Decision on Opposition No B 2 493 784 page: 3 of 10
An interpretation of the wording of the list of the applicant’s goods and services is
required to determine the scope of protection of these goods and services.
The Opposition Division notes that there is a slight discrepancy between the first and
second language versions of the list of the contested goods in Class 17 as regards
the contested producing of strips of moulded rubber for windows and doors in the
English version (i.e. the 2nd language of the contested application), which does not
correspond to the wording in Lithuanian (i.e. the 1st language of the contested
application), namely formuotos guminės langų ir durų gamybos juostelės, that should
be translated as moulded rubber strips for window and door production. However,
since it is obvious that this discrepancy is due to a translation mistake, for the
purposes of this decision the Opposition Division will use the aforementioned correct
wording of the translated goods in place of the erroneous term producing of strips of
moulded rubber for windows in Class 17.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the
specific goods in Class 6 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods in Class 6 to show
the relationship of individual goods to a broader category, is exclusive and restricts
the scope of protection only to the goods specifically listed.
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
The contested profiles of metal for making windows, doors and window sills;
accessories for windows, doors and window sills of metal, included in this class;
guides of metal for making windows, doors and window sills; fittings for windows and
doors, namely reinforcing, installation and fastening parts for construction purposes
can be categorised as semi-finished items of metal, parts and fittings of metal
intended for making windows and doors. Therefore, they overlap with the opponent’s
bands, strips and segments of metal, in particular of aluminium and alloys thereof.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested windows, doors and window sills of metal and the opponent’s bands,
strips and segments of metal, in particular of aluminium and alloys thereof differ in
their natures as the first group are rather finished products, and the latter are parts
and fittings. Bands and strips usually refer to narrow, flat pieces and segments
usually designate parts or pieces that fit with others to constitute a whole. These
goods do not have a specific purpose; they are intended to be used as parts in
different assemblies. Their main characteristic is their shape which makes them fit for
determined uses. On the other hand, the contested goods have a very specific
purpose. They can be found in general DIY shops but also in more specialised
shops. The fact that they share the metallic nature of the earlier goods, as well as
they may target the same users in the building/construction sector, is not enough to
find a similarity between them. These goods are neither complementary to, nor in
competition with each other. Therefore, they are considered dissimilar.