OPPOSITION No B 2 894 353

Bosch Termotecnologia S.A., Avenida Infante D. Henrique, Lotes 2-E e 3-E, 1800-220, Lisboa, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)

a g a i n s t

E3D-Online Limited, Unit 15, Northwood Business Park, 290 Newport Road, Cowes, PO31 8PE, United Kingdom (applicant), represented by Ignition (Law) LLP, Suite 1.1, first floor, Moray House, Great Titchfield Street, London, W1W 7PA, United Kingdom (professional representative).

On 30/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 353 is partially upheld, namely for the following contested goods:

Class 7: Machines and machine tools for treatment of materials and for additive manufacturing; parts of machines, namely, electrical resistance heating elements for heating metal objects and air heating, electrical inductance heating elements, infra-red radiation heating systems; parts and fittings for the aforementioned goods

2. European Union trade mark application No 16 159 709 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 159 709 ‘VOLCANO’.

The opposition is based on the following earlier trade mark registrations:

• Portuguese trade mark registration No 323 946 ;

• Portuguese trade mark registration No 465 560 ;

• European Union trade mark registration No 2 325 744 ;

• Portuguese trade mark registration No 326 331 ;

• Portuguese trade mark registration No 448 177 .

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 465 560 .

1. The goods

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

Class 11: Cookers; fireplace ovens; stoves for heating; heat accumulators; electric heaters; apparatus for heating; gas lamps; heaters; heating boilers; gas and electric water heaters; solar photovoltaic collectors; air conditioners (heat and air pumps).

The contested goods are the following:

Class 7: Machines and machine tools for treatment of materials and for additive manufacturing; parts of 3D printers, namely, extruders and heated extruders, nozzles and 3D printer components of plastic and of metal for use in printing processes, namely, nozzles, heatsinks, cooling and heating systems primarily comprised of air-cooled heatsinks, radiative heatsinks, cooling fans, pumped water cooling, thermoelectric peltier combined heating and cooling elements; parts of machines, namely, electrical resistance heating elements for heating metal objects and air heating, electrical inductance heating elements, infra-red radiation heating systems; parts and fittings for the aforementioned goods.

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.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods 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.

It follows that the applicant’s argument that there can be no similarity between the goods, since the opponent’s goods are not registered in Class 7, must be disregarded.

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.

In this regard, the Opposition Division emphasises that, although the degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it, the fact remains that the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence and/or arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

The contested machines and machine tools for treatment of materials and for additive manufacturing are similar to the opponent’s heaters to the extent that machines in Class 7 encompass, inter alia, liquidisers (kitchen machines), which are similar to electric ranges, which are covered by the category of burners, boilers and heaters in Class 11. It follows that the contested goods and the opponent’s heaters can have the same producers, target the same consumers and can be sold in the same specialised shops.

The contested parts and fittings for the aforementioned goods (machines and machine tools for treatment of materials and for additive manufacturing) are similar to a low degree to the opponent’s apparatus for heating. Parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public (spare or replacement parts). Consequently, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer. Therefore, the goods can have the same distribution channels, producers and end users.

The contested parts of machines, namely, electrical resistance heating elements for heating metal objects and air heating, electrical inductance heating elements, infra-red radiation heating systems are parts of unspecified machines. Therefore, they are similar to a low degree to the opponent’s apparatus for heating to the extent that it cannot be excluded that the contested goods are parts that can be used for the opponent’s goods. It follows that they can have the same distribution channels and producers, as well as end users.

The contested parts of 3D printers, namely, extruders and heated extruders, nozzles and 3d printer components of plastic and of metal for use in printing processes, namely, nozzles, heatsinks, cooling and heating systems primarily comprised of air-cooled heatsinks, radiative heatsinks, cooling fans, pumped water cooling, thermoelectric peltier combined heating and cooling elements are parts of machines specifically intended to be integrated in 3D printers. They are dissimilar to all of the opponent’s goods. They do not have the same nature, purpose or method of use. They do not have the same producers or target the same public and do not usually have the same distribution channels. They are neither complementary nor in competition. In particular, the mere fact that they have the same purpose (very broadly speaking) as some of the opponent’s goods in Class 11, that of heating, is insufficient.

2. 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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

Therefore, the relevant public’s degree of attention will vary from average to high, depending on the price and frequency of purchase of these goods.

3. The signs

	VOLCANO
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 mark is a figurative mark composed of the word ‘VULCANO’ depicted in grey bold italic letters. However, the stylisation of the letters is quite standard; therefore, consumers will attach no trade mark significance to the depiction of the sign.

The contested sign is a word mark consisting of the word ‘VOLCANO’.

Since they are similar to the equivalent word in Portuguese, namely ‘vulcão’, both ‘VULCANO’ and ‘VOLCANO’ will be associated by the relevant public with the same concept of a ‘volcano’, that is, a hill or mountain composed wholly or in part of ejected volcanic material.

As the elements ‘VULCANO’ and ‘VOLCANO’ of the marks are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

Neither of the signs has any element that could be considered clearly more dominant (eye-catching) than other elements.

Visually and aurally, the signs coincide in the string of letters ‘V*LCANO’, identically included in both marks and placed in the same order. They differ only in their second letters, ‘U’ in the earlier mark and ‘O’ in the contested sign, and in the depiction of the earlier mark’s word element.

However, taking into account that the signs have in common six letters out of seven, and that the depiction of the earlier mark is quite standard, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the concept of a ‘volcano’, the signs are conceptually identical.

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

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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. Global assessment, other arguments and conclusion

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.

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).

The goods are identical and similar to various degrees. The degree of attention of the relevant public varies from average to high and the distinctiveness of the earlier mark is normal.

Overall, the signs are visually and aurally highly similar because they differ in only one letter, while coinciding in the other six. They also differ in the depiction of the earlier sign. However, this graphical difference is of secondary importance, as stated above in section c) of this decision.

Conceptually, the signs are identical, as they both refer to the same concept of ‘volcano’, the earlier sign being likely to be perceived as a misspelling of the English word.

It follows that the differences between the signs are not sufficient to counterbalance their similarities and to enable consumers to safely distinguish between the signs, even for the public with a higher than average degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 465 560.

It follows 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 opposition is also successful for the goods that are similar to a low degree, considering the high degree of similarity between the signs.

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.

The opponent has also based its opposition on the following earlier rights:

• Portuguese trade mark registration No 323 946 for cookers; fireplace ovens; stoves for heating; heat accumulators; electric heaters; apparatus for heating; gas lamps; heaters; heating boilers in Class 11;

• European Union trade mark registration No 2 325 744 for water heaters in Class 11 and printed matter, publications in Class 16;

• Portuguese trade mark registration No 326 331 for heating boilers, extractor hoods for kitchens, apparatus for heating, cookers in Class 11;

• Portuguese trade mark registration No 448 177 for apparatus for heating, refrigerating, drying, ventilating, water supply and sanitary purposes, namely electric and gas heaters, gas boilers, diesel boilers, water storage tanks, gas and electric water heaters, radiators and towel rails, controllers for boilers, solar thermal collectors, thermal emitters, air conditioners, heat pumps, solar photovoltaic collectors in Class 11.

These goods are clearly dissimilar to the goods for which the opposition has been rejected. The natures and purposes of the opponent’s goods in Classes 11 and 16 listed above are different from those of the contested parts of 3D printers, namely, extruders and heated extruders, nozzles and 3D printer components of plastic and of metal for use in printing processes, namely, nozzles, heatsinks, cooling and heating systems primarily comprised of air-cooled heatsinks, radiative heatsinks, cooling fans, pumped water cooling, thermoelectric peltier combined heating and cooling elements. Moreover, the distribution channels, the sales outlets, the producers and the methods of use of these goods clearly differ. Finally, they are neither in competition with nor complementary to each other.

In particular, as regards the similarity between these contested goods and the opponent’s goods in Class 16, the Opposition Division acknowledges that the opponent’s printed matter, publications constitute materials that have gone through a printing process, which clearly requires the use of printing presses, possibly 3D printers. However, considering that printed matter and 3D printers target different consumers, the mere fact that the opponent’s goods in Class 16 involve the use of a printing press does not of itself render them complementary. In addition, they are obviously not in competition.

Moreover, the opponent’s goods in Class 16 are finished publications primarily intended to impart information and/or messages and, as such, their nature and purpose are different from those of 3D printers. Furthermore, these finished printed products are distributed through different channels from 3D printers and they are not manufactured by the same undertakings. The same holds true, a fortiori, for parts of 3D printers.

Therefore, no likelihood of confusion with these earlier marks exists with respect to the contested parts of 3D printers, namely, extruders and heated extruders, nozzles and 3D printer components of plastic and of metal for use in printing processes, namely, nozzles, heatsinks, cooling and heating systems primarily comprised of air-cooled heatsinks, radiative heatsinks, cooling fans, pumped water cooling, thermoelectric peltier combined heating and cooling elements.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marine DARTEYRE Julie, Marie-Charlotte HAMEL Cristina CRESPO MOLTÓ

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.