OPPOSITION No B 3 053 542

Shantui Construction Machinery Co., Ltd., No. 58 Taibailou East Road, Jining, Shandong, People's Republic of China (opponent), represented by Ingenias, Av. Diagonal, 421,2º, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Shantui Europe, Hoge Rijndijk 322, 2314AN Leiden, The Netherlands (applicant).

On 15/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 053 542 is partially upheld, namely for the following contested goods:

Class 7: Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; sweeping, cleaning and washing machines; current generators; machines and machine tools for treatment of materials; pumps, compressors and fans; moving and handling equipment; industrial robots; feeders [parts of machines]; feeders for machines; drive transmissions, other than for land vehicles; drive mechanisms for machine tools; power transmission belts for industrial machines; power transmission belts for agricultural machines; propulsion mechanisms, other than for land vehicles; drive pulleys for power transmission belts of industrial machines; drive pulleys for power transmission belts of agricultural machines; driving belts, other than for land vehicles; drive mechanisms; indexing drive machines; wheels and tracks for machines; drive units, other than for land vehicles; driving chains for machines; driving chains, other than for land vehicles; power trains for sea craft; spur wheels [parts of machines]; friction wheels for machines; machine wheelwork; worm wheels for machines; machine wheels; machine fly-wheels; gear wheels for machines; toothed wheels for driving chains; rubber tracks for use with crawlers on mining machines; rubber tracks for use with crawlers on construction machines; rubber tracks being parts of crawlers on mining machines; rubber tracks being parts of crawlers on agricultural machines; rubber tracks being parts of crawlers on loading-unloading machines and apparatus; rubber tracks being parts of crawlers on construction machines; roller tracks for use in belt conveyor apparatus; roller tracks for use in roller conveyor apparatus; bucket wheels; rubber tracks for use with crawlers on loading-unloading machines and apparatus; rubber tracks for use with crawlers on agricultural machines.

Class 12: Vehicles and conveyances.

2. European Union trade mark application No 17 871 205 is rejected for all the above goods. It may proceed for the remaining goods, namely the following:

Class 7: Laundering machines; machines and machine tools for manufacturing; dispensing machines.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 871 205 for the word mark ‘SHANTUI’. The opposition is based on international trade mark registration No 895 616 for the figurative mark designating Benelux, Bulgaria, Latvia, Lithuania and Romania. 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

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

Class 7: Bulldozers; carry scrapers; road rollers; loaders; trimming dozers; pipelayers; motor graders; excavators; track shoe assemblies; torque converters.

The contested goods are the following:

Class 7: Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; sweeping, cleaning, washing and laundering machines; current generators; machines and machine tools for treatment of materials and for manufacturing; pumps, compressors and fans; moving and handling equipment; industrial robots; dispensing machines; feeders [parts of machines]; feeders for machines; drive transmissions, other than for land vehicles; drive mechanisms for machine tools; power transmission belts for industrial machines; power transmission belts for agricultural machines; propulsion mechanisms, other than for land vehicles; drive pulleys for power transmission belts of industrial machines; drive pulleys for power transmission belts of agricultural machines; driving belts, other than for land vehicles; drive mechanisms; indexing drive machines; wheels and tracks for machines; drive units, other than for land vehicles; driving chains for machines; driving chains, other than for land vehicles; power trains for sea craft; spur wheels [parts of machines]; friction wheels for machines; machine wheelwork; worm wheels for machines; machine wheels; machine fly-wheels; gear wheels for machines; toothed wheels for driving chains; rubber tracks for use with crawlers on mining machines; rubber tracks for use with crawlers on construction machines; rubber tracks being parts of crawlers on mining machines; rubber tracks being parts of crawlers on agricultural machines; rubber tracks being parts of crawlers on loading-unloading machines and apparatus; rubber tracks being parts of crawlers on construction machines; roller tracks for use in belt conveyor apparatus; roller tracks for use in roller conveyor apparatus; bucket wheels; rubber tracks for use with crawlers on loading-unloading machines and apparatus; rubber tracks for use with crawlers on agricultural machines.

Class 12: Vehicles and conveyances.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 7

The contested agricultural, earthmoving, construction, oil and gas extraction and mining equipment; machines and machine tools for treatment of materials; moving and handling equipment consist of machines and equipment designed to be used for various specific purposes (agriculture, earthmoving, construction, oil and gas extraction and mining, treatment of materials, moving, handling, etc.). The opponent’s bulldozers; carry scrapers; loaders; trimming dozers; motor graders and excavators consist of machinery and equipment typically used in construction, agriculture, mining and minerals extraction, treatment of materials, moving and handling, earthmoving, etc. Some of the contested goods consist of broader categories which include the opponent’s goods or, in any case, cannot be clearly separated from them (e.g., earthmoving and construction equipment include or at least overlap with the opponent’s bulldozers; loaders). In any case, even if the contested goods are not all identical to the earlier goods, it is clear that they have relevant characteristics in common. Indeed, they all consist of machinery and equipment which may be used in the same market sectors, as defined above; it follows that they coincide at least partly in nature and ultimate purpose. These goods normally originate from the same undertakings, target the same consumers and are distributed through the same channels. Consequently, the aforementioned contested goods are considered similar at least to an average degree to the opponent’s bulldozers; carry scrapers; loaders; trimming dozers; motor graders and excavators.

The contested feeders [parts of machines]; feeders for machines; drive transmissions, other than for land vehicles; drive mechanisms for machine tools; power transmission belts for industrial machines; power transmission belts for agricultural machines; propulsion mechanisms, other than for land vehicles; drive pulleys for power transmission belts of industrial machines; drive pulleys for power transmission belts of agricultural machines; driving belts, other than for land vehicles; drive mechanisms; indexing drive machines; wheels and tracks for machines; drive units, other than for land vehicles; driving chains for machines; driving chains, other than for land vehicles; power trains for sea craft; spur wheels [parts of machines]; friction wheels for machines; machine wheelwork; worm wheels for machines; machine wheels; machine fly-wheels; gear wheels for machines; toothed wheels for driving chains; rubber tracks for use with crawlers on mining machines; rubber tracks for use with crawlers on construction machines; rubber tracks being parts of crawlers on mining machines; rubber tracks being parts of crawlers on agricultural machines; rubber tracks being parts of crawlers on loading-unloading machines and apparatus; rubber tracks being parts of crawlers on construction machines; roller tracks for use in belt conveyor apparatus; roller tracks for use in roller conveyor apparatus; bucket wheels; rubber tracks for use with crawlers on loading-unloading machines and apparatus; rubber tracks for use with crawlers on agricultural machines consist of parts for specific machinery (feeders, drive and power transmissions, driving chains, machines wheelwork, gear wheels, bucket wheels, rubber tracks, etc.), intended to be used in agriculture, construction, industry, mining and loading-unloading. The opponent’s track shoe assemblies and torque converters are also specific parts of complex machines. Track shoe assemblies consist of track chains for heavy vehicles and are used in construction and mining machines, crawlers, excavators, etc. Torque converters are a type of coupling which transfers rotating power from a prime mover, like an internal combustion engine, to a rotating driven load. In a vehicle with an automatic transmission, the torque converter connects the power source to the load. It follows that, even if they differ in their specific purpose, the contested goods coincide partially in nature with the opponent’s track shoe assemblies and torque converters, inasmuch as they are all parts of complex machinery, which may be used for the same ultimate purposes (in agriculture, construction, industry, mining and loading-unloading). These goods may have the same origin and target the same consumers, through the same distribution channels. Therefore, they are considered similar.

The contested sweeping, cleaning and washing machines; current generators; pumps, compressors and fans; industrial robots consist of machines designed to be used for sweeping, cleaning and washing, current generation, pumping and compressing, in industrial processes, etc. For instance, the contested washing machines are used, inter alia, in minerals extractions, quarry and mining industry to effectively eliminate the soil and clay that accompanies the aggregate. Although these contested goods have different specific purposes, they have relevant characteristics in common with the opponent’s bulldozers; carry scrapers; loaders; trimming dozers; motor graders and excavators. Indeed, the latter may be adapted for operations such as sweeping, cleaning and washing (e.g., when heavy equipment is used to clean roads and other infrastructures). Likewise, the contested current generators; pumps, compressors and fans; industrial robots may be used onsite in complex construction or mining operations or be specifically adapted to fit the needs of construction and mining companies (e.g., pumps and fans for mining works), where they often also form part of the machinery necessary to carry on the necessary works. It follows that these goods will often target the same professional customers and be available through the same specialised distribution channels. In addition, they may originate from the same undertakings, depending on their specific field of application, and may be complementary. Therefore, they are similar to at least a low degree.

The contested laundering machines are devices used to wash laundry. The contested machines and machine tools for manufacturing are industrial equipment and machinery used in the manufacture of other goods (such as the machinery in a manufacture line in a factory). The contested dispensing machines are automated machines that provide items such as snacks, beverages, cigarettes, soap, press or lottery tickets to consumers. These contested goods have no relevant characteristics in common with the opponent’s bulldozers; carry scrapers; road rollers; loaders; trimming dozers; pipelayers; motor graders; excavators; track shoe assemblies; torque converters. As previously explained, the opponent’s goods are machines used in construction, agriculture, mining and minerals extraction, treatment of materials, moving and handling, earthmoving, etc. It follows that these goods differ fundamentally in their specific function and purpose. They are neither complementary nor in competition and do not originate from the same undertakings. They satisfy manifestly different consumer needs and, consequently, target different sections of the public, through different channels of commerce. Therefore, they are dissimilar.

Contested goods in Class 12

The contested vehicles and conveyances are a broad category which includes a variety of goods such as wheeled vehicles, fork lift trucks, freight carrying vehicles and heavy duty trucks. Some of these vehicles may be specifically adapted for the transportation of goods (cargo, raw materials) in the context of construction and mining operations. Therefore, they share relevant characteristics in common with the opponent’s bulldozers and loaders in Class 7, which are also wheeled equipment often used in construction and mining. The market reality shows that, even if they have a different specific purpose, these specialised heavy machines (trucks and heavy duty transport vehicles on the one hand and bulldozers/loaders on the other) often originate from the same undertakings, which specialise in these commercial sectors (construction, mining) and in the production of such heavy equipment. It follows that these goods may have the same commercial origin, target the same users and be sold through the same channels. In addition, they coincide partly in their nature (heavy duty wheeled equipment). Therefore, they are considered similar.

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 found to be similar (to different degrees) 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 specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	SHANTUI
Earlier trade mark	Contested sign

The relevant territories are Benelux, Bulgaria, Latvia, Lithuania and Romania.

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 verbal element ‘SHANTUI’, which comprises the contested sign and is the only verbal element in the earlier mark, has no meaning for the relevant public and is, therefore, distinctive in relation to the relevant goods.

The earlier mark is a figurative mark composed of the verbal element ‘SHANTUI’ (in standard blue upper case letters) and an abstract figurative element portrayed above it in yellow, on a light blue rectangular background. The use of rectangles and coloured letters for marketing purposes is a standard commercial practice. Therefore, the stylisation, colours and background of the sign are considered weak, as the public will attach little trade mark significance to these elements. On the other hand, the abstract figurative shape is considered normally distinctive, as it displays a certain degree of fancifulness.

The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements

Visually, the verbal element ‘SHANTUI’, which constitutes the contested sign, reproduces identically the only verbal element of the earlier mark. The signs differ in the figurative and stylisation features of the earlier mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, taking into consideration the aforementioned principle, as well as the normal distinctiveness of the coinciding element ‘SHANTUI’ in relation to the relevant goods, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides entirely, since they share the same verbal element, ‘SHANTUI’, whereas the figurative elements of the earlier mark have no impact in the aural comparison. It follows that the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The Opposition Division considers that the figurative element of the earlier mark is of an abstract and fanciful nature and will not be associated with any specific semantic content. Therefore, 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods in Classes 7 and 12 are partly similar (to different degrees) and partly dissimilar to the goods covered by earlier international trade mark registration No 895 616 designating Benelux, Bulgaria, Latvia, Lithuania and Romania.

The earlier mark is distinctive to an average degree.

The signs under comparison are visually highly similar and aurally identical, on account of the coincidences between the contested sign as a whole, ‘SHANTUI’, which fully reproduces identically the only verbal element of the earlier mark. The conceptual aspect does not influence the assessment of the similarity of the signs, as none of them conveys a meaning for the relevant public.

It must be noted that according to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

As explained above in section c) of this decision, the relevant consumers will not afford considerable attention to the figurative and stylisation features of the earlier mark, because they will be perceived as standard graphic means of bringing the verbal element in question to their attention. Therefore, consumers will focus their attention essentially on the element ‘SHANTUI’ of the earlier mark, portrayed in rather standard letters therein, as they will perceive it as the main indicator of commercial origin contained in the sign.

It must be noted that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Consequently, the Opposition Division considers that the significant similarities between the marks under comparison are sufficient to lead to a likelihood of confusion, even for the highly attentive consumers.

Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, it is considered that the high degree of visual similarity and the aural identity between the signs outweighs and offsets the low similarity in relation to some of the contested goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 895 616 designating Benelux, Bulgaria, Latvia, Lithuania and Romania.

It follows from the above that the contested trade mark must be rejected for all the goods found to be similar (to different degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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 Opposition Division

Liliya YORDANOVA	Gueorgui IVANOV	Anna MAKOWSKA

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.