OPPOSITION No B 2 601 626

Concord GmbH, Industriestr. 25, 95346 Stadtsteinach, Germany (opponent), represented by Morgades, Del Rio, Renter, S.L., Calle Rector Ubach 37-39, bajos 2ª, 08021 Barcelona, Spain (professional representative)

a g a i n s t

Magna Powertrain GmbH & Co KG, Industriestr. 35, 8502 Lannach, Austria (holder), represented by Gabriele Rausch, Heidehofstrasse 6, 70184 Stuttgart, Germany (professional representative).

On 27/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 601 626 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 402 821. The opposition is based on German trade mark registration No 39 646 650 and international trade mark registration designating Spain, the Czech Republic, Lithuania, Latvia, the United Kingdom, Estonia, Italy, Benelux, Sweden, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Hungary, Croatia, Greece, Finland and France No 880 814. The opponent invoked Article 8(1)(b) EUTMR.

ULTIMAX (international registration) ULTIMAX (German registration)
Earlier trade marks	Contested sign

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.

1. The goods and services

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

International trade mark registration No 880 814

Class 12: Safety seats for children (for vehicles).

German trade mark registration No 39 646 650

Class 12: Car seats for children.

After a limitation, the contested goods and services are the following:

Class 12: Parts and fittings for vehicles, namely rear axle modules, transfer cases, four-wheel drives, four-wheel drive products for longitudinal and transverse motors, mass balancing systems, transmission and clutch modules, clutch housings, shafts and toothed components, oil sumps, gearwheels, drives for auxiliary units, vacuum pumps, water pumps, transmission oil pumps, engine oil pumps.

Class 42: Utility vehicle development, drive train development, engineering in relation to vehicle construction.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

In addition, it should be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 12

The opponent’s safety seats for children (for vehicles) and car seats for children are synonyms and should be understood as seats that have been designed specifically to protect children from injury or death during car accidents. They are often referred to as ‘infant safety seats’, ‘child restraint systems’ or ‘restraining car seats’. Although German trade mark registration No 39 646 650 is registered for car seats for children, it should be presumed that these goods are intended to protect children from injury or death during car accidents. It is obvious that car seats for children have a protective purpose. Therefore, the goods at issue target the public at large, namely parents/drivers and have a specific purpose, namely to protect children from injury or death in car accidents.

The contested goods in Class 12 are specialised parts and fittings for vehicles. Therefore, the relevant public for these goods is composed of professionals, that is, mechanics and car manufacturers. The goods in question are subcategories of parts and fittings for vehicles, that is they are either parts of car engines or parts of elements installed in cars. As explained above, where the term ‘namely’ is used in the list of goods, it narrows the scope of protection of the contested sign to the precise list of goods, that is, rear axle modules, transfer cases, four-wheel drives, four-wheel drive products for longitudinal and transverse motors, mass balancing systems, transmission and clutch modules, clutch housings, shafts and toothed components, oil sumps, gearwheels, drives for auxiliary units, vacuum pumps, water pumps, transmission oil pumps and engine oil pumps. To give some examples of the meanings of these terms, a transfer case is ‘a transmission or gear set in an all-wheel drive vehicle that provides drive to the front shaft’ (information extracted from www.dictionaryofconstruction.com on 13/10/2016), an oil sump is ‘a chamber at the bottom of a machine, pump, circulation system, etc., into which a fluid drains before recirculation or in which wastes gather before disposal’ (information extracted from www.dictionaryofconstruction.com on 13/10/2016) and a gearwheel is ‘a wheel having teeth or cogs that engage with those of another wheel or part’ (information extracted from www.dictionaryofconstruction.com on 13/10/2016).

Therefore, the opponent’s goods have a specialised purpose not related in any apparent way to the contested goods. The goods under comparison have different natures and purposes, distribution channels, sales outlets, producers and methods of use. In addition, as indicated above, they target different relevant publics and are neither in competition with nor complementary to each other.

Therefore, the contested goods in Class 12 are considered dissimilar to the opponent’s goods in Class 12.

Contested services in Class 42

As explained above, the opponent’s goods are seats designed specifically to protect children from injury or death during car accidents, that is, safety seats for children (for vehicles) and car seats for children.

The contested services refer in general to engineering in relation to vehicles and their development. It should be noted that automotive engineering is a branch of vehicle engineering, incorporating elements of mechanical, electrical, electronic, software and safety engineering as applied to the design, manufacture and operation of motorcycles, automobiles and trucks and their engineering subsystems. Vehicle construction engineering is a broad category that might be divided into subcategories, such as safety engineering. However, automotive engineering, and even the subcategory safety engineering, is not related in any way to designing or producing safety seats for children (for vehicles) or car seats for children.

The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition.

Therefore, the services in question are dissimilar to the opponent’s goods in Class 12.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Christian RUUD

Michal KRUK

Vita VORONECKAITE

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.