OPPOSITION No B 2 975 178

Günter Weippert, Zeilbaumweg 30, 74613 Öhringen, Germany (opponent), represented by Patentanwälte Schuster, Müller & Partner mbB, Wiederholdstr. 10, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Business Key, S.L., Pol. Ind. Sector Camps d’en Ricart, Calle Comerç Nº 10, Nave 4 a 9, 08780 Palleja (Barcelona), Spain (applicant), represented by Abaco Propiedad Industrial, Sant Bonaventura, 18 Bajos, 08172 Sant Cugat del Vallès, Spain (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 975 178 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 16 792 921 for the figurative trade mark , namely against all the goods and services in Classes 6 and 35. The opposition is based on international trade mark registration No 1 328 375 designating the European Union for the word mark ‘WT’. 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 and services

The goods and services on which the opposition is based are, after a limitation, the following:

Class 6: Iron and metal goods namely screws, nuts, washers, fasteners [made of steel or stainless steel; metal threaded fasteners; metal screws; metal screw nuts; locksmith’s products and ironmongery; springs [ironmongery]; hooks [ironmongery]; clamping jaws [ironmongery]; sleeves [ironmongery]; pins [ironmongery]; nails; metal bolts; metal dowels [connecting dowels, pins]; metal dowels [wall plugs]; metal rivets; mounting profiles; metal packaging containers.

Class 7: Electric motors, except for farm vehicles; electric motors except for farm vehicles made from plastic; lawnmowers [machines]; self-propelled lawnmowers; self-propelled lawnmowers with (electric, hydraulic) drive; ride-on mowers.

Class 8: Drills [hand tools]; taps [hand tools].

Class 12: Belt pulleys for vehicles; belt pulleys of plastic for land vehicles; electric motors for farm vehicles; electric motors for farm vehicles made from plastic; self-propelled all purpose vehicles; self-propelled all purpose vehicles with (electric, hydraulic) drive.

Class 20: Screws, not metallic; plastic screws with thread, screw nuts, not metallic; nuts (fasteners), not metallic, threaded fasteners, not of metal, dowels [connecting dowels, pins], not metallic; dowels [wall plugs], not metallic; rivets, not metallic; plastic threaded fasteners; metal-substitute plastic fasteners; washers, not metallic, plastic washers, packaging containers.

Class 35: Retail services via the internet relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods; retail services relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods; retail services by means of teleshopping relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods; wholesale services via the internet relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods; wholesale service relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods; mail order sales services namely such services provided online relating to machines [namely machine tools], tools and metal goods [namely screws, nuts, washers, fasteners [made of steel or stainless steel], building materials, DIY products and gardening products, craft supplies and hobby requisites [in the field of scale models, especially scale models aeroplanes, or toys], fasteners for electrical goods and electronic goods.

After a limitation, the contested goods and services are the following:

Class 6: 5-Sides tees; 90º-Crosses; 90º-Tees; Arrester water hammers; Balls for valves; Bibcocks; Butterfly handles; Caps; Collars; Connections; Control rod sets for elastic joints; Couplings; Crossovers; Elbows; Extension fittings; Filters and backflow preventers; Flanges; Flexible hoses; Handle sleeves; Handles; Handwheels; Multilayer pipe rolls; Nipples; Nipples; Nuts; O’rings; Pressing tongs; Sealing clamps; Side-outlet elbows; Sieve’s filters; Spare part gaskets; Square handles; Strainer for valves; Stubs ends; U-Bolts; Unions; Valves; Water tightness o’ rings; Y connections; all of them related to water metal ducts.

Class 35: Retailing in shops of 5-Sides tees, 90º-Crosses; 90º-Tees, Arrester water hammers, Balls for valves, Bibcocks, Butterfly handles, Caps, Collars, Connections, Control rod sets for elastic joints, Couplings, Crossovers, Elbows, Extension fittings, Filters and backflow preventers, Flanges, Flexible hoses, Handle sleeves, Handles, Handwheels, Multilayer pipe rolls, Nipples, Nipples, Nuts, O’rings, Pressing tongs, Sealing clamps, Side-outlet elbows, Sieve’s filters, Spare part gaskets, Square handles, Strainer for valves, Stubs ends, U-Bolts, Unions, Valves, Water tightness o’rings, Y connections, all of them related to water metal ducts.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

WT
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 earlier mark consists of the meaningless word element ‘WT’ and is therefore distinctive for the goods and services for which the trade mark is registered.

The contested mark is a figurative trade mark consisting of the letters ‘M’, in a standard bold upper case font in dark-blue, followed by ‘T’, in a bold upper case italic font in light-blue. The verbal element ‘MT’ is meaningless and therefore distinctive in respect of the goods and services for which registration is sought.

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

Visually, the signs coincide in their last letter, ‘T’. They differ in their first letters, ‘W’ in the earlier sign and ‘M’ in the contested sign. In addition, the signs differ in the figurative element of the contested sign.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression.

The opponent argues that ‘if you turn round the first letter of the Applicant’s Mark you get letter “W”’ and claims that the marks are ‘visually very similar’.

However, the Opposition Division sees no reason for the relevant public to turn any of the letters of the earlier trade mark upside down and, taking into account its lack of stylisation and meaning, considers that it will be perceived exactly as it is written, as ‘WT’. The same applies for the contested trade mark.

Both marks are thus very short signs and the public will be able to perceive all of their individual elements.

Therefore, contrary to the opponent’s opinion, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides only in the sound of the last letter, ‛T’, present identically in both signs, and differs in the sound of the first letters.

This difference has a varying impact on the signs’ pronunciation, since, depending on the language of the public concerned, the difference may be greater or smaller.

However, regardless of the way in which the differing letters are pronounced, the signs cannot be aurally identical, as the opponent claims based on the assumption that the public will upend the first letter of the signs.

Therefore, since the differing letter is the first and more memorable letter, the degree of aural similarity between the signs is in any event below average.

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.

In this regard, the opponent claims that the earlier mark has ‘a high degree of inherent distinctiveness in relation to the goods and services claimed since they have no meaning per se in a language, e.g. the English language’.

It is the Office’s practice, when an earlier mark is not descriptive (or otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

In the present case, the opponent did not file any evidence to prove the enhanced distinctiveness of the earlier mark. 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 and services 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 and services were assumed to be identical, and they target a professional public and the public at large with a degree of attention varying from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar only to a low degree and aurally similar to a below average degree, given the commonalities resulting from their coinciding last letter, ‘T’. They have no concept in common that would lead the public to think that the goods and services come from the same or linked undertakings.

The signs in dispute both only contain two letters and are, consequently, short marks. The fact that they differ in one letter is considered a relevant factor when evaluating the likelihood of confusion between them. The Opposition Division considers that the difference in the marks’ first letters will significantly alter consumers’ perception of the signs, so that consumers will primarily perceive two different, albeit partly coinciding, combinations of letters.

Considering all the above, and even assuming that the goods and services are identical, the signs are not sufficiently similar to lead to a likelihood of confusion on the part of the public.

Therefore, 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, he 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

Denitza STOYANOVA-VALCHANOVA

Sofia SACRISTAN MARTINEZ

Martin EBERL

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.