OPPOSITION No B 2 877 291

Repsol, S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (opponent), represented by Clarke, Modet y Cía, S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

AS Wilfa, Industriveien 25 Postboks 146, 1483 Skytta, Norway (applicant), represented by Codex Advokat Oslo AS, Kristian Augusts gate 7b, 0028 Oslo, Norway (professional representative).

On 13/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 877 291 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 192 718 for the word mark ‘POWER FUEL’. The opposition is based on Spanish trade mark registration No 2 540 423 . 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.

1. The goods

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

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

The contested goods are the following:

Class 7: Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); machines for whipping, blending and mixing foodstuffs including accessories for such machines; machines for chopping, cutting and sifting of foodstuff, including juice extracting and kneading; electrical household appliances, namely blenders, coffee grinders, mixers, beaters, electrical knives, mix masters, hand mixers, food processors, pasta machines, bread cutting machines, juice extractors and hand blenders.

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

The term ‘including’ used in the applicant’s and in the opponent’s lists of goods 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 non-exhaustive lists of examples (by analogy, see a reference on the use of ‘in particular’ in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’ also 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.

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 4 are oily, greasy or lubricating substances used in relation to different kinds of machines, in order to help them function properly, as well as gas or oily substances for producing heat or power and other materials used for combustion purposes and pieces of wax and twists of soft threads that are used to give light while burning.

The contested goods in Class 7 consist mainly of motors, engines, machines and their parts or accessories. These goods are used for very different purposes, such as cooking (e.g. food processors, pasta machines), converting heat energy into mechanical energy in order to produce force and motion (i.e. engines in the broad sense) or for converting electrical energy into mechanical energy (e.g. motors in the broad sense)

According to these definitions, it is clear that the goods on which the opposition is based are very different in nature and purpose to the contested motors and engines (except for land vehicles). The complementarity of the goods can only be stated in the sense that goods in Class 4 may help the functioning of some goods in Class 7. However, the same products of the opponent can operate or be used in relation to many other kinds of goods different from the contested ones (in the sense that one is not indispensable or important for the use of the other) and therefore consumers are not expecting the same undertakings to produce those goods or to find them in the same stores. In fact, the motors’ and engines’ manufacture industry does not engage in the oil refinery business, and the oil industry does not produce motors and engines because the know-how and engineering skills required for each industry are very distant. Therefore, they are dissimilar to the opponent’s goods in Class 4 (10/03/2015, R 747/2014-1, DEZA (FIG. MARK)/ DEA et al., paragraph 19 and 20).

The case is the same for machine coupling and transmission components (except for land vehicles), where the relevant public is not expecting the manufacturers of those goods to produce industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions (see, by analogy, decision of 18/12/2009, R 1910/2007-4, Wolf / WOLF (fig. mark) et al., paragraph 30). Their nature, purpose and method of use are different, they are not in competition and they come from different undertakings. Moreover, their distribution channels are not the same. Therefore, they are dissimilar to the opponent’s goods in Class 4 (18/11/2014, T-308/13, ELECTROLINERA, EU:T:2014:965, § 40-47).

The difference is even greater for the rest of the contested goods, namely for machines for whipping, blending and mixing foodstuffs including accessories for such machines; machines for chopping, cutting and sifting of foodstuff, including juice extracting and kneading; electrical household appliances, namely blenders, coffee grinders, mixers, beaters, electrical knives, mix masters, hand mixers, food processors, pasta machines, bread cutting machines, juice extractors and hand blenders. They have nothing in common to the opponent’s goods in Class 4. They do not share their nature, purpose or method of use. They are neither complementary nor in competition and their distribution channels and manufacturers are different.

Therefore, contrary to the opponent’s opinion, the mere fact that some of the opponent’s goods can be used for the functioning or maintenance of some of the goods in Class 7 is not enough to find them similar to any degree.

For all the foregoing, the goods herein involved are considered dissimilar.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In particular, after the decisions mentioned by the opponent were issued, several changes in the practice of the Office have taken place, that could affect the outcome reached. In addition, the previous cases cited by the opponent involve different signs and/or goods and/or services from the ones herein involved. Therefore, the same reasoning cannot be expected to be followed, or the same outcome reached in the present case. All of the above is maintained.

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 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

Marta GARCÍA COLLADO

María del Carmen SUCH SÁNCHEZ

Alexandra APOSTOLAKIS

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.