OPPOSITION No B 2 424 128

Am Group Redback AB, Sjöåkrav. 26, 56431 Bankeryd, Sweden (opponent), represented by Groth & Co. KB, P.O. Box 6107, 102 32 Stockholm, Sweden (professional representative)

a g a i n s t

Ningbo Ngp Industry Co. Ltd., Room 1001, Building A1, Liyuanshangdu, No. 203 Lantian Road, Ningbo City, Zhejiang Province, People’s Republic of China (applicant), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative).

On 28/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 424 128 is partially upheld, namely for the following contested goods:

Class 7: Internal combustion engines for boats; internal combustion engines for power generation; diesel engines not for land vehicles; gasoline engines not for land vehicles; alternators

2. Community trade mark application No 13 192 513 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 all the goods of Community trade mark application No 13 192 513. The opposition is based on Community trade mark registration No 10 270 346. The opponent invoked Articles 8(1)(a) and (b) CTMR.

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.

1. The goods

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

Class 7: Mufflers for automobiles and other apparatus, vehicle exhaust products and components for vehicle exhaust; catalytic converter units for vehicle exhausts; catalytic converters being parts of vehicle exhausts; catalytic converters for the exhaust gases of internal combustion engines; exhaust pipes for land vehicles; flexible exhaust pipes for land vehicles; exhaust silencers.

Class 12: Truck tires.

The contested goods are the following:

Class 7: Agricultural machines; harvesting machines; cultivators [machines]; lawnmowers [machines]; pulverisers [machines]; weeding machines; scarifiers [earth moving machines]; internal combustion engines for boats; internal combustion engines for power generation; diesel engines not for land vehicles; gasoline engines not for land vehicles; chain saws; electrical drills; grinders [machines]; alternators; centrifugal pumps; high pressure washers; vacuum cleaners.

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.

The contested internal combustion engines for boats; internal combustion engines for power generation; diesel engines not for land vehicles; gasoline engines not for land vehicles; alternators are similar to the opponent’s vehicle exhaust products and components for vehicle exhaust, as they can coincide in producers and end users. Furthermore, they are complementary.

The contested agricultural machines; harvesting machines; cultivators [machines]; lawnmowers [machines]; weeding machines are all machines used in agriculture. They are dissimilar to all the opponent’s goods. The mere fact that a product can be composed of several components does not establish an automatic similarity between the finished product and its parts (judgment of 27/10/2005, T‑336/03, ‘Mobilix’, paragraph 61). The conflicting goods do not coincide in purpose and method of use. Their producers, end users and distribution channels are different. Furthermore, they are neither complementary nor in competition.

The remaining contested goods, namely pulverisers [machines]; scarifiers [earth moving machines]; chain saws; electrical drills; grinders [machines]; centrifugal pumps; high pressure washers; vacuum cleaners, are all specific machines or devices that have particular purposes and methods of use. They are dissimilar to all the opponent’s goods. They are not usually expected to be manufactured by the same or related undertakings, they have different distribution channels and they are not complementary or in competition with each other.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the earlier mark is a figurative mark composed of the word ‘REDBACK’ written in standard upper case white letters against a black oval background framed by two lines, an inner white line and an outer red line, and, for a part of the public, the depiction of the shape of Australia will be recognised (see above). The contested sign is composed of the word ‘REDBACK’ written in standard upper case black letters. The signs are similar to the extent that they coincide in the word ‘REDBACK’. However, they differ in the figurative elements of the earlier mark and in the stylisation of the letters.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘REDBACK’, present identically in both signs, and therefore the signs are aurally identical.

Conceptually, a part of the public (such as the English-speaking part of the public) in the relevant territory will perceive the word ‘REDBACK’, contained in both signs, as ‘a highly venomous Australasian spider which is black with a bright red stripe down the back, closely related to the American black widow’ (information extracted from Oxford Dictionaries on 16/10/2015 at http://www.oxforddictionaries.com/definition/english/redback). For this part of the public, the signs are conceptually identical; the figurative element reinforces this finding

For the remaining part of the public (such as Spanish-, Italian- and French-speaking parts of the public), the word ‘REDBACK’ will not convey any meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

Taking into account the abovementioned visual, aural and, for a part of the public, conceptual 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 marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, 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, the goods found to be similar target business customers with specific professional knowledge or expertise. The degree of attention is high.

6. Global assessment, other arguments and conclusion

The goods are partly similar and partly dissimilar.

The signs are aurally identical. For a part of the public the signs are also conceptually identical and visually similar, since they coincide in the word ‘REDBACK’.

The earlier mark has a normal degree of distinctiveness and scope of trade mark protection because it has no meaning in relation to any of the goods in question from the perspective of the public in the relevant territory.

When a sign consists of both verbal and figurative components, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public will most readily refer to the signs by their verbal elements rather than by describing the figurative elements of the marks.

Therefore, the differences stemming from the figurative elements and stylisation of the letters do not outweigh the similarities between the signs. Consequently, the public could believe that the goods come from the same undertaking or from an economically linked undertaking.

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 Community trade mark registration No 10 270 346.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) CTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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 for only some 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

Rhys MORGAN

Hasan Oguzhan KARSLI

Eamonn KELLY

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.