OPPOSITION No B 2 933 813

Gottlieb Binder GmbH & Co. KG, Bahnhofstr. 19, 71088 Holzgerlingen, Germany (opponent), represented by Bartels und Partner, Patentanwälte, Lange Str. 51, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Uponor Innovation AB, c/o Uponor AB, Nordanövägen 2, 73061 Virsbo, Sweden (applicant), represented by Brann AB, Drottninggatan 27, 11151 Stockholm, Sweden (professional representative).

On 07/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 933 813 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 and services of European Union trade mark application No 16 334 716, for the word mark ‘KLETT SILENT’. The opposition is based on European Union trade mark registration No 123 224 for the word mark ‘Kletten’. The opponent invoked Article 8(1)(b)EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 26: Adhesive textile fastener, in particular pressure acting and detachable fastener with a textile base, and textile goods with hooks or hooks and loops for fastening and securing purposes.

The contested goods and services are the following:

Class 6: Composite pipes mainly of metal including plastics material; metal pipes; pipes of metal composite material; metal pipe fittings; connectors of metal for pipes; panels of metal to fix pipes for underfloor heating; branching pipes of metal.

Class 11: HVAC systems; heating installations; underfloor heating installations; valves [plumbing fittings]; heating apparatus; assembly plates for underfloor heating; water heaters.

Class 17: Flexible pipes; non-metallic fittings for pipes; valves of rubber; flexible composite pipes mainly of plastics material including metal material; non-metallic fittings for pipes.

Class 19: Rigid pipes, not of metal; rigid composite pipes mainly of plastics material including metal material.

Class 37: Building; construction; construction consultancy; advisory services relating to the maintenance of plumbing; maintenance and repair of heating apparatus; heating equipment installation.

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

The terms ‘in particular’, used in the list of goods of the opponent, indicate 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 a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu Tride, EU:T:2003:107).

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.

As a preliminary remark it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C 171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C 354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T 276/09, Yakult, EU:T:2012:313, § 58).

Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered (except where proof of use has been validly requested) and the contested goods and services as applied for, that are relevant.

It is a producer’s decision and a market strategy where and how it is going to produce and sell its goods. The opponent itself claims and shows that goods, which serve for fastening of different objects, are used successfully in several fields such as industry, transport, medicine and sport. But for establishing similarity, the fact that some goods can be perceived as components or integrated in another product is not sufficient. (judgment of 27/10/2005, T 336/03, Mobilix, EU:T:2005:379, § 61).

However, the goods that are shown in the annexes of the opponent’s brief do not fall within the scope of the goods protected by the trade mark registration on which the opposition is based. The protected goods, adhesive textile fasteners in Class 26 are used for sewing purposes (broadly speaking as will be explained in detail below). The goods that are shown in the annexes and for which the opponent claims that they have the same distribution channels (building stores) and consumers (building companies, constructors and average consumers with interest in construction) as the contested goods are entirely different from the goods for which the opponent’s mark is actually protected and can be described as adhesive tapes or fasteners for technical and industrial purposes and components and parts thereof.

The opponent’s goods are in Class 26, which means that their field and class of goods are related to lace, braid and embroidery, ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair, according to the Class Heading of the Nice Classification or in other words are mainly dressmakers’ and sewing articles as well as accessories for apparel. According to Nice Explanatory Notes, ‘Class 26 includes mainly dressmakers’ articles, natural or synthetic hair for wear, and hair adornments, as well as small decorative items intended to adorn a variety of objects, not included in other classes’. Moreover, all other goods in this class that contain the term ‘fastener’ in their descriptions are for footwear, bags, hair, clothing, duvets, zippers, which again indicates that the goods from Class 26 can be considered as haberdashery and other small articles and accessories, for example for hair. There are also different ‘fasteners’ in Classes 20 and 6 and in Class 17 there are different adhesive products.

The General Remarks of the Nice Classification should also be taken into consideration; those relevant to the current case state:

a. A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.

d. Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.

Therefore, considering the description of the protected goods in the earlier mark and their classification in Class 26, which defines their purpose, it is evident that they are not for technical, industrial or building purposes. The opponent’s goods are types of products that have no conceivable meaningful function on their own and need to be applied to another product to achieve their purpose, namely to stick two objects or surfaces together. As classified in Class 26, their functionality and purpose is to provide fastening for clothing and other textile articles and they can be categorised as sewing articles. The mentioned ‘securing purposes’ can be seen only as a synonym and complement of the fastening purposes and as an indication that the goods can be used to ensure that something will not open accidentally.

In short, there are many types of fasteners classified in various Nice Classes and the fasteners in Class 26 do not cover all fastening devices and goods in other Nice classes, nor perform their purpose in different industries and fields of applications. Moreover, they cannot be considered as parts and elements of goods in the building, construction and heating sectors.

All contested goods in Classes 6 (e.g. connectors of metal for pipes; panels of metal to fix pipes for underfloor heating), 11 (e.g. heating installations; underfloor heating installations), 17 (e.g. flexible pipes; non-metallic fittings for pipes), and 19 (e.g. rigid pipes, not of metal; rigid composite pipes mainly of plastics material including metal material) have nothing in common with the opponent’s goods.

The contested goods can be summarised as metal and non-metal materials and goods for building and construction (Class 6 and 19); systems, apparatus and installations intended to provide heat in the environment (Class 11) and pipes not of metal (Class 17). These have different distribution channels, producers and relevant public in comparison to the opponent’s goods in Class 26. Moreover, they are neither complementary nor in competition. Even if the applicant’s heating systems can have fasteners, they are not the textile fasteners of Class 26 as these have different usage and the practice of one undertaking does not mean that it is a practice in the entire sector and the market. Additionally, the fact that one product is used in conjunction with other, especially a rather simple product in a quite complicated structure like a heating system, does not make them similar, since the goods have a different purpose and nature. They come from different undertakings and normally target a different public. The customer would not expect a manufacturer of heating systems, pipes or other building materials to also produce and market textile adhesives in Class 26. Therefore, they are dissimilar.

The same conclusion is also entirely valid for the comparison of the opponent’s goods and the services in Class 37. No building, construction nor maintenance professional would ever substitute specialised fasteners for those used for sewing clothing. Moreover, the goods and services have a different nature, in that the goods are tangible and the services are intangible. Therefore, they are also dissimilar.

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 and services 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

Ewelina SLIWINSKA

Maria SLAVOVA

Jakub MROZOWSKI

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.