OPPOSITION No B 2 720 285

MTM Motoren-Technik-Mayer GmbH, Dr.-Kurt-Schuhmacher-Ring 50, 85139 Wettstetten, Germany (opponent), represented by Raue LLP Rechtsanwälte Und Notare, Potsdamer Platz 1, 10785 Berlin, Germany (professional representative)

a g a i n s t

Jarosław Szpak, ul.Kamiennogórska 79, 54-033 Wrocław, Poland (applicant)

On 04/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 720 285 is partially upheld, namely for the following contested goods:

Class 7: Fuel pumps; engine fuel pumps; electrical pumps; pressure regulators [parts of machines]; pressure controllers [valves] being parts of machines; fuel injection pumps; fuel filters; filters being parts of machines; oil filters [machine parts]; sealing joints [parts of machines]; angle joints [parts of machines].

Class 12: Transmission components for land vehicles; hydraulic brake pressure regulators for vehicles; bushes for vehicles.

Class 17: Non-metallic couplings for pipes; tube junctions (non-metallic -); non-metallic couplings for tubes; pipe support sleeves [rubber]; sleeves of rubber for protecting parts of machines.

2. European Union trade mark application No 15 208 721 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 European Union trade mark application No 15 208 721, for the figurative mark , namely against all the goods in Classes 7, 12 and 17. The opposition is based on European Union trade mark registration No 3 617 552 for the word mark ‘mtm’ and German trade mark registration No 30 2008 001 468 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF THE GERMAN REGISTRATION NO 30 2008 001 468.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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 Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the German earlier trade mark No 30 2008 001 468 on which, inter alia, the opposition is based.

On 27/06/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit, after the cooling-off period had been extended, expired on 01/09/2018.

The opponent did not submit any evidence concerning the substantiation of the earlier national trade mark No 30 2008 001 468.

Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will 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) 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.

a) The goods and services

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

Class 9: Optical signalling and checking (supervision) apparatus and instruments, electronic apparatus and instruments (included in class 9), in particular car computers, electronic chips for engine control.

Class 12: Motor cars; parts for motor vehicles, including motor vehicle engines; body parts; retrofit kits for vehicle bodies, in particular front spoilers, rear spoilers; sill beams; running boards; mudguards; car accessories, namely accessories for interiors, namely steering wheels, switch controls, seats, seat covers, interior fittings, door linings, carpeting and accessories for exteriors, namely wheel rims.

Class 37: Conversion and modification of engines, engine surroundings and electronic control apparatus; tuning of motor vehicles.

Class 42: Creation of programs for data processing.

The contested goods are the following:

Class 7: Fuel pumps; engine fuel pumps; electrical pumps; pressure regulators [parts of machines]; pressure controllers [valves] being parts of machines; fuel injection pumps; metered gasoline pumps; fuel filters; filters being parts of machines; oil filters [machine parts]; sealing joints [parts of machines]; angle joints [parts of machines].

Class 12: Transmission components for land vehicles; hydraulic brake pressure regulators for vehicles; bushes for vehicles.

Class 17: Non-metallic couplings for pipes; tube junctions (non-metallic -); non-metallic couplings for tubes; pipe support sleeves [rubber]; sleeves of rubber for protecting parts of machines.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods in Class 12 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 7

The contested fuel pumps; engine fuel pumps; electrical pumps; fuel injection pumps and fuel filters are various pumps and filters used as components of engines. They are similar to the opponent’s parts for motor vehicles, including motor vehicle engines in Class 12 since they may share their manufacturer and distribution channels, target the same relevant public and might be indispensable for the correct use of each other.

Since engine or motor is a machine designed to convert one form of energy into mechanical energy. The contested filters being parts of machines; oil filters [machine parts] are similar to the opponent’s parts for motor vehicles, including motor vehicle engines as they have similar nature and can be produced by the same manufacturers.

The contested pressure regulators [parts of machines]; pressure controllers [valves] being parts of machines are parts used in vehicles to control and regulate pressure. Such parts are used in car manufacture. They can be produced by the same entities and be distributed using the same channels targeting the same end users as the opponent’s parts for motor vehicles. Therefore, they are similar.

The contested sealing joints [parts of machines] and angle joints [parts of machines] are parts used to join various elements in a machine or in a complex device such as a vehicle. They are similar to the opponent’s parts for motor vehicles as they can also coincide in producer and relevant public.

The contested metered gasoline pumps are pumps used for the dispensing and simultaneous measuring of gasoline. They are dissimilar to the opponent’s goods and services (optical and electronic apparatus, cars, parts and accessories for vehicles, modification of engines and tuning of vehicles; programming) as they have different nature, purpose and method of use. Furthermore, they are provided by different entities and target different clients through different distribution channels. Finally, they are neither complementary, nor in competition with each other.

Contested goods in Class 12

The contested transmission components for land vehicles; hydraulic brake pressure regulators for vehicles; bushes for vehicles are included in the broad category of the opponent’s parts for motor vehicles, including motor vehicle engines. Therefore, they are identical.

Contested goods in Class 17

The contested non-metallic couplings for pipes; tube junctions (non-metallic -) and non-metallic couplings for tubes are various parts used to join together pipes and tubes. Pipe support sleeves [rubber] and sleeves of rubber for protecting parts of machines are used to protect the parts of a machine, an engine or a vehicle, from dust, mud and moisture. All these goods are widely used in machine-building and car manufacture industries. They are similar to the opponent´s goods as they can be produced by the same entities and are complementary to the opponent´s parts for motor vehicles, including motor vehicle engines in Class 12.

b) 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 identical or similar are specialised goods directed at customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

mtm
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The contested sign consists of the verbal element ‘MTM’ depicted in black in a rather standard uppercase typeface on a yellow elliptic background outlined by a black contour. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is represented in upper or lower case characters

The contested sign has no element that could be considered clearly more dominant than other elements.

The signs coincide completely in their verbal constituents which will be perceived by the relevant public as an abbreviation formed by three letters ‘MTM’.

Regarding the figurative components and aspects of the contested sign (i.e. the stylisation, the typeface, the colours and the figurative devices), they are considered of weak inherent distinctiveness. The relevant public is used to encountering this kind of graphic arrangements on the marketplace, when encountering trade marks, and does not pay much attention to them, as it affords them an essentially ornamental role. Indeed, consumers normally perceive such elements as graphic embellishments of the corresponding brand and are used to refer to the respective marks by their verbal elements.

As a result, the verbal element ‘MTM’ is the one to which consumers will afford the most trade mark significance when encountering the contested sign.

Visually, the signs coincide in their verbal elements. They differ only in the figurative elements and aspects of the contested sign which, however, are simple geometrical figures and lines and will not distract the consumers’ attention away from the verbal elements.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MTM’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-51/95, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. They are directed at professionals whose degree of attention is considered to vary from average to higher than average.

The signs are visually similar to a high degree, aurally identical and neither of them have any meaning and hence, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs coincide in their verbal elements ‘MTM’. In this regard, it must be noted that these words constitute the entirety of the earlier mark and the only verbal elements of the contested sign. The visual differences between the signs, as established above, are clearly insufficient to create any distance between the signs at issue. The stylisation of the contested sign is not such as to obviate the likelihood of confusion between the signs. This is especially the case, as, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting goods found to be identical or similar come from the same undertaking or economically-linked undertakings.

Additionally, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, in the present case, the relevant public may legitimately believe that the contested mark constitutes another version of the earlier sign.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including the likelihood of association, on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 3 617 552.

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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will 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

Monika CISZEWSKA

Tzvetelina IANTCHEVA

Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.