OPPOSITION Nо B 2 881 475

 

"Ega Spółka Z Ograniczoną Odpowiedzialnością" Spółka Komandytowa, Rzeczna 1, Nowa Wieś Rzeczna, 83200 Starogard Gdański, Poland (opponent), represented by Włodarczyk + Włodarczyk Adwokaci I Rzecznicy Patentowi Spółka Partnerska, ul. Spokojna 17 /11, 20-066 Lublin, Poland (professional representative) 

 

a g a i n s t

 

P&X Hico Europe GmbH, Gemünder Strasse 9 - 11, 53925 Kall, Germany (applicant), represented by Mütze Korsch Rechtsanwaltsgesellschaft Mbh, Trinkausstr. 7, 40213 Düsseldorf, Germany (professional representative).

On 17/05/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 2 881 475 is upheld for all the contested goods.

 

2.	European Union trade mark application No 16 209 901 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 20/04/2017, the opponent filed an opposition against all the goods of European Union trade mark application No 16 209 901 for the word mark ‘Hico’. The opposition is based on Polish trade mark registration No 292 302 for the word mark ‘HIGO’. 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:

 

Class 7: Cordless power tools; diamond discs; cemented carbide circular saw blades; circular saw blades for wood, corundum discs; diamond abrasive grinding wheels, corundum abrasive grinding wheels; gas-operated blow torches; silicone caulking guns; tie down straps for securing loads; power operated tools; drilling machines, bench drilling machines; chucks for power drills; drywall screwdrivers; sawing centers; fret saws; reciprocating saws; belt sanding machines; orbital sanding machines; brushing; sander; hot air guns; agitators; concrete mixers (machines); strainers; cutters for wood; tiles and metal; power generators; electric welding machines; blades for jig-saws and reciprocating saws; brushes as parts of machines; air-powered tools; concrete-breakers; pumps [machines]; electric lawn mowers; gasoline lawn mowers; electric and fuel-operated scythes; electric and fuel-operated chain saws; leaf pumps; electric and fuel-operated hedge shears; branch shredders; angle grinders. 

Class 8: Hand-operated implements; accessories for hand tools; sets of socket spanners; rachet; socket bits; keys; screwdriver bits; screwdrivers; pliers; hammers [hand tools]; axes; splitting mauls; mortar rakes with picks; chisels; crow bars; handles; centre punches; shears; punch pliers; saws [hand tools] and mitre boxes; blades for hand saws; files; planes; planes; chisels; knives; drills, draw studs; punchers; taps [hand tools]; die nuts; water pump pliers; cutters; pipe vises; vice benches; gluing clamps; keys for drill chucks; gardening tools; hainault scythes; shovels; rakes; pitchforks, pruning scissors; building tools; trowels, trowels of metal.

The contested goods are the following:

Class 7: Stands for machines (not for pumps and compressors); tables for machines (not for pumps and compressors); saw benches [parts of machines]; woodworking machines; hand-held tools; blades [parts of machines] (not for pumps and compressors); holding devices for machine tools (not for pumps and compressors); bearing brackets for machines (not for pumps and compressors); drilling heads [parts of machines]; drilling machines.

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 contested drilling machines are identically contained in both lists of goods.

The contested blades [parts of machines] (not for pumps and compressors) include, as a broader category the opponent's circular saw blades for wood, corundum discs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested hand-held tools include as a broader category the opponent’s drywall screwdrivers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested woodworking machines include as a broader category the opponent's cutters for wood. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested saw benches [parts of machines]; stands for machines (not for pumps and compressors); drilling heads [parts of machines]; tables for machines (not for pumps and compressors); holding devices for machine tools (not for pumps and compressors); bearing brackets for machines (not for pumps and compressors) are parts or supports for machine tools. They are similar to the opponent's power operated tools. Contrary to the applicant’s opinion, as these goods belong to the same tool-machinery field, they are normally manufactured by the same producers. Moreover they target to the same relevant public and are complementary.

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 directed at business customers with specific professional knowledge or expertise and, contrary to the applicant’s arguments, also at interested and experienced DIY consumers.

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

c) The signs

 

HIGO	Hico
Earlier trade mark	Contested sign

 

The relevant territory is Poland.

 

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).

Both the opponent’s mark and the contested sign are word marks. With regard to word marks, the use of upper- or lower-case letters is immaterial (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57) insofar as it does not depart from the usual way of writing, as in the present case.

The verbal elements ‘HIGO’ and ‘Hico’ composing the earlier mark and the contested sign, respectively, are meaningless for the relevant public and, therefore, distinctive to a normal degree.

Visually and aurally, the signs coincide in (the sound of) the sequence of letters ‘HI*O’. The signs differ in (the sound of) their third letter, that is ‘G’ of the earlier mark and ‘C’ of the contested sign.

Although the signs are composed of relatively short verbal elements, both consist of four letters, three of which coincide and are in the same order and positions. Moreover, the shape of the letters ‘G’ and ‘C’ is very similar from a visual perspective and, aurally speaking, the signs have the same rhythm and intonation as they both will be pronounced in two syllables.

Taking into account all the above, the signs are considered visually and aurally similar to at least an average degree.

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

The goods are partly identical and partly similar and target the public at large and professionals, whose level of attention varies from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to at least an average degree and the conceptual aspect plays no role in the assessment of likelihood of confusion. The contested sign reproduces three letters (out of four) of the earlier mark in the same order and position and differ in their respective third letters although there is a certain visual similarity between these. However, the difference in one letter is insufficient to offset the aforementioned commonalities, taking also into account that neither of the signs convey any concept that could assist the public in differentiating one from the other.

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).

In the light of the above, it is highly conceivable that the relevant consumers, even with a high degree of attention, relying on their imperfect recollection, are likely to confuse the signs at issue and believe that the identical or similar goods come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s  Polish trade mark registration No 292 302. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

 

 

Martina GALLE

Angela DI BLASIO

Erkki MÜNTER

 

 

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.