmission components (except for land vehicles); jacks [machines]; hoisting cranes, including cranes and gantry cranes; wind turbines; elevating apparatus.
Class 9: Software, including software in the field of designing and building transportable structures and ships, and parts therefor; software in the field of controlling and operating transportable structures on ships and drilling rigs among other things.
Class 12: Vehicles; apparatus for locomotion by land, air or water; ships; underwater vehicles and crafts; parts for the aforesaid goods included in this class.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; engineering, including in the field of transportable structures and ships; research and development of new products for others; technical project studies.
Some of the contested goods and services are identical to goods and services of the earlier trade mark on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary between average and high, because they are partly rather expensive goods which will, furthermore, not purchased on a daily basis. They are carefully chosen.
- The signs
Earlier trade mark
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 earlier trade mark is a word mark which is protected in all different type faces. Even taking into account that the contested sign is a figurative mark, the figurative elements are limited on a simple fat spelling of the word “GUSTO” in uppercase letters.
The contested sign will be understood by a part of the public (such as Italian, German, Spanish and English) as “enjoyment or vigor in doing something” (Oxford Dictionary, www.duden.de). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
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.
Visually and aurally, the signs have the same number of letters, namely five. However, the beginnings of the trade marks “KA” of the earlier trade mark and “GU” of the contested sign look and sound totally different. The letters “K” and “A” of the earlier trade mark are rather angular in their appearance, whereas the letters “G” and “U” of the contested sign are, to the contrary, curvy. Also the opponent has not considered any similarities in this respect. As regards the pronunciation, the letter “G” will be spoken more softly, whereas the letter “K” will be designated with a much “harder” sound. Also the following vowels “A” and “U” will be pronounced according to the applicable rules of the relevant territories, but never in the same or similar manner. Even taking into account the same letter sequence of the signs “STO”, they have a rather different sound, pronunciation and rhythm. Therefore, the signs are visually and aurally similar to a below average degree.
Conceptually, the earlier trade mark has no meaning. The contested sign has a meaning in a part of the relevant territories (see above). In these territories, the signs are conceptually not similar. In the rest of the territories, both signs are meaningless without any consequences for the conceptual comparison.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence within the prescribed timeliness to substantiate such claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has 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 mark must be seen as normal.
- Global assessment, other arguments and conclusion
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).
The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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 a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a 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, § 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).
The contested goods and services are assumed identical. The signs are visually and aurally similar only to a below average degree and conceptually not similar for part of the public.
Taking into account the relevant visual and aural differences between the signs, their different beginnings, the no more than normal degree of distinctiveness of the earlier trade mark and the at least average degree of attention of the consumers, there is, even for assumed identical goods and services, no likelihood of confusion. This is even more the case when the public has an enhanced degree of attention.
The opponent refers to other decisions of the Office and of the Court 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). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent decided by the Office and by the Court are not relevant to the present proceedings, because the signs and/or the goods and services are clearly different. Therefore, they have no effect on the case under assessment.
Contrary to the opponent’s arguments, the differences between the signs are sufficient to distinguish them clearly from each other. The public will not think that the signs come from the same undertaking or economically linked undertakings.
Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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
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.