OPPOSITION No B 2 751 066

VSM - Vereinigte Schmirgel- und Maschinen-Fabriken AG, Siegmundstr. 17, 30165 Hannover, Germany (opponent), represented by Horak. Rechtsanwälte Partnerschaft mbB, Georgstr. 48, 30159 Hannover, Germany (professional representative)

a g a i n s t

V. Speet Metaalbewerking B.V., Transportweg 70, 2421 LS Nieuwkoop, the Netherlands (applicant), represented by Heffels Spiegeler Advocaten, Lange Voorhout 102, 2514 EJ Den Haag, the Netherlands (professional representative).

On 18/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 751 066 is partially upheld, namely for the following contested goods and services:

Class 35: Sale of spraying machines, pressing machines, sharpening machines and machines for the manufacture of decorative strips and mouldings; customer care for the manufacture of goods made of ceramic; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry.

2. European Union trade mark application No 15 364 912 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 364 912, . The opposition is based on European Union trade mark registration No 13 577 572, . The opponent invoked Article 8(1)(a) and (b) EUTMR.

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 3: Abrasive preparations, abrasive preparations with backings, namely of fabric, paper, fibre, and combinations of the aforesaid backings, abrasive sheets, abrasive paper, abrasive cloths, non-woven abrasive fabrics, abrasive rolls, abrasive belts, abrasive rings, included in Class 3.

Class 7: Grindstones, abrasive flap discs, abrasive mop wheels, abrasive fibre discs, all being parts of machines.

Class 8: Abrasive blocks (hand tools); abrading instruments (hand instruments), all being parts of tools; abrading instruments [hand instruments].

Class 35: Advertising; business management; office functions; wholesaling in the fields of sanding machines, abrasive preparations, tools and goods of common metal for building; business administration.

Following the limitation requested by the applicant on 04/03/2019, which was accepted by the Office on 08/03/2019 and duly notified to the opponent on 08/03/2019, the contested goods and services are the following:

Class 7: Pressing machines; industrial machine presses; machine presses for the manufacture of goods made of ceramic; spraying machines; spraying machines for the manufacture of goods made of ceramic; paint spray guns; air brushes for applying color; implements [machines] for spraying; power-operated sprayers; automatic sprayers for electrostatic painting; spray paint machines; forging moulds; moulds [parts of machines]; machines for the manufacture of moulds; moulding machines; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry.

Class 35: Sale of spraying machines, pressing machines, sharpening machines and machines for the manufacture of decorative strips and mouldings; customer care for the manufacture of goods made of ceramic; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry.

Class 40: Treatment of materials for the manufacture of ceramic goods; machining parts for others; ceramic processing.

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 opponent’s list of goods in Class 3 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 pressing machines; industrial machine presses; machine presses for the manufacture of goods made of ceramic; forging moulds; moulds [parts of machines]; machines for the manufacture of moulds; moulding machines; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry are either machines or machine tools for the treatment of materials and for manufacture in the ceramics industry. The contested spraying machines; spraying machines for the manufacture of goods made of ceramic; paint spray guns; air brushes for applying color; implements [machines] for spraying; power-operated sprayers; automatic sprayers for electrostatic painting; spray paint machines; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry can be used for adding a coating, such as paint, ink, varnish, etc. onto ceramics. On the other hand, the opponent’s grindstones, abrasive flap discs, abrasive mop wheels, abrasive fibre discs, all being parts of machines in Class 7 are parts of machines which moreover are used in the abrasives industry. The aforementioned contested goods and the opponent’s goods have different natures, purposes and methods of use. Furthermore, the opponent’s goods are not indispensable for the contested goods because the former cannot be parts of the latter. Therefore they are not complementary. The aforementioned contested goods and the opponent’s goods in Class 7 are produced by different manufacturers and are distributed through different channels. Furthermore, the aforementioned contested goods have also nothing in common with the remaining opponent’s goods and services in Classes 3, 8 and 35. They have different natures and purposes, do not coincide in producer/provider, target different relevant public and are distributed through different channels. Therefore, the contested goods in Class 7 are dissimilar to all the opponent’s goods.

Contested services in Class 35

The contested customer care for the manufacture of goods made of ceramic; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry overlap with the opponent’s business management. Therefore, they are identical.

Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

Wholesaling is selling goods to other undertakings (retailers), which then sell the goods to end consumers. Even though the relevant public and distribution channels are different from those of retail services, they have the same nature and purpose. Moreover, wholesalers sometimes also provide retail services and, thus, the commercial origin of these services can be the same insofar as the goods concerned in the services all originate from and are directed at the undertakings in the industry. Therefore, the contested sale of spraying machines, pressing machines, sharpening machines and machines for the manufacture of decorative strips and mouldings; all the above-mentioned goods/services being designated for round ceramics, not including goods for the abrasive industry are similar to a low degree to the opponent’s wholesaling in the fields of sanding machines, abrasive preparations, tools and goods of common metal for building.

Contested services in Class 40

The contested treatment of materials for the manufacture of ceramic goods; machining parts for others; ceramic processing involve the treatment of materials or the transformation of the essential properties of goods. These services have different natures and purposes from the opponent’s goods and services in Classes 3, 7, 8 and 35. They do not coincide in producer or service provider, are distributed through different channels and target a different relevant public. The fact that some of the opponent’s goods, such as parts of machines in Class 7 or instruments in Class 8 can be used for the treatment of materials or the manufacture of goods is not sufficient to find similarity between the contested services in Class 40 and the opponent’s goods in Classes 7 and 8. Therefore, the aforementioned contested services are dissimilar to all the opponent’s goods and services.

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 services found to be identical or similar to a low degree are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the specialised nature, price, and/or terms and conditions of the goods and services purchased.

c) The signs

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 earlier trade mark is a figurative mark consisting of a verbal element composed of three letters ‘VSM’ of which the letter ‘V’ is stylised whilst the letters ‘S’ and ‘M’ are standard bold upper-case letters. The verbal element ‘VSM’ has no meaning as such and is normally distinctive. The earlier trade mark mark also contains a figurative element, namely a triangle, which is placed to the left of the verbal element ‘VSM’. The triangle is a basic geometrical shape and is non-distinctive.

The earlier mark has no element that could be considered clearly more dominant than any other element.

The contested sign is a figurative mark containing the verbal elements ‘VSM’ and ‘NIEUWKOOP’, placed on two lines, and a blue horizontal line under the verbal element ‘NIEUWKOOP’. The line is of a decorative nature and has no trade mark significance.

The verbal element ‘VSM’ in the contested sign contains three bold upper-case letters in a rather standard font. The letters ‘V’ and ‘ M’ are black whilst the letter ‘S’ is blue. The verbal element ‘NIEUWKOOP’ is depicted in smaller black upper-case standard letters. The verbal element ‘VSM’ in the contested sign is much larger than the verbal element ‘NIEUWKOOP’. Moreover, it occupies the central and the major part of the contested sign, therefore, the verbal element ‘VSM’ in the contested sign is the dominant element as it is the most eye-catching.

In its observations the applicant argues that the letters ‘VSM’ in the contested sign stand for the name of the owner of the company and for metal processing which in Dutch is ‘metaalbeweking’. However, there is no evidence and it is not possible to assume that even professional consumers will be familiar with the name of the owner of the company so that they would make a link between the name of the owner of the company and the first two letters (‘VS’) and between the last letter (‘M’) and the specific word in Dutch. Therefore, it is considered that the verbal element ‘VSM’ in the contested sign will be perceived by the relevant public without attributing any particular meaning to it. The verbal element ‘VSM’ as such has no relationship with the relevant goods and services and therefore its distinctiveness is normal.

As regards the verbal element ‘NIEUWKOOP’, the applicant has pointed out in its observations, that it is the name of a city in the Netherlands. Therefore, at least part of the relevant public will perceive the verbal element ‘NIEUWKOOP’ as a name of a city. However, contrary to the applicant’s argument, for the part of the relevant public that perceives the verbal element ‘NIEUWKOOP’ as a city name, its distinctiveness is low, since it will be perceived as indicating the geographical origin, namely that the goods and services come from that particular city. For the part of the relevant public which is not familiar with the name of the city in the Netherlands, this verbal element has no meaning and its distinctiveness is normal.

Visually, the signs coincide in verbal element ‘VSM’ which is of normal distinctiveness. However, they differ in the verbal element ‘NIEWKOOP’ which is weak or of normal distinctiveness (depending on the part of the public); in the triangle of the earlier mark which is non-distinctive and in the horizontal line of the contested sign which has no trade mark significance. The signs also differ in their graphic depiction and the stylisation of the letter ‘V’. However, although the letter ‘V’ is stylised in the earlier mark, it still perceived visually as the letter ‘V’.

Taking into account the impact of the differing elements and their distinctiveness and that the signs coincide in the distinctive verbal element ‘VSM’, which is the most eye-catching element in the contested sign, the signs are visually similar at least to an average degree.

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 letters ‛VSM’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NIEUWKOOP’ of the contested sign, which have no counterparts in the earlier mark. However, the differing verbal element ‘NIEUWKOOP’ is a secondary element within the contested sign and moreover it is weak for at least part of the public whilst the coinciding verbal element ‘VSM’ is dominant within the contested sign. The applicant argues that the letters ‘VSM’ in German are pronounced differently than in Dutch, however, even if they are pronounced differently, the same German- and/or Dutch-speaking consumers will pronounce the letters ‘VSM’ identically when referring to both signs.

Taking into account that the only verbal element which will be pronounced in the earlier mark is pronounced identically as the dominant and distinctive element in the contested sign, the signs are aurally similar at least to an average degree.

Conceptually, for the part of the relevant public which perceives the verbal element in the contested sign ‘NIEUWKOOP’ as a city in the Netherlands, the earlier trade mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the remaining part of the public, 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.

In its observations the opponent stated that it is a pioneer in the abrasives industry in Germany. However, even if such a statement could be considered as a claim for enhanced distinctiveness, the opponent did not file any evidence in order to support 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods and services are partly identical, partly similar to a low degree and partly dissimilar. It should be noted that similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR. The services that are identical or similar to a low degree target business customers with professional knowledge or expertise. The degree of attention varies from average to higher than average.

The signs are visually and aurally similar at least to an average degree. For part of the relevant public the conceptual aspect does not influence the assessment of the similarity of the signs and for the other part of the public the signs are not conceptually similar. However, for the part of the public for which the signs are conceptually not similar, this lack of conceptual similarity is due to the concept conveyed by the weak verbal element ‘NIEUWKOOP’ (which, as explained above, indicates the geographical origin of the goods and services), whilst the remaining elements do not convey any meaning for this part of the public either. Therefore, the lack of conceptual similarity for this part of the public has a limited impact in the overall assessment of the similarity between the signs.

Both signs coincide in the verbal element ‘VSM’. Although, as explained above in section c) of this decision, the stylisation, including colours is not identical, both signs are principally perceived as the letters ‘VSM’. The differing verbal element ‘NIEWUKOOP’ appears in a secondary position within the contested sign. Moreover, it is weak for part of the relevant public. The remaining elements, namely the triangle in the earlier mark and the horizontal line in the contested sign, are either non-distinctive or do not have trade mark significance. Therefore, although there is an additional verbal element in the contested sign and the stylisation of the letters ‘VSM’ is not totally identical, the aforementioned differences are not able to counteract the similarity between the signs due to the coinciding letters ‘VSM’.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Taking into account that consumers will principally perceive both signs as the letters ‘VSM’, it is not possible to safely exclude that consumers may think that the goods and services under the signs at issue come from the same or related companies.

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 sub-brand, 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). Since both signs will be perceived principally by their three letters ‘VSM’ and part of the relevant public will perceive the goods and services under the contested sign as originating from a city in the Netherlands, consumers who display higher than average degree of attention, may think that the owner of the earlier trade mark has expanded its products and services line with the contested mark.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘VSM’. In support of its argument the applicant indicates that there are over 90 trade marks containing this element in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘VSM’. Under these circumstances, the applicant’s claim must be set aside.

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 partly well founded on the basis of the opponent’s European Union trade mark registration No 13 577 572.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark. The Opposition Division considers that the likelihood of confusion also exists in relation to the services that are similar to only a low degree, because, applying the abovementioned principle of interdependence, the degree of similarity between the marks is sufficiently high to offset the low degree of similarity between some of the goods and services.

The rest of the contested goods and services 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 and services 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) EUTMR and directed against the remaining goods and services because the signs and goods and services are obviously not identical.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.