OPPOSITION No B 2 936 709

Metalogenia, S.A., Paseo San Juan Bautista La Salle, 40, 08330, Premia de Mar (Barcelona), Spain (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001, Madrid, Spain (professional representative)

a g a i n s t

MTG AG, Dolivostrasse 11, 64293 Darmstadt, Germany (applicant), represented by Lenzing Gerber Stute Partnerschaftsgesellschaft Von Patentanwälten M.B.B., Bahnstraße 9, 40212 Düsseldorf, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 936 709 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 16 676 801 ‘mtG’. The opposition is based on European Union trade mark registration No 366 021 ‘MTG’ and Spanish trade mark registration No 2 045 267 ‘MTG’. The opponent invoked Article 8(1)(b) EUTMR.

MTG	mtG
Earlier trade marks	Contested sign

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 and services

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

Class 7: Excavating machines, loading shovels and, in general, machines for land removal and public works; spare parts and tools (parts of machines) for the same; machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements.

The contested goods and services are the following:

Class 9: Computer hardware and software products for authentication of machines, people and communication channels; encoding hardware and encoding software for secure communication of data between machines and/or people on networks.

Class 38: Telecommunications between machines and/or people on the basis of encryption and decryption technologies and cryptographic methods.

Class 42: Design and development of IT security software and hardware for authentication of machines, people and communication channels, and technical consultancy and research relating thereto; encryption and decryption of data for secure communication between machines and/or people in networks; creating individual software for internet applications.

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 mark covers computer hardware and software, telecommunications and IT services, all being in relation to security technology. These goods and services do not show any similarity in terms of nature, origin, purpose, method of use and distribution channels with the goods of the earlier mark which belong to the following areas: machines for public works and their parts; machines and machine tools; motors and engines; transmission components and agricultural implements.

In its observations of 17/01/2018, the opponent argues that a close complementarity exists between its goods and the applicant’s goods and services and adds that they are in competition.

In this regard, it is appropriate to recall that goods and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40).

Likewise, goods and services are in competition with each other when one can substitute the other, or, in other words, when they serve the same or a similar purpose and are offered to the same actual and potential customers. In which case, the goods/services are also defined as ‘interchangeable’ (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 42).

The fact that some of the opponent’s goods in Class 7, such as machines and machine tools and agricultural implements, might use software or hardware does not constitute an indication of similarity. The opponent could argue that the software or computer hardware is essential to the use of the machines; however, they are not complementary because they do not target the same public. Indeed, machines and agricultural implements target the specialised public in industry, agriculture or the public works sector, whereas the software and hardware products target the actual manufacturers of these machines and implements. As the goods and services are intended for different publics, they cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30) nor in competition because they are obviously not substitutable.

Considering all the above, it is concluded that all of the contested goods and services are dissimilar to the opponent’s goods.

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.

The previous cases referred to by the opponent are not relevant to the present proceedings because the goods dealt with in these cases are not the same as those at issue. Indeed, Decision 1070/2005-4 of the Fourth Board of Appeal of 30/11/2007 referred to goods in Class 11 namely heating and refrigerating apparatus and Decision B 899 676 of the Opposition Division of 29/01/2008 referred to specific goods in Class 9, namely electric and electronic apparatus and instruments versus electrically operated commercial, domestic, household and kitchen apparatus, instruments and machines in Class 7.

Furthermore, these decisions were issued almost 10 years before the filing of this opposition and, therefore, cannot be taken into account since the practice of the Office has evolved significantly since then.

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 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

Jose Antonio GARRIDO OTAOLA

Richard BIANCHI

Julie, Marie-Charlotte HAMEL

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.