OPPOSITION No B 2 951 724

Pool Line Accesorios, S.L., Esqueix, 19, Poligono Industrial Can Barri, 08415, Bigues i Riells, Spain (opponent), represented by PCP Abogados, Calle Balmes 205, 6º 2ª, 08006, Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen JieTu Sci&Tech Co., Ltd., 6th Floor A Building Qiaode Science & Technology Park, Seven Road, Guangming New District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018, Paris, France (professional representative).

On 23/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 951 724 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 767 105 for the figurative mark , namely against some of the goods in Class 12. The opposition is based on, inter alia, European Union trade mark registration No 13 606 281 for the figurative mark . 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 12: Wiping blades for windshield wipers.

The contested goods are the following:

Class 12: Air pumps [vehicle accessories]; anti-theft devices for vehicles; upholstery for vehicles; anti-theft alarms for vehicles; cigar lighters for automobiles.

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 air pumps [vehicle accessories] are devices for inflating tires of vehicles; anti-theft devices for vehicles and anti-theft alarms for vehicles are devices and/or systems designed to prevent theft; upholstery for vehicles is the soft coverings on seats that makes them more comfortable to sit on; cigar lighters for automobiles are small devices integrated into the front of vehicles used to light cigarettes. It is apparent that none of these goods is sufficiently related to the opponent’s wiping blade for windshield wiper. Their natures, intended purposes and methods of use are completely different, since wiping blades for windshield wipers are components of windshield wipers, that is, devices that wipe rain from a vehicle’s windscreen. Therefore, none of the goods are in competition, and the use of the opponent’s goods is neither essential nor significantly important for the use of the contested goods. While the former can clearly be grouped as spare parts for vehicles, which are frequently bought by consumers for maintaining their cars and, therefore, produced by companies specialising in the manufacturing of spare parts for vehicles, the latter essentially relate to either accessories for vehicles (e.g. air pumps, anti-theft devices and alarms) or parts or fittings of vehicles that are not generally sold separately from vehicles but integrated (e.g. upholstery and cigar lighters).
The expertise needed to make the contested goods is also entirely different from the expertise required to manufacture the opponent’s goods. Therefore, the goods under comparison are normally produced by different highly specialised companies. Moreover, they differ in their distribution channels. Even though some of the goods under comparison might be found in the same outlet, they will not be placed in the same section or next to each other. Consequently, they are also distributed through different channels.

Although it is observed that the goods under comparison are all used in relation to vehicles, it must be borne in mind that the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product (in this case vehicles) and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61), let alone between spare parts of a particular finished product versus accessories and/or parts of a particular finished product. Furthermore, the general public knows that the automobile industry is complex and there are various kinds of companies involved in the production of vehicles and that a vehicle incorporates many items from many sources that have been manufactured by others and also numerous accessories for vehicles are manufactured by different companies. Therefore, the contested goods are dissimilar to the opponent’s goods.

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

Rosario GURRIERI

María del Carmen COBOS PALOMO

Adriana VAN ROODEN

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.