OPPOSITION No B 2 446 436

Officine Rigamonti S.p.A., Via Circonvallazione, 9, 13018 Valduggia (Vercelli), Italy (opponent), represented by Jacobacci & Partners S.p.A., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)

a g a i n s t

Oregon Machinery, 9643 SH 29^th, Milwaukie US 97222, United States of America (applicant), represented by Tasnádi es Társa Ügyvédi Iroda, Budapest, Czetz János u. 86., 1039 Hungary (professional representative)

On 19/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 446 436 is partially upheld, namely for the following contested goods:

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; Automatic vending machines; Acetylene cleaning apparatus; Feeding apparatus for engine boilers; Feeders [parts of machines]; Aerators; Agitators; Journal boxes [parts of machines]; Hydraulic door openers and closers [parts of machines]; Pneumatic door openers and closers [parts of machines]; Door openers, electric; Door closers, electric; Stators [parts of machines]; Handling apparatus for loading and unloading; Domestic crushers/grinders, electric; Generators of electricity; Generators of electricity; Mowing and reaping machines; Reapers and binders; Harvesting machines; Knives for mowing machines; Derricks; Ditchers [ploughs]; Mineral water making machines; Bitumen making machines; Transmissions for machines; Transmissions, other than for land vehicles; Vending machines; Automatic grapnels for marine purposes; Mineworking machines; Injectors for engines; Holding devices for machine tools; Stamping machines; Cartridges for filtering machines; Concrete mixers [machines]; Typecasting machines; Type-setting machines [printing]; Emergency power generators; Friezing machines; Leather-working machines; Harrows; Pepper mills other than hand-operated; Leather paring machines; Earth moving machines; Packaging machines; Centrifugal machines; Centrifugal mills; Centrifugal pumps; Cigarette machines for industrial purposes; Labellers [machines]; Shoe polishers, electric; Heel-making machines; Bearings [parts of machines]; Self-oiling bearings; Bearings for transmission shafts; Bearing brackets for machines; Taps [parts of machines, engines or motors]; Clack valves [parts of machines]; Joints [parts of engines]; Nut-tapping machines; Threshing machines; Pulleys [parts of machines]; Pulleys; Lace making machines; Packaging machines; Packaging machines; Sealing machines for industrial purposes; Engines for boats; Pneumatic tube conveyors; Winches; Capstans; Vacuum cleaner hoses; Carriages for knitting machines; Sugar making machines; Kneading machines; Mills for household purposes, other than hand-operated; Cranes [lifting and hoisting apparatus]; Disintegrators; Dynamos; Dynamo brushes; Dynamo belts; Drums [parts of machines]; Boxes for matrices [printing]; Tobacco processing machines; Die-stamping machines; Rams [machines]; Metal drawing machines; Piston rings; Pistons [parts of machines or engines]; Pistons for cylinders; Pistons for engines; Ploughs; Ploughshares; Fan belts for motors and engines; Electric welding apparatus; Motors, electric, other than for land vehicles; Food preparation machines, electromechanical; Sharpening machines; Lifting apparatus; Lifting apparatus; Elevators [lifts]; Jacks [machines]; Sizing machines; Ore treating machines; Lathes; Mechanized livestock feeders; Earth moving machines; Wringing machines for laundry; Woodworking machines; Potters' wheels; Milking machines; Brake linings other than for vehicles; Brake linings other than for vehicles; Brake segments other than for vehicles; Brake shoes other than for vehicles; Superchargers; Elevators [lifts]; Elevator chains [parts of machines]; Elevator operating apparatus; Machines for metal processing; Machines and apparatus for polishing [electric]; Type-setting machines [photocomposition]; Inking apparatus for printing machines; Spray guns for paint; Air brushes for applying colour; Painting machines; Rack and pinion jacks; Earth moving machines; Spinning machines; Spinning machines; Reduction gears other than for land vehicles; Crankcases for machines, motors and engines; Cranks [parts of machines]; Crank shafts; Electric welding apparatus; Welding apparatus, gas-operated; Soldering lamps; Soldering blow pipes, gas-operated; Electric welding apparatus; Gas welding machines; Boiler tubes [parts of machines]; Hangers [parts of machines]; Curtain drawing devices, electrically operated; Lawn mowers; Saw benches [parts of machines]; Saws [machines]; Saw blades [parts of machines]; Drilling heads [parts of machines]; Drilling machines; Drills (Electric hand -); Drilling bits [parts of machines]; Drill chucks [parts of machines]; Blowing machines; Blowing machines; Fans for the compression, sucking and carrying of grain; Blowing machines for the compression, exhaustion and transport of gases; Grain husking machines; Winnowers; Galvanizing machines; Electroplating machines; Hoppers [mechanical discharging]; Stands for machines; Machine fly-wheels; Power hammers; Rakes for raking machines; Raking machines; Ball rings for bearings; Ball-bearings; Anti-friction bearings for machines; Roller bridges; Bearings; Steam/oil separators; Steam traps; Steam engines; Steam engine boilers; Engraving machines; Planing machines; Weeding machines; Igniting devices for internal combustion engines; Sparking plugs for internal combustion engines; Igniting magnetos; Fruit presses, electric, for household purposes; Whisks, electric, for household purposes; Bending machines; Engines for boats; Driving motors other than for land vehicles; Transmission chains other than for land vehicles; Driving chains other than for land vehicles; Gears, other than for land vehicles; Gears for weaving looms; Belts for motors and engines; Hauling machines (Net -) [fishing]; Peeling machines; Cinder sifters [machines]; Silencers for motors and engines; Food processors, electric; Electrodes for welding machines; Electric welding apparatus; Gas-operated blow torches; Cylinders for motors and engines; Cylinder heads for engines; Rolling mills; Rolling mill cylinders; Belts for conveyors; Torque converters other than for land vehicles; Hydraulic engines and motors; Hydraulic controls for machines, motors and engines; Heat exchangers [parts of machines]; Snow ploughs; Paring machines; Notchers [machine tools]; Trash compacting machines; Meat choppers [machines]; Fleshing machines; Radiators [cooling] for motors and engines; Starters for motors and engines; Handling machines, automatic [manipulators]; Mud catchers and collectors [machines]; Beverage preparation machines, electromechanical; Electric arc welding apparatus; Electric arc cutting apparatus; Glow plugs for Diesel engines; Lifts for use with vehicles; Braiding machines; Electric hammers; Hammers [parts of machines]; Shoe lasts [parts of machines]; Universal joints [Cardan joints]; Transmission shafts, other than for land vehicles; Card clothing [parts of carding machines]; Carding machines; Mowing and reaping machines; Catalytic converters; Tarring machines; Puddling machines; Coffee grinders, other than hand-operated; Machine boiler scale collectors; Brushes, electrically operated [parts of machines]; Brushes [parts of machines]; Lubricating pumps; Bread cutting machines; Machine wheels; Bicycle assembling machines; Bicycle dynamos; Machine wheelwork; Tambours for embroidery machines; Electric knives; Knives [parts of machines]; Slide rests [parts of machines]; Sheaf-binding machines; Mixing machines; Blenders, electric, for household purposes; Tympans [parts of printing presses]; Ejectors; Manifold (Exhaust -) for engines; Exhausts for motors and engines; Extractors for mines; Sausage machines; Stone working machines; Compressed air machines; Compressors for refrigerators; Condensing installations; Condensers [steam] [parts of machines]; Conveyors [machines]; Steelworks (Converters for -); Electric blenders; Bookbinding apparatus and machines for industrial purposes; Electric can openers; Churns; Anti-pollution devices for motors and engines; Wine presses; Trueing machines; Grindstones [parts of machines]; Cord making machines; Knitting machines; Earth moving machines; Forge bellows; Swaging machines; Central vacuum cleaning installations; Cultivators [machines]; Couplings other than for land vehicles; Flues for engine boilers; Pedal drives for sewing machines; Power saws; Thermic lances [machines]; Cutting blow pipes, gas-operated; Shovels, mechanical; Drain cocks; Pneumatic hammers; Air condensers; Air cushion devices for moving loads; Aerating pumps for aquaria; Air condensers; Air pumps [garage installations]; De-aerators for feedwater; Plunger pistons; Tilt hammers; Air suction machines; Lift belts; Punching machines; High pressure washers; Flour mill machines; Millstones; Mangles; Milling machines; Reels, mechanical, for flexible hoses; Reeling apparatus, mechanical; Hand-held tools, other than hand-operated; Propulsion mechanisms other than for land vehicles; Drilling rigs, floating or non-floating; Threading machines; Whitewashing machines; Agricultural implements other than hand-operated; Agricultural elevators; Agricultural machines; Embossing machines; Mixers [machines]; Grain separators; Washing machines; Washing installations for vehicles; Washing machines for crockery; Washing machines; Coin-operated washing machines; Hoods [parts of machines]; Cylinders for machines; Air cushion vehicles (Engines for -); Motors, other than for land vehicles; Aeronautical engines; Motorized cultivators; Sidewalks [moving pavements]; Escalators; Electrical apparatus for sealing plastics [packaging]; Machines for processing plastics; Tables for machines; Clippers [machines]; Hair clipping machines for animals; Scissors, electric; Reducers (Pressure -) [parts of machines]; Pressure regulators [parts of machines]; Printing machines; Printing machines for use on sheet metal; Printing rollers for machines; Matrices for use in printing; Typographic presses; Printing presses; Printing rollers for machines; Printing plates; Pressure valves [parts of machines]; Loom shafts; Rinsing machines; Oil refining machines; Lubricators [parts of machines]; Scissors, electric; Foundry machines; Moulds [parts of machines]; Mills [machines]; Reels [parts of machines]; Reels for weaving looms; Connecting rods for machines, motors and engines; Sorting machines for industry; Bottle stoppering machines; Bottle stoppering machines; Bottle washing machines; Bottling machines; Bottle sealing machines; Paper production machines; Paper production machines; Paper feeders [printing]; Parquet wax-polishers, electric; Kick starters for motorcycles; Stropping machines; Blades [parts of machines]; Blade holders [parts of machines]; Guns [tools using explosives]; Pneumatic transporters; Pneumatic controls for machines, motors and engines; Dust exhausting installations for cleaning purposes; Carburetter feeders; Carburettors; Spraying machines; Vacuum cleaner attachments for disseminating perfumes and disinfectants; Vacuum cleaners; Dust exhausting installations for cleaning purposes; Compressed air machines; Compressed air engines; Compressed air pumps; Pumps [parts of machines, engines or motors]; Glue guns, electric; Adhesive tape dispensers [machines]; Loading ramps; Aeronautical engines; Coalcutting machines; Turf removing ploughs; Robots [machines]; Spinning wheels; Peeling machines; Sifters; Rotary steam presses, portable, for fabrics; Springs [parts of machines]; Presses [machines for industrial purposes]; Shaping and moulding machines; Speed governors for machines, engines and motors; Gear boxes other than for land vehicles; Finishing machines; Smoothing presses; Beaters, electric; Rail-laying machines; Beer (Apparatus for drawing up - under pressure); Brewing machines; Beer pumps; Darning machines; Jet engines other than for land vehicles; Compressed air guns for the extrusion of mastics; Freewheels other than for land vehicles; Regulators [parts of machines]; Belts for conveyors; Trussing apparatus for hay; Chaff cutters; Machines for making pasta; Spin driers [not heated]; Stalk separators [machines]; Satinizing machines; Chaff cutter blades; Riveting machines; Hemming machines; Valves [parts of machines]; Cutters [machines]; Wind turbines; Garbage disposal machines; Tedding machines; Carbon brushes [electricity]; Sewage pulverizers; Aerated beverage-making machines; Aerated water making apparatus; Separators; Dividing machines; Fittings for engine boilers; Machine tools; Tools [parts of machines]; Belts for machines; Dyeing machines; Alternators; Sieves [machines or parts of machines]; Pumps; Pumps for heating installations; Pumps [machines]; Pump diaphragms; Teat cups for milking machines; Suction machines for industrial purposes; Wine presses; Machines and apparatus for carpet shampooing, electric; Looms; Hosiery looms; Stereotype machines; Filtering machines; Filters [parts of machines or engines]; Filters for cleaning cooling air, for engines; Filter presses; Expansion tanks [parts of machines]; Fodder presses; Mine borers; Adhesive bands for pulleys; Feedwater regulators; Hoists for freight; Dairy machines; Cream/milk separators; Rotary printing presses; Journals [parts of machines]; Axles for machines; Couplings other than for land vehicles; Shaft couplings [machines]; Racket stringing machines; Machines for the textile industry; Typographic machines; Cleaning (Machines and apparatus for -), electric; Cleaning appliances utilizing steam; Chucks [parts of machines]; Housings [parts of machines]; Filling machines; Stuffing boxes [parts of machines]; Superheaters; Turbines other than for land vehicles; Turbocompressors; Punches for punching machines; Stitching machines; Road making machines; Road rollers; Sweeping machines (Road -) [self-propelled]; Glass working machines; Glaziers' diamonds [parts of machines]; Fuel dispensing pumps for service stations; Fuel conversion apparatus for internal combustion engines; Fuel economisers for motors and engines; Trimming machines; Cutters [machines]; Butter machines; Pumps (Vacuum -) [machines]; Sewing machines; Ironing machines; Railroad constructing machines; Machines and apparatus for wax-polishing, electric; Carriage aprons; Electromechanical machines for chemical industry; Fans for motors and engines; Beating machines; Chisels for machines; Shuttles [parts of machines]; Sowers [machines]; Guides for machines; Control cables for machines, engines or motors; Control mechanisms for machines, engines or motors; Vibrators [machines] for industrial use; Water heaters [parts of machines]; Drainage machines; Hydraulic turbines; Vulcanisation apparatus; Grating machines for vegetables; Vacuum cleaner bags; Degreasers [machines]; Rings (Grease -) [parts of machines]; Grease boxes [parts of machines]; Shredders [machines] for industrial use; Crushing machines.

2. Community trade mark application No 12 291 613 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 12 291 613, namely against all the goods in Classes 7 and 8. The opposition is based on Community trade mark registration No 7 010 424 and Italian trade mark registrations No 1 337 661 and No 227 950. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

The applicant’s observations of 26/06/2015 were filed in Hungarian, which is neither the language of the proceedings nor a language of the Office. As the observations are not in the language of the Office, the request for an extension for translation has to be rejected.

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case the evidence filed by the opponent in relation to Italian trade mark No 227 950 consists of:

1) a copy of the registration certificate with the text ‘col. Riv. Bianco, nero e rosso’ and the corresponding translation with the text ‘colors white, black and red’

2) a copy of the ‘dichiarazione di protezione’ and the corresponding translation of this ‘declaration of protection’.

In all these documents the earlier Italian trade mark No 227 950 is represented in black and white.

The evidence mentioned above is not sufficient to substantiate this earlier trade mark, because the evidence only contains a representation of the sign in black and white, despite the indication that it is a colour mark in white, black and red.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Italian trade mark No 1 337 661.

1. The goods

The goods on which the opposition is based are the following:

Class 6: Common metals and their alloys, metal building materials, transportable buildings of metal, non-electric cables and wires, pipes and tubes of metal, junctions for pipes, ironmongery, small items of metal hardware, taps and fittings, valves of metal, manifolds of metal.

Class 7: Machines and machine tools, motors and engines, pressure reducers, filters and fittings for pumps, safety valves, filters and fittings for pumps, taps (faucets), manifolds, hydraulic engines and motors, hydraulic controls.

Class 9: Scientific, optical, signalling, checking (supervision), weighing and measuring apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; computer software, electric collectors, thermostats, manometers.

Class 11: Apparatus for lighting, heating, steam generating, refrigerating, ventilating, drying, water supply and sanitary purposes; filters and fittings for pumps, thermostatic valves, dampers; heat exchangers, taps (faucets).

The contested goods are the following:

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; Automatic vending machines; Acetylene cleaning apparatus; Feeding apparatus for engine boilers; Feeders [parts of machines]; Aerators; Agitators; Journal boxes [parts of machines]; Hydraulic door openers and closers [parts of machines]; Pneumatic door openers and closers [parts of machines]; Door openers, electric; Door closers, electric; Stators [parts of machines]; Handling apparatus for loading and unloading; Domestic crushers/grinders, electric; Generators of electricity; Generators of electricity; Mowing and reaping machines; Reapers and binders; Harvesting machines; Knives for mowing machines; Derricks; Ditchers [ploughs]; Mineral water making machines; Bitumen making machines; Transmissions for machines; Transmissions, other than for land vehicles; Vending machines; Automatic grapnels for marine purposes; Mineworking machines; Injectors for engines; Holding devices for machine tools; Stamping machines; Cartridges for filtering machines; Concrete mixers [machines]; Typecasting machines; Type-setting machines [printing]; Emergency power generators; Friezing machines; Leather-working machines; Harrows; Pepper mills other than hand-operated; Leather paring machines; Earth moving machines; Packaging machines; Centrifugal machines; Centrifugal mills; Centrifugal pumps; Cigarette machines for industrial purposes; Labellers [machines]; Shoe polishers, electric; Heel-making machines; Bearings [parts of machines]; Self-oiling bearings; Bearings for transmission shafts; Bearing brackets for machines; Taps [parts of machines, engines or motors]; Clack valves [parts of machines]; Joints [parts of engines]; Nut-tapping machines; Threshing machines; Pulleys [parts of machines]; Pulleys; Lace making machines; Packaging machines; Packaging machines; Sealing machines for industrial purposes; Engines for boats; Pneumatic tube conveyors; Winches; Capstans; Vacuum cleaner hoses; Carriages for knitting machines; Sugar making machines; Kneading machines; Mills for household purposes, other than hand-operated; Cranes [lifting and hoisting apparatus]; Disintegrators; Dynamos; Dynamo brushes; Dynamo belts; Drums [parts of machines]; Boxes for matrices [printing]; Tobacco processing machines; Die-stamping machines; Rams [machines]; Metal drawing machines; Piston rings; Pistons [parts of machines or engines]; Pistons for cylinders; Pistons for engines; Ploughs; Ploughshares; Fan belts for motors and engines; Electric welding apparatus; Motors, electric, other than for land vehicles; Food preparation machines, electromechanical; Sharpening machines; Lifting apparatus; Lifting apparatus; Elevators [lifts]; Jacks [machines]; Sizing machines; Ore treating machines; Lathes; Mechanized livestock feeders; Earth moving machines; Wringing machines for laundry; Woodworking machines; Potters' wheels; Milking machines; Brake linings other than for vehicles; Brake linings other than for vehicles; Brake segments other than for vehicles; Brake shoes other than for vehicles; Superchargers; Elevators [lifts]; Elevator chains [parts of machines]; Elevator operating apparatus; Machines for metal processing; Machines and apparatus for polishing [electric]; Type-setting machines [photocomposition]; Inking apparatus for printing machines; Spray guns for paint; Air brushes for applying colour; Painting machines; Rack and pinion jacks; Earth moving machines; Spinning machines; Spinning machines; Reduction gears other than for land vehicles; Crankcases for machines, motors and engines; Cranks [parts of machines]; Crank shafts; Electric welding apparatus; Welding apparatus, gas-operated; Soldering lamps; Soldering blow pipes, gas-operated; Electric welding apparatus; Gas welding machines; Boiler tubes [parts of machines]; Hangers [parts of machines]; Curtain drawing devices, electrically operated; Lawn mowers; Saw benches [parts of machines]; Saws [machines]; Saw blades [parts of machines]; Drilling heads [parts of machines]; Drilling machines; Drills (Electric hand -); Drilling bits [parts of machines]; Drill chucks [parts of machines]; Blowing machines; Blowing machines; Fans for the compression, sucking and carrying of grain; Blowing machines for the compression, exhaustion and transport of gases; Grain husking machines; Winnowers; Galvanizing machines; Electroplating machines; Hoppers [mechanical discharging]; Stands for machines; Machine fly-wheels; Power hammers; Rakes for raking machines; Raking machines; Ball rings for bearings; Ball-bearings; Anti-friction bearings for machines; Roller bridges; Bearings; Steam/oil separators; Steam traps; Steam engines; Steam engine boilers; Engraving machines; Planing machines; Weeding machines; Igniting devices for internal combustion engines; Sparking plugs for internal combustion engines; Igniting magnetos; Fruit presses, electric, for household purposes; Whisks, electric, for household purposes; Bending machines; Engines for boats; Driving motors other than for land vehicles; Transmission chains other than for land vehicles; Driving chains other than for land vehicles; Gears, other than for land vehicles; Gears for weaving looms; Belts for motors and engines; Hauling machines (Net -) [fishing]; Peeling machines; Cinder sifters [machines]; Silencers for motors and engines; Food processors, electric; Electrodes for welding machines; Electric welding apparatus; Gas-operated blow torches; Cylinders for motors and engines; Cylinder heads for engines; Rolling mills; Rolling mill cylinders; Belts for conveyors; Torque converters other than for land vehicles; Hydraulic engines and motors; Hydraulic controls for machines, motors and engines; Heat exchangers [parts of machines]; Snow ploughs; Paring machines; Notchers [machine tools]; Trash compacting machines; Meat choppers [machines]; Fleshing machines; Radiators [cooling] for motors and engines; Starters for motors and engines; Handling machines, automatic [manipulators]; Mud catchers and collectors [machines]; Beverage preparation machines, electromechanical; Electric arc welding apparatus; Electric arc cutting apparatus; Glow plugs for Diesel engines; Lifts for use with vehicles; Braiding machines; Electric hammers; Hammers [parts of machines]; Shoe lasts [parts of machines]; Universal joints [Cardan joints]; Transmission shafts, other than for land vehicles; Card clothing [parts of carding machines]; Carding machines; Mowing and reaping machines; Catalytic converters; Tarring machines; Puddling machines; Coffee grinders, other than hand-operated; Machine boiler scale collectors; Brushes, electrically operated [parts of machines]; Brushes [parts of machines]; Lubricating pumps; Bread cutting machines; Machine wheels; Bicycle assembling machines; Bicycle dynamos; Machine wheelwork; Tambours for embroidery machines; Electric knives; Knives [parts of machines]; Slide rests [parts of machines]; Sheaf-binding machines; Mixing machines; Blenders, electric, for household purposes; Tympans [parts of printing presses]; Ejectors; Manifold (Exhaust -) for engines; Exhausts for motors and engines; Extractors for mines; Sausage machines; Stone working machines; Compressed air machines; Compressors for refrigerators; Condensing installations; Condensers [steam] [parts of machines]; Conveyors [machines]; Steelworks (Converters for -); Electric blenders; Bookbinding apparatus and machines for industrial purposes; Electric can openers; Churns; Anti-pollution devices for motors and engines; Wine presses; Trueing machines; Grindstones [parts of machines]; Cord making machines; Knitting machines; Earth moving machines; Forge bellows; Swaging machines; Central vacuum cleaning installations; Cultivators [machines]; Couplings other than for land vehicles; Flues for engine boilers; Pedal drives for sewing machines; Power saws; Thermic lances [machines]; Cutting blow pipes, gas-operated; Shovels, mechanical; Drain cocks; Pneumatic hammers; Air condensers; Air cushion devices for moving loads; Aerating pumps for aquaria; Air condensers; Air pumps [garage installations]; De-aerators for feedwater; Plunger pistons; Tilt hammers; Air suction machines; Lift belts; Punching machines; High pressure washers; Flour mill machines; Millstones; Mangles; Milling machines; Reels, mechanical, for flexible hoses; Reeling apparatus, mechanical; Hand-held tools, other than hand-operated; Propulsion mechanisms other than for land vehicles; Drilling rigs, floating or non-floating; Threading machines; Whitewashing machines; Agricultural implements other than hand-operated; Agricultural elevators; Agricultural machines; Embossing machines; Mixers [machines]; Grain separators; Washing machines; Washing installations for vehicles; Washing machines for crockery; Washing machines; Coin-operated washing machines; Hoods [parts of machines]; Cylinders for machines; Air cushion vehicles (Engines for -); Motors, other than for land vehicles; Aeronautical engines; Motorized cultivators; Sidewalks [moving pavements]; Escalators; Electrical apparatus for sealing plastics [packaging]; Machines for processing plastics; Tables for machines; Clippers [machines]; Hair clipping machines for animals; Scissors, electric; Reducers (Pressure -) [parts of machines]; Pressure regulators [parts of machines]; Printing machines; Printing machines for use on sheet metal; Printing rollers for machines; Matrices for use in printing; Typographic presses; Printing presses; Printing rollers for machines; Printing plates; Pressure valves [parts of machines]; Loom shafts; Rinsing machines; Oil refining machines; Lubricators [parts of machines]; Scissors, electric; Foundry machines; Moulds [parts of machines]; Mills [machines]; Reels [parts of machines]; Reels for weaving looms; Connecting rods for machines, motors and engines; Sorting machines for industry; Bottle stoppering machines; Bottle stoppering machines; Bottle washing machines; Bottling machines; Bottle sealing machines; Paper production machines; Paper production machines; Paper feeders [printing]; Parquet wax-polishers, electric; Kick starters for motorcycles; Stropping machines; Blades [parts of machines]; Blade holders [parts of machines]; Guns [tools using explosives]; Pneumatic transporters; Pneumatic controls for machines, motors and engines; Dust exhausting installations for cleaning purposes; Carburetter feeders; Carburettors; Spraying machines; Vacuum cleaner attachments for disseminating perfumes and disinfectants; Vacuum cleaners; Dust exhausting installations for cleaning purposes; Compressed air machines; Compressed air engines; Compressed air pumps; Pumps [parts of machines, engines or motors]; Glue guns, electric; Adhesive tape dispensers [machines]; Loading ramps; Aeronautical engines; Coalcutting machines; Turf removing ploughs; Robots [machines]; Spinning wheels; Peeling machines; Sifters; Rotary steam presses, portable, for fabrics; Springs [parts of machines]; Presses [machines for industrial purposes]; Shaping and moulding machines; Speed governors for machines, engines and motors; Gear boxes other than for land vehicles; Finishing machines; Smoothing presses; Beaters, electric; Rail-laying machines; Beer (Apparatus for drawing up - under pressure); Brewing machines; Beer pumps; Darning machines; Jet engines other than for land vehicles; Compressed air guns for the extrusion of mastics; Freewheels other than for land vehicles; Regulators [parts of machines]; Belts for conveyors; Trussing apparatus for hay; Chaff cutters; Machines for making pasta; Spin driers [not heated]; Stalk separators [machines]; Satinizing machines; Chaff cutter blades; Riveting machines; Hemming machines; Valves [parts of machines]; Cutters [machines]; Wind turbines; Garbage disposal machines; Tedding machines; Carbon brushes [electricity]; Sewage pulverizers; Aerated beverage-making machines; Aerated water making apparatus; Separators; Dividing machines; Fittings for engine boilers; Machine tools; Tools [parts of machines]; Belts for machines; Dyeing machines; Alternators; Sieves [machines or parts of machines]; Pumps; Pumps for heating installations; Pumps [machines]; Pump diaphragms; Teat cups for milking machines; Suction machines for industrial purposes; Wine presses; Machines and apparatus for carpet shampooing, electric; Looms; Hosiery looms; Stereotype machines; Filtering machines; Filters [parts of machines or engines]; Filters for cleaning cooling air, for engines; Filter presses; Expansion tanks [parts of machines]; Fodder presses; Mine borers; Adhesive bands for pulleys; Feedwater regulators; Hoists for freight; Dairy machines; Cream/milk separators; Rotary printing presses; Journals [parts of machines]; Axles for machines; Couplings other than for land vehicles; Shaft couplings [machines]; Racket stringing machines; Machines for the textile industry; Typographic machines; Cleaning (Machines and apparatus for -), electric; Cleaning appliances utilizing steam; Incubators for eggs; Chucks [parts of machines]; Housings [parts of machines]; Filling machines; Stuffing boxes [parts of machines]; Superheaters; Turbines other than for land vehicles; Turbocompressors; Punches for punching machines; Stitching machines; Road making machines; Road rollers; Sweeping machines (Road -) [self-propelled]; Glass working machines; Glaziers' diamonds [parts of machines]; Fuel dispensing pumps for service stations; Fuel conversion apparatus for internal combustion engines; Fuel economisers for motors and engines; Trimming machines; Cutters [machines]; Butter machines; Pumps (Vacuum -) [machines]; Sewing machines; Ironing machines; Railroad constructing machines; Machines and apparatus for wax-polishing, electric; Carriage aprons; Electromechanical machines for chemical industry; Fans for motors and engines; Beating machines; Chisels for machines; Shuttles [parts of machines]; Sowers [machines]; Guides for machines; Control cables for machines, engines or motors; Control mechanisms for machines, engines or motors; Vibrators [machines] for industrial use; Water heaters [parts of machines]; Drainage machines; Hydraulic turbines; Vulcanisation apparatus; Grating machines for vegetables; Vacuum cleaner bags; Degreasers [machines]; Rings (Grease -) [parts of machines]; Grease boxes [parts of machines]; Shredders [machines] for industrial use; Crushing machines.

Class 8: Hand tools and implements (hand-operated); Cutlery; Side arms; Razors; Carpenters' augers; Livestock marking tools; Animal shearing implements; Instruments and tools for skinning animals; Money scoops; Awls; Spades; Diggers [hand tools]; Adzes [tools]; Branding irons; Stamps [hand tools]; Embossers [hand tools]; Thistle extirpators [hand tools]; Implements for decanting liquids [hand tools]; Cuticle nippers; Leather strops; Razors; Shaving cases; Razor blades; Razor cases; Marline spikes; Lasts [shoemakers' hand tools]; Pickaxes; Picks [hand tools]; Screwdrivers; Spanners; Dies [hand tools]; Augers [hand tools]; Pliers; Emery grinding wheels; Emery files; Tube cutting instruments; Tube cutters [hand tools]; Sugar tongs; Nutcrackers; Earth rammers [hand tools]; Rammers [hand tools]; Bludgeons; Reamers; Metal wire stretchers [hand tools]; Wire strippers [hand tools]; Sharpening instruments; Wheels (Sharpening -) [hand tools]; Levers; Crow bars; Cutlery; Table cutlery [knives, forks and spoons]; Silver plate [knives, forks and spoons]; Mallets [hand instruments]; Syringes for spraying insecticides; Broadaxes; Whetstone holders; Bushhammers; Paring knives; Paring irons [hand tools]; Gimlets [hand tools]; Stropping instruments; Stropping instruments; Leather strops; Tweezers; Pliers; Molding irons; Fireplace bellows [hand tools]; Ear-piercing apparatus; Lawn clippers [hand instruments]; Saws [hand tools]; Saw holders; Saw blades [parts of hand tools]; Augers [hand tools]; Drills; Reamer sockets; Cutter bars; Bits [parts of hand tools]; Pruning knives; Tree pruners; Hackles [hand tools]; Rakes [hand tools]; Mitre boxes [hand tools]; Engraving needles; Planes; Plane irons; Diamonds (Glaziers' -) [parts of hand tools]; Wick trimmers [scissors]; Weeding forks [hand tools]; Hoes [hand tools]; Priming irons [hand tools]; Fruit pickers [hand tools]; Annular screw plates; Hair clippers for personal use, electric and non-electric; Crimping irons; Harpoons for fishing; Cleavers; Sand trap rakes; Gouges [hand tools]; Holing axes; Fullers [hand tools]; Mortise chisels; Rabbeting planes; Blades for planes; Extension pieces for braces for screwtaps; Meat choppers [hand tools]; Scraping tools [hand tools]; Choppers [knives]; Mattocks; Bow saws; Ice picks; Bill-hooks; Hoop cutters [hand tools]; Hammers [hand tools]; Spoons; Sword scabbards; Swords; Scythe rings; Scythes; Whetstones; Frames for handsaws; Border shears; Garden tools, hand-operated; Knives; Plant parasite killing apparatus; Trowels [gardening]; Lifting jacks, hand-operated; Hand drills [hand tools]; Hand implements for hair curling; Abrading instruments [hand instruments]; Hand tools, hand-operated; Guns, hand-operated, for the extrusion of mastics; Hainault scythes; Tin openers, non-electric; Braiders [hand tools]; Nail clippers; Nail buffers, electric or non-electric; Nail files; Nail files, electric; Nail clippers, electric or non-electric; Sharpening stones; Masons' hammers; Masons' hammers; Shovels [hand tools]; Jig-saws; Knuckle dusters; Punch pliers [hand tools]; Punch pliers [hand tools]; Pin punches; Centre punches [hand tools]; Machetes; Manicure sets; Manicure sets, electric; Milling cutters [hand tools]; Breast drills; Drill holders [hand tools]; Spanners; Taps [hand tools]; Tickets (Instruments for punching -); Spoons; Draw wires [hand tools]; Pruning scissors; Agricultural implements, hand-operated; Chisels; Hair clippers for animals [hand instruments]; Shearers [hand instruments]; Shear blades; Rams [hand tools]; Scissors; Grafting tools [hand tools]; Foundry ladles [hand tools]; Ladles [hand tools]; Goffering irons; Oyster openers; Palette knives; Farriers' knives; Pedicure sets; Blade sharpening instruments; Blades [weapons]; Blades [hand tools]; Scaling knives; Fire irons; Guns [hand tools]; Pizza cutters, non-electric; Sledgehammers; Hand pumps; Cutting bars; Files [tools]; Rasps [hand tools]; Ratchets [hand tools]; Vaporizers (Insecticide -) [hand tools]; Cheese slicers, non-electric; Hainault scythes; Vices; Glazing irons; Spatulas [hand tools]; Curling tongs; Sabres; Beard clippers; Numbering punches; Riveters [hand tools]; Punches [hand tools]; Nail punches; Riveting hammers [hand tools]; Hatchets; Eyelash curlers; Budding knives; Tool belts [holders]; Harpoons; Nail drawers [hand tools]; Nail extractors; Squares [hand tools]; Ditchers [hand tools]; Clamps for carpenters or coopers; Hair-removing tweezers; Depilation appliances, electric and non-electric; Bayonets; Expanders [hand tools]; Cattle stunning apparatus; Tattooing (Apparatus for -); Egg slicers, non-electric; Borers; Caulking irons; Daggers; Mortars for pounding; Threaders; Needle files; Hollowing bits [parts of hand tools]; Hunting knives; Apparatus and instruments for skinning butcher's animals; Slaughtering butchers' animals (Apparatus and instruments for -); Cutting tools [hand tools]; Side arms; Cutters; Edge tools [hand tools]; Scrapers [hand tools]; Trowels; Fulling tools [hand tools]; Flat irons; Irons [non-electric hand tools]; Pruning shears; Shears; Graving tools [hand tools]; Forks; Table forks; Drawing knives; Vegetable shredders; Vegetable choppers; Pen knives.

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 7

The contested machines and machine tools are identically covered by the earlier mark.

The contested motors and engines (except for land vehicles) are included in the broad category of the opponent’s motors and engines. Therefore, they are considered identical.

The contested acetylene cleaning apparatus; aerators; agitators; handling apparatus for loading and unloading; domestic crushers/grinders, electric; generators of electricity; generators of electricity; mowing and reaping machines; reapers and binders; derricks; mineral water making machines; bitumen making machines; automatic grapnels for marine purposes; mineworking machines; stamping machines; concrete mixers [machines]; typecasting machines; type-setting machines [printing]; friezing machines; leather-working machines; pepper mills other than hand-operated; leather paring machines; earth moving machines; packaging machines; centrifugal machines; centrifugal mills; centrifugal pumps; cigarette machines for industrial purposes; labellers [machines]; shoe polishers, electric; heel-making machines; nut-tapping machines; threshing machines; lace making machines; packaging machines; packaging machines; sealing machines for industrial purposes; winches; capstans; sugar making machines; kneading machines; mills for household purposes, other than hand-operated; cranes [lifting and hoisting apparatus]; disintegrators; tobacco processing machines; die-stamping machines; rams [machines]; metal drawing machines; electric welding apparatus; food preparation machines, electromechanical; sharpening machines; lifting apparatus; lifting apparatus; elevators [lifts]; jacks [machines]; sizing machines; ore treating machines; lathes; mechanized livestock feeders; earth moving machines; wringing machines for laundry; woodworking machines; potters' wheels; milking machines; superchargers; elevators [lifts]; elevator operating apparatus; machines for metal processing; machines and apparatus for polishing [electric]; type-setting machines [photocomposition]; spray guns for paint; air brushes for applying colour; painting machines; earth moving machines; spinning machines; spinning machines; electric welding apparatus; welding apparatus, gas-operated; soldering lamps; soldering blow pipes, gas-operated; electric welding apparatus; gas welding machines; curtain drawing devices, electrically operated; lawn mowers; saws [machines]; drilling machines; drills (electric hand -); blowing machines; blowing machines; fans for the compression, sucking and carrying of grain; blowing machines for the compression, exhaustion and transport of gases; grain husking machines; galvanizing machines; electroplating machines; hoppers [mechanical discharging]; power hammers; raking machines; steam/oil separators; steam traps; steam engine boilers; engraving machines; planing machines; weeding machines; fruit presses, electric, for household purposes; whisks, electric, for household purposes; bending machines; belts for motors and engines; hauling machines (net -) [fishing]; peeling machines; cinder sifters [machines]; food processors, electric; electric welding apparatus; gas-operated blow torches; rolling mills; paring machines; notchers [machine tools]; trash compacting machines; meat choppers [machines]; fleshing machines; handling machines, automatic [manipulators]; mud catchers and collectors [machines]; beverage preparation machines, electromechanical; electric arc welding apparatus; electric arc cutting apparatus; lifts for use with vehicles; braiding machines; electric hammers; hammers [parts of machines]; carding machines; mowing and reaping machines; tarring machines; puddling machines; coffee grinders, other than hand-operated; brushes, electrically operated [parts of machines]; lubricating pumps; bread cutting machines; bicycle assembling machines; bicycle dynamos; electric knives; sheaf-binding machines; mixing machines; blenders, electric, for household purposes; ejectors; extractors for mines; sausage machines; stone working machines; compressed air machines; compressors for refrigerators; condensing installations; conveyors [machines]; steelworks (converters for -); electric blenders; bookbinding apparatus and machines for industrial purposes; electric can openers; churns; trueing machines; grindstones [parts of machines]; cord making machines; knitting machines; earth moving machines; forge bellows; swaging machines; central vacuum cleaning installations; cultivators [machines]; power saws; thermic lances [machines]; cutting blow pipes, gas-operated; drain cocks; pneumatic hammers; air condensers; air cushion devices for moving loads; aerating pumps for aquaria; air condensers; air pumps [garage installations]; de-aerators for feedwater; tilt hammers; air suction machines; lift belts; punching machines; high pressure washers; flour mill machines; mangles; milling machines; reeling apparatus, mechanical; hand-held tools, drilling rigs, floating or non-floating; threading machines; whitewashing machines; embossing machines; mixers [machines]; grain separators; washing machines; washing installations for vehicles; washing machines for crockery; washing machines; coin-operated washing machines; motorized cultivators; escalators; electrical apparatus for sealing plastics [packaging]; machines for processing plastics; clippers [machines]; hair clipping machines for animals; scissors, electric; printing machines; printing machines for use on sheet metal; matrices for use in printing; typographic presses; printing presses; rinsing machines; oil refining machines; scissors, electric; foundry machines; mills [machines]; sorting machines for industry; bottle stoppering machines; bottle stoppering machines; bottle washing machines; bottling machines; bottle sealing machines; paper production machines; paper production machines; paper feeders [printing]; parquet wax-polishers, electric; stropping machines; blades [parts of machines]; guns [tools using explosives]; dust exhausting installations for cleaning purposes; spraying machines; vacuum cleaners; dust exhausting installations for cleaning purposes; compressed air machines; compressed air pumps; glue guns, electric; adhesive tape dispensers [machines]; loading ramps; coalcutting machines; robots [machines]; spinning wheels; peeling machines; sifters; rotary steam presses, portable, for fabrics; presses [machines for industrial purposes]; shaping and moulding machines; finishing machines; smoothing presses; beaters, electric; rail-laying machines; beer (apparatus for drawing up - under pressure); brewing machines; beer pumps; darning machines; compressed air guns for the extrusion of mastics; freewheels other than for land vehicles; machines for making pasta; spin driers [not heated]; stalk separators [machines]; satinizing machines; riveting machines; hemming machines; cutters [machines]; wind turbines; garbage disposal machines; tedding machines; carbon brushes [electricity]; sewage pulverizers; aerated beverage-making machines; aerated water making apparatus; separators; dividing machines; machine tools; tools [parts of machines]; dyeing machines; sieves [machines or parts of machines]; pumps; pumps for heating installations; pumps [machines]; suction machines for industrial purposes; machines and apparatus for carpet shampooing, electric; looms; hosiery looms; stereotype machines; filtering machines; filter presses; fodder presses; mine borers; feedwater regulators; hoists for freight; dairy machines; cream/milk separators; rotary printing presses; racket stringing machines; machines for the textile industry; typographic machines; cleaning (machines and apparatus for -), electric; cleaning appliances utilizing steam; filling machines; superheaters; turbocompressors; punches for punching machines; stitching machines; road making machines; road rollers; sweeping machines (road -) [self-propelled]; glass working machines; trimming machines; cutters [machines]; butter machines; pumps (vacuum -) [machines]; sewing machines; ironing machines; railroad constructing machines; machines and apparatus for wax-polishing, electric; electromechanical machines for chemical industry; beating machines; chisels for machines; sowers [machines]; vibrators [machines] for industrial use; drainage machines; hydraulic turbines; vulcanisation apparatus; grating machines for vegetables; degreasers [machines]; shredders [machines] for industrial use; crushing machines fall under the general term of the opponent’s machines and machine tools. Therefore, they are considered identical.

The contested emergency power generators; engines for boats; dynamos; motors, electric, other than for land vehicles; steam engines; engines for boats; driving motors other than for land vehicles; hydraulic engines and motors; anti-pollution devices for motors and engines; propulsion mechanisms other than for land vehicles; air cushion vehicles (engines for -); motors, other than for land vehicles; aeronautical engines; carburettors; compressed air engines; aeronautical engines; gear boxes other than for land vehicles; jet engines other than for land vehicles; alternators; turbines other than for land vehicles; fuel dispensing pumps for service stations fall under the general term of the opponent’s motors and engines. Therefore, they are considered identical.

The contested automatic vending machines; vending machines fall under the general term of the opponent’s machines. Therefore, they are considered identical.

The contested agricultural implements other than hand-operated; harvesting machines; ditchers [ploughs]; harrows; ploughs; ploughshares; winnowers; snow ploughs; wine presses; shovels, mechanical; agricultural implements other than hand-operated; agricultural elevators; agricultural machines; turf removing ploughs; trussing apparatus for hay; chaff cutters; chaff cutter blades; wine presses are agricultural implements other than hand-operated, are all machines and implements used predominantly in the agricultural sector. These goods are identical to the opponent’s machines and machine tools.

The contested feeding apparatus for engine boilers; feeders [parts of machines]; hydraulic door openers and closers [parts of machines]; pneumatic door openers and closers [parts of machines]; door openers, electric; door closers, electric; stators [parts of machines]; knives for mowing machines; injectors for engines; holding devices for machine tools; cartridges for filtering machines; taps [parts of machines, engines or motors]; clack valves [parts of machines]; vacuum cleaner hoses; drums [parts of machines]; boxes for matrices [printing]; piston rings; pistons [parts of machines or engines]; pistons for cylinders; pistons for engines; fan belts for motors and engines; inking apparatus for printing machines; rack and pinion jacks; boiler tubes [parts of machines]; hangers [parts of machines]; saw benches [parts of machines]; saw blades [parts of machines]; drilling heads [parts of machines]; drilling bits [parts of machines]; drill chucks [parts of machines]; stands for machines; machine fly-wheels; rakes for raking machines; igniting devices for internal combustion engines; sparking plugs for internal combustion engines; igniting magnetos; electrodes for welding machines; cylinders for motors and engines; cylinder heads for engines; hydraulic controls for machines, motors and engines; heat exchangers [parts of machines]; starters for motors and engines; glow plugs for diesel engines; shoe lasts [parts of machines]; card clothing [parts of carding machines]; catalytic converters; machine boiler scale collectors; brushes [parts of machines]; tambours for embroidery machines; knives [parts of machines]; slide rests [parts of machines]; tympans [parts of printing presses]; exhausts for motors and engines; manifold (exhaust -) for engines; condensers [steam] [parts of machines]; flues for engine boilers; plunger pistons; millstones; reels, mechanical, for flexible hoses; hoods [parts of machines]; cylinders for machines; tables for machines; reducers (pressure -) [parts of machines]; pressure regulators [parts of machines]; printing plates; pressure valves [parts of machines]; loom shafts; lubricators [parts of machines]; moulds [parts of machines]; reels [parts of machines]; reels for weaving looms; kick starters for motorcycles; blade holders [parts of machines]; pneumatic controls for machines, motors and engines; carburetter feeders; vacuum cleaner attachments for disseminating perfumes and disinfectants; pumps [parts of machines, engines or motors]; springs [parts of machines]; regulators [parts of machines]; valves [parts of machines]; fittings for engine boilers; pump diaphragms; teat cups for milking machines; filters [parts of machines or engines]; filters for cleaning cooling air, for engines; expansion tanks [parts of machines]; chucks [parts of machines]; housings [parts of machines]; stuffing boxes [parts of machines]; glaziers' diamonds [parts of machines]; fuel conversion apparatus for internal combustion engines; fuel economisers for motors and engines; fans for motors and engines; shuttles [parts of machines]; guides for machines; control cables for machines, engines or motors; control mechanisms for machines, engines or motors; water heaters [parts of machines]; vacuum cleaner bags; rings (grease -) [parts of machines]; grease boxes [parts of machines]; silencers for motors and engines; carriages for knitting machines are all parts of machines and engines. They are considered similar to the opponent’s machines and engines (except for land vehicles) as they are often produced and/or sold by the same undertaking that manufactures the final good and target the same purchasing public. Depending on the good concerned, the public may expects the component to be produced by, or under the control of, the ‘original’ manufacturer. They coincide in end users and are complementary. Therefore, these goods are similar.

The contested machine coupling and transmission components (except for land vehicles); journal boxes [parts of machines]; transmissions for machines; transmissions, other than for land vehicles; bearings [parts of machines]; self-oiling bearings; bearings for transmission shafts; bearing brackets for machines; joints [parts of engines]; pulleys [parts of machines]; pulleys; pneumatic tube conveyors; dynamo brushes; dynamo belts; brake linings other than for vehicles; brake linings other than for vehicles; brake segments other than for vehicles; brake shoes other than for vehicles; elevator chains [parts of machines]; reduction gears other than for land vehicles; crankcases for machines, motors and engines; cranks [parts of machines]; crank shafts; ball rings for bearings; ball-bearings; anti-friction bearings for machines; roller bridges; bearings; transmission chains other than for land vehicles; driving chains other than for land vehicles; gears, other than for land vehicles; gears for weaving looms; rolling mill cylinders; belts for conveyors; torque converters other than for land vehicles; universal joints [cardan joints]; transmission shafts, other than for land vehicles; machine wheels; machine wheelwork; couplings other than for land vehicles; pedal drives for sewing machines; sidewalks [moving pavements]; printing rollers for machines; printing rollers for machines; connecting rods for machines, motors and engines; pneumatic transporters; speed governors for machines, engines and motors; belts for conveyors; belts for machines; adhesive bands for pulleys; journals [parts of machines]; axles for machines; couplings other than for land vehicles; shaft couplings [machines]; carriage aprons; radiators [cooling] for motors and engines are specific devices used to connect two shafts together to transmit power. They are parts of machines, motors and engines. They are considered similar to the opponent’s machines and engines (except for land vehicles) as they are often produced and/or sold by the same undertaking that manufactures the final good and target the same purchasing public. Depending on the good concerned, the public may expects the component to be produced by, or under the control of, the ‘original’ manufacturer. They coincide in end users and are complementary. Therefore, these goods are similar.

The contested incubators for eggs; incubators for eggs are devices for keeping birds' eggs at the correct temperature to allow young birds to develop until they break out of the shell. They have a different nature and purpose from the opponent’s goods in Classes 6 (mainly metals and small and big goods made of these materials), 7 (mainly machines and machine tools, motors and engines), 9 (mainly scientific, optical, signalling, checking, weighing and measuring apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; computer software) and 11 (mainly equipment for heating, cooking and domestic use around the home). Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

Contested goods in Class 8

The contested hand tools and implements (hand-operated) constitute a broad category which includes several types of tools for material processing and their parts and fittings. The contested cutlery refers to implements used for eating and cutting, such as knives, forks, and spoons. The contested side arms refer to bladed or pointed implements such as axes, knives and swords purported to injure or kill. The contested razors are implements with sharp blades, used for shaving. The contested bits [parts of hand tools]; blades for planes; extension pieces for braces for screwtaps; frames for handsaws; glaziers’ diamonds [parts of hand tools]; hollowing bits [parts of hand tools]; razor cases; saw blades [parts of hand tools]; saw holders; shaving cases; shear blades; sword scabbards; tool belts [holders] are parts and accessories for hand tool or razors. The following contested goods fall under one or the other of the previously mentioned general terms:

Carpenters' augers; livestock marking tools; animal shearing implements; instruments and tools for skinning animals; money scoops; awls; spades; diggers [hand tools]; adzes [tools]; branding irons; stamps [hand tools]; embossers [hand tools]; thistle extirpators [hand tools]; implements for decanting liquids [hand tools]; cuticle nippers; leather strops; razor blades; marline spikes; lasts [shoemakers' hand tools]; pickaxes; picks [hand tools]; screwdrivers; spanners; dies [hand tools]; augers [hand tools]; pliers; emery grinding wheels; emery files; tube cutting instruments; tube cutters [hand tools]; sugar tongs; nutcrackers; earth rammers [hand tools]; rammers [hand tools]; bludgeons; reamers; metal wire stretchers [hand tools]; wire strippers [hand tools]; sharpening instruments; wheels (sharpening -) [hand tools]; levers; crow bars; table cutlery [knives, forks and spoons]; silver plate [knives, forks and spoons]; mallets [hand instruments]; syringes for spraying insecticides; broadaxes; whetstone holders; bushhammers; paring knives; paring irons [hand tools]; gimlets [hand tools]; stropping instruments; stropping instruments; leather strops; tweezers; pliers; molding irons; fireplace bellows [hand tools]; ear-piercing apparatus; lawn clippers [hand instruments]; saws [hand tools]; augers [hand tools]; drills; reamer sockets; cutter bars; pruning knives; tree pruners; hackles [hand tools]; rakes [hand tools]; mitre boxes [hand tools]; engraving needles; planes; plane irons; wick trimmers [scissors]; weeding forks [hand tools]; hoes [hand tools]; priming irons [hand tools]; fruit pickers [hand tools]; annular screw plates; hair clippers for personal use, electric and non-electric; crimping irons; harpoons for fishing; cleavers; sand trap rakes; gouges [hand tools]; holing axes; fullers [hand tools]; mortise chisels; rabbeting planes; meat choppers [hand tools]; scraping tools [hand tools]; choppers [knives]; mattocks; bow saws; ice picks; bill-hooks; hoop cutters [hand tools]; hammers [hand tools]; spoons; swords; scythe rings; scythes; whetstones; border shears; garden tools, hand-operated; knives; plant parasite killing apparatus; trowels [gardening]; lifting jacks, hand-operated; hand drills [hand tools]; hand implements for hair curling; abrading instruments [hand instruments]; guns, hand-operated, for the extrusion of mastics; hainault scythes; tin openers, non-electric; braiders [hand tools]; nail clippers; nail buffers, electric or non-electric; nail files; nail files, electric; nail clippers, electric or non-electric; sharpening stones; masons' hammers; masons' hammers; shovels [hand tools]; jig-saws; knuckle dusters; punch pliers [hand tools]; punch pliers [hand tools]; pin punches; centre punches [hand tools]; machetes; manicure sets; manicure sets, electric; milling cutters [hand tools]; breast drills; drill holders [hand tools]; spanners; taps [hand tools]; tickets (instruments for punching -); spoons; draw wires [hand tools]; pruning scissors; agricultural implements, hand-operated; chisels; hair clippers for animals [hand instruments]; shearers [hand instruments]; rams [hand tools]; scissors; grafting tools [hand tools]; foundry ladles [hand tools]; ladles [hand tools]; goffering irons; oyster openers; palette knives; farriers' knives; pedicure sets; blade sharpening instruments; blades [weapons]; blades [hand tools]; scaling knives; fire irons; guns [hand tools]; pizza cutters, non-electric; sledgehammers; hand pumps; cutting bars; files [tools]; rasps [hand tools]; ratchets [hand tools]; vaporizers (insecticide -) [hand tools]; cheese slicers, non-electric; hainault scythes; vices; glazing irons; spatulas [hand tools]; curling tongs; sabres; beard clippers; numbering punches; riveters [hand tools]; punches [hand tools]; nail punches; riveting hammers [hand tools]; hatchets; eyelash curlers; budding knives; harpoons; nail drawers [hand tools]; nail extractors; squares [hand tools]; ditchers [hand tools]; clamps for carpenters or coopers; hair-removing tweezers; depilation appliances, electric and non-electric; bayonets; expanders [hand tools]; cattle stunning apparatus; tattooing (apparatus for -); egg slicers, non-electric; borers; caulking irons; daggers; mortars for pounding; threaders; needle files; hunting knives; apparatus and instruments for skinning butcher's animals; slaughtering butchers' animals (apparatus and instruments for -); cutting tools [hand tools]; cutters; edge tools [hand tools]; scrapers [hand tools]; trowels; fulling tools [hand tools]; flat irons; irons [non-electric hand tools]; pruning shears; shears; graving tools [hand tools]; forks; table forks; drawing knives; vegetable shredders; vegetable choppers; pen knives.

All these goods in Class 8 have a different nature and purpose from the opponent’s goods in Classes 6 (mainly metals and small and big goods made of these materials), 7 (mainly machines and machine tools, motors and engines), 9 (mainly scientific, optical, signalling, checking, weighing and measuring apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; computer software) and 11 (mainly equipment for heating, cooking and domestic use around the home). Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

The earlier sign is a figurative mark composed of the letters ‘OR’ in a black standard sans serif typeface, which are inserted in a black ellipse.

The contested sign is a figurative mark composed of several elements. In the centre are the letters ‘OR’ in a red serif typeface, which are inserted in a red, elongated oval. The centre of the letter ‘O’ resembles a rack-wheel. Above is a very similar element with the very same shape, which only differs in dashed black lines instead of the red coloured lines. Between these two figurative elements are the words ‘DESIGNED LOGO’ in a small typeface. At the bottom is a table containing the word ‘COLOUR’, a red square and the words ‘TYPE OF LETTER’ on the left and the information ‘Pantone 485C’, ‘C0%’, ‘M100%’, ‘Y100%’, ‘K0%’, ‘R237%’, ‘G28%’, ‘B36%’, ‘Rockwell Bold’, ‘abcdefghijklmnoprstuvxyz’, ‘ABCDEFGHIJKLMNOPRSTUVXYZ’, ‘1234567890’ on the right.

The Opposition Division notes that the contested sign will be treated as a whole as depicted above, as this is the information inserted in the mark text field in the application.

Visually, the signs are similar to the extent that they coincide in the letters ‘OR’ in a oval element, although the letters and oval are depicted in different colour and/or typeface and the oval is more elongated in the contested sign. The marks differ in the other verbal and figurative elements of the contested sign described in more detail in the paragraph above.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OR’ present identically in both signs, and to that extent the signs are aurally similar. The other numerous verbal elements of the contested sign are depicted in much smaller size, so that they will probably not be pronounced. In case they would, the pronunciation of the signs differs in the sound of these words, letters and/or numbers, namely ‘DESIGNED LOGO’, ‘COLOUR’, ‘TYPE OF LETTER’, ‘Pantone 485C’, ‘C0%’, ‘M100%’, ‘Y100%’, ‘K0%’, ‘R237%’, ‘G28%’, ‘B36%’, ‘Rockwell Bold’, ‘abcdefghijklmnoprstuvxyz’, ‘ABCDEFGHIJKLMNOPRSTUVXYZ’ and/or ‘1234567890’, which have no counterparts in the earlier sign.

Conceptually, the word ‘Pantone’ followed by ‘485C’, contained in the contested sign, will be perceived as a reference to a specific colour shade of the Pantone system for matching colors. The verbal elements ‘C0%’, ‘M100%’, ‘Y100%’, ‘K0%’, ‘R237%’, ‘G28%’, ‘B36%’ will be perceived as a further specification of the colour used. The words ‘‘Rockwell Bold’ might be recognized as a specific typeface. The following letters and numbers, namely ‘abcdefghijklmnoprstuvxyz’, ‘ABCDEFGHIJKLMNOPRSTUVXYZ’ and ‘1234567890’ represent all the letters of the alphabet in upper and lower case and all the numbers. The centre of the letter ‘O’ of the contested sign resembles a rack-wheel. The red coloured square will be perceived as such. The letter combination ‘OR’ in both signs, the words ‘DESIGNED LOGO’, ‘COLOUR’ and ‘TYPE OF LETTER’ in the contested sign have no meaning in Italian. As the earlier mark is perceived as totally meaningless, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The verbal element ‘Pantone 485C’, of the contested sign will be perceived as a reference to a specific colour shade of the Pantone system for matching colors. The verbal elements ‘C0%’, ‘M100%’, ‘Y100%’, ‘K0%’, ‘R237%’, ‘G28%’, ‘B36%’ will be understood as a further specification of the colour used. The words ‘‘Rockwell Bold’ might be recognized as a specific typeface. The following letters and numbers, namely ‘abcdefghijklmnoprstuvxyz’, ‘ABCDEFGHIJKLMNOPRSTUVXYZ’ and ‘1234567890’ represent all the letters of the alphabet in upper and lower case and all the numbers. Bearing in mind that type-setting machines [printing]; labellers [machines]; spray guns for paint; air brushes for applying colour; painting machines; engraving machines; printing machines; printing machines for use on sheet metal; matrices for use in printing; typographic presses; printing presses; spraying machines; typographic machines; stitching machines; sewing machines; tympans [parts of printing presses]; printing plates are machines, machine tools or parts which might bear an indication to a colour or typeface used for printing, painting, etc. it is considered that these elements are weak for these goods. The public understands the meaning of these elements and will not pay as much attention to them as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue. For the remaining goods these elements have an average degree of distinctiveness.

The centre of the letter ‘O’ of the contested sign resembles a rack-wheel. Bearing in mind that the relevant goods are machines and machine tools, motors and engines or their parts it is considered that this figurative element is weak for these goods. The public understands the meaning of the element and will not pay as much attention to it as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.

The red letters ‘OR’ in the oval in the contested sign are the dominant elements as they are the most eye‑catching due to their central position in relation to all other elements, due to their size in relation to the verbal elements below and due to the bold typeface in relation to the figurative element in black dashed lines.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a 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 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. 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, some the goods found to be identical or similar are directed at the public at large (e.g. mills for household purposes, other than hand-operated), while most of them are directed at a professional public in broad range of different sectors (e.g. mineworking machines in the mining industry, harvesting machines in the agricultural sector, bottling machines in industry). The degree of attention varies according to price, frequency of purchase, speciality of the goods. It is low for some goods, (e.g. for vacuum cleaner bags) average for others (e.g. machines for making pasta) and high for others (e.g. sweeping machines (road -) [self-propelled]).

6. Global assessment, other arguments and conclusion

The goods of the opposing signs have been found partly identical, partly similar and partly dissimilar. The distinctiveness of the earlier mark is average.

The signs are similar, insofar both contain the letters ‘OR’ in an oval element. This common element comprises the whole earlier mark and is clearly the visually dominant element of the contested mark. The minor differences (the colour, the typeface, the rack-wheel inside of the letters ‘OR’ in the contested sign and the more elongated oval in the contested mark) are not sufficient to outweigh the similarities. This is due to the principle that the word component usually has a stronger impact on the consumer than the figurative component, because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. The remaining elements of the contested sign (the element in dashed black lines, the elements ‘DESIGNED LOGO’, ‘COLOUR’, ‘TYPE OF LETTER’, ‘Pantone 485C’, ‘C0%’, ‘M100%’, ‘Y100%’, ‘K0%’, ‘R237%’, ‘G28%’, ‘B36%’, ‘Rockwell Bold’, ‘abcdefghijklmnoprstuvxyz’, ‘ABCDEFGHIJKLMNOPRSTUVXYZ’, ‘1234567890’ and the red square) are not eye-catching due to their size or their colours. Even in combination, all these differences are not sufficient to tell the trade marks apart.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Italian trade mark No 1 337 661.

It follows from the above 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 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on Community trade mark No 7 010 424 for the following figurative mark:

Since this mark is identical to earlier Italian trade mark No 1 337 661 and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Julia SCHRADER

Dorothée SCHLIEPHAKE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.