OPPOSITION No B 3 045 237

Gesellschaft für Wolfram Industrie mbH, Permanederstraße 34, 83278 Traunstein, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

WSD Distributor, SL, Pol. Ind. "El Prado". C/ Zaragoza, Parcela 5, Nave 6, 06800 Mérida (Badajoz), Spain (applicant), represented by Eurokonzern, C/Marceliano, Santa María 9-bajo, 28036 Madrid, Spain (professional representative).

On 05/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 045 237 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 17 538 703 for the figurative mark . The opposition is based on international trade mark registration No 928 600 designating the European Union and German trade mark registration No 306 51 961, both for the word mark ‘WS2’. 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.

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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:

German trade mark registration No 306 51 961

Class 6: Common metals and their alloys; tungsten; molybdenum; alloys of tungsten or molybdenum; goods of common metal (included in Class 6); articles of tungsten or molybdenum (included in Class 6); metal powder for the production of electrodes and heat sinks; welding rods of metal (brazing and soldering).

Class 7: Welding electrodes.

Class 9: Arc electrodes, electrodes for discharge lamps, lamp electrodes, electrodes for applying coatings, electrodes for plasma spraying process; heatsink for electrodes; electrode material, pipe welding nozzles as parts of electric welding equipment.

Class 10: Electrodes for medical purposes.

International trade mark registration No 928 600

Class 6: Common metals and their alloys; tungsten; molybdenum; alloys of tungsten and molybdenum; goods of common metal (included in this class); goods of tungsten and molybdenum (included in this class); metal powder for the manufacture of electrodes and circuit distributors; rods of metal for brazing and welding.

Class 9: Welding electrodes, arc electrodes, electrodes for discharge lamps, lamp electrodes, electrodes for use in thermal spray coating, electrodes for use in plasma spraying; circuit distributors for electrodes; tube welding nozzles as parts of electric welding apparatus.

Class 10: Electrodes for medical use.

The contested goods and services are the following:

Class 1: Chemicals used in industry, science and photography, as well as agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fertilizers for soil; fire extinguishing compositions; manures, fire extinguishing compositions, tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives for industry.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal, metal materials for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores.

Class 7: Electric welding machine; electronic welding apparatus.

Class 9: Welding electrodes; welding lids.

Class 37: Repair and installation of transportable buildings of metal, ironmongery and items of metal hardware and electric welding apparatus, for automated systems and automatic machines.

Class 39: Packing and transportation of goods.

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 the goods of the earlier marks 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 (e.g. safes) and at business customers with specific professional knowledge or expertise in, for instance, the chemical, building and transport sectors. The level of attention is expected to be rather high, as the price of some of these goods and services can be quite high, they are infrequently obtained for a specific purpose and the nature and conditions of these goods and services is also quite specialised.

c) The signs

WS2
Earlier trade marks	Contested sign

The relevant territory is the European Union and Germany.

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 marks are word marks composed of the string of letters ‘WS’ followed by the numeral ‘2’.

The contested sign is a figurative mark consisting of the string of letters ‘WSD’, with the letters ‘W’ and ‘D’ in fairly standard bold upper-case letters on either side of the highly stylised letter ‘S’.

The string of letters ‘WS’ of the earlier marks and the string of letters ‘WSD’ of the contested sign do not refer to anything in particular with respect to the relevant goods and/or services and are, as a whole, distinctive. The numeral ‘2’ in the earlier marks will be associated with something numbered two, having two units, being the second version or denoting the second-generation product (i.e. an improved version) of the same line of goods, etc. Since this number brings to mind certain characteristics of the goods at issue, the element ‘2’ is at most weak. Given that, the most distinctive element of the earlier mark is the string of letters ‘WS’.

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. Signs with three or less letters and/or numbers are considered by the Office as short signs.

Visually, the signs coincide in the letters ‘W’ and ‘S’, although in the contested sign the latter is in italic, quite stylised, twice as large as the other letters and very eye-catching. The marks differ in that the earlier marks end with the number ‘2’, while the contested sign ends with the letter ‘D’.

Taking into account the fact that the earlier marks and the contested sign are short, it is considered that the differences between them, the endings, which differ both visually and in that one is a number and the other a letter, and in particular the highly stylised letter ‘S’ in the contested sign, will not go unnoticed by the relevant consumers when they perceive the marks visually. Furthermore, the number ‘2’ of the earlier marks is of very limited impact owing to its reduced distinctive character, as explained above.

Considering the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier marks. Therefore, the signs are visually similar to a very low degree.

Aurally, the signs coincide in the sounds of the letters ‘W’ and ‘S’. The marks differ in the fact that in the earlier marks the number ‘2’ is pronounced according to the different pronunciation rules in different parts of the relevant territory, for instance ‘twee’ (Dutch), ‘two’ (English), ‘zwei’ (German), ‘due’ (Italian), ‘dos’ (Spanish), whereas the contested sign ends with the sound of the letter ‘D’. As can be seen, in some languages the number ‘2’ is also pronounced as starting with the letter ‘D’.

Considering the aforementioned, the signs are aurally similar to, at best, an average degree, in particular in those languages in which the number ‘2’ is pronounced as beginning with the sound of the letter ‘D’.

Conceptually, neither of the strings of letters ‘WS’ and ‘WSD’ has a meaning for the public in the relevant territory. However, the only meaningful element identified in the signs is the numeral ‘2’ of the earlier marks. Consequently, the earlier marks and the contested sign would not be conceptually similar, as the earlier marks have a meaning and the other not. However, as this numerical element is rather weak, the conceptual difference created has a limited impact.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of an, at most, weak element in the marks, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

All the contested goods and services are assumed identical to the goods of the earlier marks and are directed at both the public at large and a more specialised public whose level of attention is rather high. The earlier marks as a whole have a normal degree of distinctiveness.

The signs are visually similar to a very low degree, aurally to, at best, an average degree and conceptually not similar. Even though the marks have some letters in common, namely ‘W’ and ‘S’, the latter is very stylised in the contested sign and the earlier marks end with a numeral versus a letter ‘D’ in the contested sign. These differences all significantly affect the overall impression of the signs.

An examination of the similarity between the signs must take account of the overall impressions produced by those signs, since the consumer normally perceives a sign as a whole and does not examine its individual details. Taking into account the fact that the earlier marks are short marks, as well as is the contested sign, the visual and aural differences between the signs are all the more clearly noticeable.

Also, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not necessarily pay attention to the fact that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, bearing in mind all the afore mentioned, it is considered that the differences between the signs are clearly perceivable and sufficient to exclude any likelihood of confusion or association between them, despite covering goods/services that are assumed to be identical, for the relevant public. This is even more the case since the level of attention of the consumers is rather high and they are even better able to distinguish between the marks.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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

Klaudia MISZTAL

Chantal VAN RIEL

Marta GARCÍA COLLADO

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.