CANCELLATION No 23262 C (INVALIDITY)

Dieselland OÜ, Võru 139, Tartu, Estonia (applicant), represented by Patent Agency KDK, Dzerbenes iela 27, Riga, Latvia (professional representative)

a g a i n s t

Sergej Helmle, Geierstrasse 33, Kelheim, Germany; Oleksandr Lyapun, Tsiolkovskiy Str. 5/1, 14, Khmelnitsky, Ukraine; Dmytro Aleksandrovich Pashynskyi, Shevchenko Str. 58/49, Khmelnitsky, Ukraine (EUTM proprietors), represented by Von Füner, Ebbinghaus, Finck, Hano, Mariahilfplatz 3, München, Germany (professional representative).

On 29/04/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 17 620 402 is declared invalid for some of the contested goods, namely:

Class 7: Machines for repair of diesel fuel conveying systems and machine tools.

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 7: Motors and engines [except for land vehicles]; machine coupling and transmission components [except for land vehicles].

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 620 402 ‘CR-JET’. The application is based on, inter alia, international trade mark registration No 1 366 261 ‘CR-JET’ designating United Kingdom, Spain, Poland, Slovakia and Slovenia. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that due to the identity of signs and identity/similarity of goods and services, there is double identity or likelihood of confusion respectively.

The EUTM proprietor did not submit any observations in reply.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(a) and 8(1)(b)EUTMR

A double identity exists when an earlier trade mark is identical with the contested trade mark and the goods or services for which the latter is registered are identical with the goods or services for which the earlier trade mark is protected. The wording of Article 8(1)(a) EUTMR clearly requires identity between both the signs concerned and the goods/services in question. Whether there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods/services in question.

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 signs

CR-JET	CR-JET
Earlier trade mark	Contested trade mark

The signs are identical.

1. The goods and services

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 goods and services on which the application is based are the following:

Class 9: Diesel injector testers; test bench equipment for diesel injectors; calibrating apparatus; fuel consumption measuring apparatus; counters; manometers; pressure measuring apparatus; gauges with digital readout; measuring instruments; measures; diagnostic apparatus, not for medical purposes; computers; computer software.

Class 37: Repair, maintenance and installation of apparatus and equipment for use in motor vehicle service shops, excluding maintenance, fueling and washing services for automotive vehicles, airplanes, and other powered craft rendered at service stations and airport terminals.

The contested goods are the following:

Class 7: Machines for repair of diesel fuel conveying systems and machine tools; motors and engines [except for land vehicles]; machine coupling and transmission components [except for land vehicles].

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers.

Contested goods in Class 7

The contested machines for repair of diesel fuel conveying systems and machine tools are similar to the applicant’s goods diesel injector testers; test bench equipment for diesel injectors. These goods can have the same providers, distribution channels and relevant public.

The contested motors and engines [except for land vehicles]; machine coupling and transmission components [except for land vehicles] are dissimilar to the goods and services on which the application is based, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kind of undertakings. Furthermore, it is clear from the limitation except for land vehicles that these contested goods do not cover motors, engines, machine coupling and transmission components for land vehicles when the earlier services in Class 37 are explicitly limited to services in relation to motor vehicles.

Contested goods in Class 9

Measuring instruments are identically contained in both lists of goods.

The contested monitoring instruments, indicators and controllers; measuring indicators and controllers are included in the broad category of, or overlap with, the applicant’s measuring instruments. Therefore, they are identical.

The contested detecting instruments, indicators and controllers are included in the broad category of, or overlap with, the applicant’s diagnostic apparatus, not for medical purposes. Therefore, they are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, namely measuring, detecting and monitoring instruments, indicators and controllers are identical. Therefore, the cancellation application must be upheld pursuant to Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR for these goods. Furthermore, the contested machines for repair of diesel fuel conveying systems and machine tools are similar to some goods covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR in conjunction with Article 60(1)(a) EUTMR and the cancellation application is upheld also insofar as it is directed against these goods. The rest of the contested goods are dissimilar. As identity/similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR in conjunction with Article 60(1)(a) EUTMR, the cancellation application based on Article 8(1) EUTMR cannot be successful for these goods.

The applicant has also based its cancellation application on the Latvian trade mark registration No M 71 880 for the word mark ‘CR-JET’.

Since that mark is identical to the one already compared and cover the same goods and services, the outcome cannot be different. Therefore, there is neither identity nor likelihood of confusion for those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Irina SOTIROVA

Richard BIANCHI

Lucinda CARNEY

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.