OPPOSITION No B 3 008 417

OPPOSITION DIVISION

OPPOSITION No B 3 008 417

Palettenwerk Kozik Spółka Jawna, ul. Przemysłowa 219, 34240 Jordanów, Poland (opponent), represented by Anna Górska, Długa 59/5, 31-147 Kraków, Poland (professional representative)

a g a i n s t

Fiege Relog GmbH, Hessenweg 6, 48157 Münster, Germany (applicant), represented by Dr. Cassebaum, Böcken, Glänzer, Küster, Konerding, Ende, Borselstr. 18, 22765 Hamburg, Germany (professional representative).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 008 417 is upheld for all the contested goods and services, namely:

Class 6: Metal pallets; pallet racks of metal; loading and unloading pallets of metal; buildings, transportable, of metal; containers, and transportation and packaging articles, of metal; metal containers for the storage and transportation of goods; containers of metal for transport; mobile platforms [scaffolding] of metal; modular portable building structures [metal]; portable buildings made principally of metal; structures and transportable buildings of metal; portable cabins of metal; mobile pallets made of metal; transport pallets of metal; packaging containers of metal; handling pallets of metal; loading pallets of metal; containers of metal [storage, transport]; latticework of metal; gratings of metal; bars for metal railings; laths of metal.

Class 20: Transport pallets, not of metal; packaging containers of plastic; packaging containers not of metal; packaging containers made of wood; handling pallets, not of metal; loading pallets, not of metal; containers, not of metal [storage, transport]; bed bases; crates and pallets; crates and pallets, non-metallic; mobile pallets made of non-metallic materials; wooden pallets; plastic bins [other than dustbins].

Class 39: Hire of pallet cages; hire of pallet racks; hire of pallet collars; rental of pallets and containers for storage of goods; leasing of pallets for industrial and commercial use; rental of pallets and containers for transport of goods; leasing of pallets for the transport or storage of goods; consultancy services relating to transportation; professional consultancy relating to transport; arrangement of transportation; arranging transport services by land, sea and air; services for the arranging of transportation; collection, transport and delivery of goods; transport; transport services; hauling; car transport; transportation and storage; storage and delivery of goods; transportation and delivery of goods; transportation of freight; collection of recyclable goods [transport].

2. European Union trade mark application No 16 454 721 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 454 721 , namely against some of the goods in Class 6 and all of the goods and services in Classes 20 and 39. The opposition is based on European Union trade mark registration No 12 462 818 and Polish trade mark registration No R 280 470 . 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 European Union trade mark registration No 12 462 818.

The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 6: Pallets of metal for internal transportation; handling pallets of metal; loading pallets of metal.

Class 20: Transport pallets, not of metal; loading pallets, not of metal; wooden transport pallets; wooden loading pallets; packaging containers of plastic; non-metallic containers for storage and transport; platforms for storage and transport, not of metal; racks; boxes of wood or plastic; containers (not of metal); crates; pallet collars; box pallets; non-metallic components for pallets.

Class 39: Package delivery, delivery of parcels; delivering of goods; garage rental; transportation information; rental of storage containers; rental of transport and loading pallets; leasing of pallets for industrial and commercial use; transportation logistics; storage of goods; maintaining stock inventory; storage information; rental of warehouses; packaging of goods; piloting; rental and hire of vehicles; carrying cargo; transport by trucks; transport reservation; cargo unloading services; freight forwarding; transport; transport brokerage; leasing of cargo containers and pallets.

The contested goods and services are the following:

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.

Contested goods in Class 6

Loading pallets of metal (present twice in the list of the contested goods); handling pallets of metal are identically contained in both lists of goods.

The contested metal pallets; unloading pallets of metal; mobile pallets made of metal; transport pallets of metal include as broader categories, or overlap with, the opponent’s pallets of metal for internal transportation. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

It is noted that the metal pallets can be flat metal platforms on which goods are stored so that they can be lifted and moved using a forklift truck. These goods are used in moving/lifting loads for transportation purposes as well as in the construction of buildings for storing or lifting materials. The contested pallet racks of metal; buildings, transportable, of metal; containers, and transportation and packaging articles, of metal; metal containers for the storage and transportation of goods; containers of metal for transport; mobile platforms [scaffolding] of metal; modular portable building structures [metal]; portable buildings made principally of metal; structures and transportable buildings of metal; portable cabins of metal; packaging containers of metal; containers of metal [storage, transport]; latticework of metal; gratings of metal; bars for metal railings; laths of metal are a variety of goods that are used in construction of buildings, and/or for moving loads/storing goods for construction, or for transportation purposes. These, therefore, coincide with the opponent’s handling pallets of metal in producer, end user and distribution channels. The goods in comparison can also be used together in construction and/or handling loads. Furthermore, some of them may share the same purpose (e.g. the contested pallet racks of metal are also used for loading/holding loads). It is, therefore, considered that the goods in comparison are at least similar.

Contested goods in Class 20

The contested transport pallets, not of metal; packaging containers of plastic; packaging containers not of metal; packaging containers made of wood; handling pallets, not of metal; loading pallets, not of metal; containers, not of metal [storage, transport]; crates and pallets; crates and pallets, non-metallic; mobile pallets made of non-metallic materials; wooden pallets; plastic bins [other than dustbins] are identical to the opponent’s transport pallets, not of metal; loading pallets, not of metal; containers (not of metal); crates or packaging containers of plastic, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the opponent’s goods.

The contested bed bases are the part of the bed that supports the mattress but it could also be a box-spring, which is a type of bed base typically consisting of a sturdy wooden frame covered in cloth and containing springs. As such the contested goods are made by the manufacturers of furniture, which are also the producers of the opponent’s racks (frames or shelves, usually with bars or hooks, that are used for holding things or for hanging things on, which are also used to furnish and accessorise a room such as a rack for books/magazines or a coat rack). The goods in comparison also coincide in their distribution channels and target the same end user. These are, therefore, considered to be similar.

Contested services in Class 39

Rental of containers for storage of goods; rental of pallets for transport of goods; leasing of pallets for industrial and commercial use; storage; storage of goods are identically contained in both lists of services (including synonyms).

The contested rental of pallets for storage of goods; leasing of pallets for the transport or storage of goods (and taking into account that leasing in English means rental) overlap with the opponent’s leasing of cargo pallets (used for easy handling and storage of goods on ships, for instance), insofar as the services in comparison could be leasing of cargo pallets for transport or storage. The services are, therefore, considered identical.

The contested rental of containers for transport of goods overlaps with the opponent’s leasing of cargo containers, insofar as they both could be rental/leasing of cargo containers for transport. These are, therefore, considered identical.

The contested arrangement of transportation; arranging transport services by land, sea and air; services for the arranging of transportation; collection (is a stage in the process of arranging the transportation and transporting goods), transport and delivery of goods; transport; transport services; car transport; hauling; transportation; delivery of goods; transportation and delivery of goods; transportation of freight; collection of recyclable goods [transport] are all services of organising and providing the transport of certain goods or people. These are identical to the opponent’s transport, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested consultancy services relating to transportation; professional consultancy relating to transport overlap with the opponent´s transportation information insofar as they all concern information services in the form of consultancy regarding transportation. These are, therefore, considered identical.

The applicant claims that the contested services hire of pallet cages; hire of pallet racks; hire of pallet collars are not similar to the opponent’s rental of transport and loading pallets, because, according to the applicant, there is a ‘great structural difference’ between the goods that are subject of these hire/rental services. The Opposition Division considers, however, that as pallet cages, pallet racks, pallet collars, on one hand, and transport and loading pallets, on the other hand, are all goods that are used for loading and transportation of other goods, it is highly likely that the services in comparison would be offered by the same companies. Furthermore, they are provided via the same distribution channels and target the same end user. It is, therefore considered that the contested hire of pallet cages; hire of pallet racks; hire of pallet collars are at least similar to the opponent’s rental of transport and loading pallets.

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 and services found to be identical or similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise (such as those involved in moving cargo). The degree of attention of the relevant public is likely to vary from average to higher than average depending on the specialised nature and the specific prices of the particular goods and services, or terms and conditions of the goods and services purchased (for instance when storage or handling of hazardous goods is concerned).

The signs

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs under comparison (or components thereof) are likely to be associated with some meanings in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public where likelihood of confusion may be higher.

The earlier sign is a figurative mark, consisting of the verbal element ‘PalettenWerk’ written in rather standard, italicised letters, where the letters ‘P’ and ‘W’ are upper- case letters and the rest are lower-case letters, and the letters of the component ‘Paletten’ are bold. A rhomboid-resembling shape in orange and green is depicted on the left hand side of the element ‘PalettenWerk’.

The component ‘Paletten’ of the earlier mark (taking into account that the relevant goods and services are pallets or goods with similar structure and/or purpose and services therefore) is likely to be perceived by significant part of the relevant public as an allusion to the English word ‘pallet’ (in the meaning of ‘a flat wooden or metal platform on which goods are stored so that they can be lifted and moved using a forklift truck’, information extracted from Collins Dictionary on 26/03/2019 at https://www.collinsdictionary.com/dictionary/english/pallet). However, the component does not directly represent the English word ‘pallet’, but it is rather an allusion to it. Therefore, as far as the component ‘Paletten’ is concerned, although it could allude to the nature and/or purpose of the relevant goods and services, its distinctiveness is considered to be slightly lower than average.

The component ‘Werk’ of the earlier mark is likely to be perceived by significant part of the relevant public as a misspelling of the English word ‘work’, as in ‘something which you produce as a result of an activity or as a result of doing your job’/ ‘the things that you are paid or required to do in your job’. Taking into account that provision of goods and services overall is work-related activity, it is considered that this component is weak for the relevant goods and services.

Therefore, it is likely that significant part of the relevant public would perceive the element ‘PalettenWerk’ as a whole as a reference to ‘pallet work’/ ‘work related to pallets’. Taking in to account the relevant goods and services, it is considered that the distinctiveness of the element as a whole is lower than average. Furthermore, the component ‘Werk’ comes to specify and complement the component ‘Paletten’, such as to specify that certain work is done with pallet/s.

Finally, the figurative element of the earlier mark resembles a rhomboid shape, which is not particularly graphically elaborated and therefore its distinctiveness is rather limited.

The contested sign is a figurative sign consisting of the elements ‘PALETTENHELD.COM’ written in black slightly stylised typeface and the figurative depiction in red, grey and black of cartoon figure of super hero with the letter ‘P’ on his chest, placing one of his hands on what appear to be a building structure or pallets. As far as the verbal element ‘PALETTENHELD’ is concerned, neither ‘Palettenheld’, nor ‘Paletten’ exists as such in the English language. However, it follows from case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Therefore, and taking into account the relevant goods and services, the element ‘PALETTENHELD’ of the contested sign is likely to be perceived as a juxtaposition between ‘paletten’ (alluding to ‘pallet’ as specified above) and ‘held’, which has a clear and evident meaning, being the past participle of the word ‘hold’ (‘keeping something in a particular position, storing something’). Bearing in mind that the relevant goods and services are pallets or other carrying/supporting equipment and services thereof (such as transportation of pallets or storage services), it is considered that the component ‘held’ is non-distinctive as it refers to the nature/purpose of the relevant goods and services. As far as the component ‘Paletten’ is concerned a reference is made to the conclusions reached above regarding its perception by the relevant public and distinctiveness, which are equally applicable in the contested sign.

The element ‘PALETTENHELD’ of the contested sign as a whole is likely to be perceived in the meaning of ‘holding pallets’/ ‘pallets that are being held/ kept’ and its distinctiveness in regard to the relevant goods and services is considered to be lower than average. The component ‘held’ furthermore serves to complement the component ‘PALETTEN’, such as to explain what is meant to be done with pallet/s.

Furthermore, the element ‘.COM’ of the contested sign refers to a generic top-level domain, and it only indicates that ‘PALETTENHELD’ is a domain name or name of a website and thus the means of provision (the platform) through which the relevant goods/ services are offered. It is, therefore, considered that the element ‘.COM’ is non-distinctive for the relevant goods and services.

Finally, the building structure/pallets refers to the nature/purpose of the relevant goods and services, being related to pallets/ structures and services thereof; the letter ‘P’ underlines the first letter of the verbal elements of this sign; and the depiction of the super hero is likely to be perceived as durability of the relevant goods and reliability of the services thereof. It is, therefore, considered that the distinctiveness of the figurative element of the sign is limited.

Furthermore, when signs consist of both verbal and figurative components (which is the case of both signs), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The signs in comparison have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘Paletten*e**’, present in the elements ‘PalettenWerk’ in the earlier mark and ‘PALETTENHELD’ in the contested sign. The signs also coincide in the structure of these verbal elements, consisting of the component ‘Paletten’, followed by a four-letter component (albeit in the earlier mark the components are visually defined, while in the contested sign they form a single word). The signs differ in the letters ‘********W*rk’ in the earlier sign and ‘********h*ld’ in the contested sign, as well as in the element ‘.COM’ and typeface of the contested sign and the figurative element and colours of the signs. As the typeface used in the earlier mark is rather standard it does not contribute to the differences between the signs in comparison.

The signs coincide in the beginnings of their verbal elements (‘Paletten’). Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, taking into account what has been stated above regarding the distinctiveness of the elements/components of the signs, the signs are considered visually similar to below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘Paletten*e**’, present identically in both signs. They differ in the sound of the letters ‘********W*rk’ in the earlier sign against ‘********h*ld’ in the contested sign, as well as in the sound of the element ‘.COM’ in the contested sign.

Therefore, taking into account what has been stated above regarding the distinctiveness of the elements/components of the signs, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the elements/components of the marks. As both signs will be perceived as referring to the concept of ‘pallet’, due to the coincidence of the components ‘Paletten’, and taking into account what has been said about the distinctiveness of the components of the signs, the signs are considered conceptually similar to a low degree.

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

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods and services in question, namely all the goods and services in Classes 6, 20 and 39.

Global assessment, other arguments and conclusion

The contested goods and services are identical or similar to the opponent’s goods and services. The degree of attention may vary from average to higher than average when choosing the relevant goods and services.

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.

The signs are visually similar to below average degree, aurally similar to an average degree and conceptually similar to a low degree, for the reasons analysed above.

Although the earlier sign is of a lower than average degree of distinctiveness, this cannot prevent the opposition against the relevant goods and services from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case law that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

It has been noted above that the signs share the component ‘Paletten’, present in the beginning of the verbal elements of both sings. As analysed above, the common component only alludes to the English word ‘pallet’ but it does not represent the word per se, while the remaining verbal elements/components in both signs complement the common component ‘Paletten’ or refer to the online accessibility of the goods/services; and the figurative elements of the signs are considered to be of a limited distinctiveness.

Furthermore, the elements ‘PalettenWerk’ of the earlier mark and ‘PALETTENHELD’ of the contested sign share the same structure, namely the component ‘Paletten’, followed by another four-letter component. While the figurative element of the earlier mark is not particularly graphically elaborated, the figurative element of the superhero and the pallets/building in the contested sign underlines the first letter of the verbal elements and it refers to the nature/purpose and characteristics of the relevant goods and services. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering the visual and aural similarity between the signs and the conceptual link between them, as well as that the shared component is placed in the beginning of both signs, and that the differing components/elements are of a limited distinctiveness (or non-distinctive), it is concluded that at least part of the relevant public may believe that the goods and services in question marked with the signs in question come from the same undertaking or economically linked undertakings even when the level of attention is higher than average.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 462 818. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 12 462 818 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former 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

Zuzanna STOJKOWICZ

Irina SOTIROVA

Claudia ATTINÀ

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.

Latest News

FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
May 28, 2021
For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).
THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
May 27, 2021
Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
UNO & UNA | DECISION 2661950
May 22, 2021
Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)