OPPOSITION No B 2 774 423

Walter Kidde Portable Equipment, Inc., 1394 South Third Street, 27302 Mebane, United States of America (opponent), represented by Dehns, St Bride’s House, 10 Salisbury Square, EC4Y 8JD London, United Kingdom (professional representative)

a g a i n s t

UAB Fire Experts, Laisvėsprospektas 60, 05120 Vilnius, Lithuania (applicant), represented by Law Firm IP Forma, Užupio g. 30, 01203 Vilnius, Lithuania (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 774 423 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 of European Union trade mark application No 15 439 219 for the figurative mark . The opposition is based on European Union trade mark registration No 75 275 and French trade mark registration No 95 881 946, both for the word mark ‘FIREX’. The opponent invoked Article 8(1)(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

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

European Union trade mark registration No 75 275:

Class 9: Thermostats; fire, smoke, gas alarms and detectors including accessories therefor; electrical door chimes and accessories therefor.

French trade mark registration No 95 881 946:

Class 9: Thermostats; detectors and fire alarms; smoke detectors and alarms; gas detectors; electric doorbells, electric door chimes.

After the applicant’s limitation of the list of goods, the contested goods are the following:

Class 2: Coatings; dyes, colorants pigments and inks; paints.

Class 17: Insulation and barrier articles and materials; seals, sealants and fillers.

The opponent argues that both parties operate in an identical commercial field, namely, that of products for fire safety and protection. The Opposition Division notes that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant to this comparison, since the comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71)

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 opponent’s goods in Class 9 are electrical or electronic goods used to regulate temperature or to detect and signal fire, gas leaks or the presence of a person.

The contested goods in Class 2 are materials used to cover or colour surfaces such as walls or furniture.

The contested goods in Class 17 are materials used to insulate, for example, a building or a room from hot or cold weather, or from moisture and humidity in a bathroom.

Therefore, the goods at issue do not have the same nature or the same method of use. Moreover, and at odds with the opponent’s arguments, the purposes of the opponent’s goods and of the contested goods are clearly different. Even if the contested goods can help to delay the progression of a fire, they cannot detect and signal the fire to anyone.

The opponent also claims that the goods share the same distribution channels. The Opposition Division strongly disagrees with the opponent’s view. In fact, the opponent’s goods can be purchased mainly in electronics shops, whereas the contested goods will be purchased in different specialised shops. Although these goods can all be sold in hardware shops (where a wide variety of articles for the house and garden are sold) they will be in different sections. Their producers are also different.

There is no complementarity or competition between the opponent’s goods and the contested goods.

Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

Complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience (e.g. bread and butter). This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). In such cases similarity can only be found on the basis of other factors, not complementarity.

In that respect, and contrary to the opponent’s argument, while the contested goods and the opponent’s goods can be used in combination, they can also be used independently of each other perfectly well. For instance, according to many EU laws, it is mandatory to install smoke detectors inside a building; however, there is no obligation to use paints or insulating material with them.

For the sake of completeness, the Opposition Division agrees with the opponent that the relevant public may be the same in the sense that there is an overlap, for instance with DIY enthusiasts. However, the mere fact that the potential customers coincide does not automatically constitute an indication of similarity, particularly if there is no additional factor of similarity between the goods.

Therefore, the contested goods in Classes 2 and 17 are dissimilar to the opponent’s goods in Class 9 of the two earlier trade marks.

b) 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 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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Vita VORONECKAITE

Cindy BAREL

Alicia BLAYA ALGARRA

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.