OPPOSITION No B 3 058 448

Fibro GmbH, Weidachstrasse 41-43, 74189 Weinsberg, Germany (opponent), represented by Staeger & Sperling Partg mbB, Sonnenstr. 19, 80331 München, Germany (professional representative)

a g a i n s t

Shenzhen Yuzhan Precision Technology Co. Ltd, Section B, Foxconn, Hongguan Science & Technology Park, Fucheng-Dasan Community, Guanlan Office, Longhua, New District, Shenzhen, Guangdong, China (applicant), represented by Urquhart-Dykes & Lord Llp, Arena Point, Merrion Way, Leeds LS2 8PA, United (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 448 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against the goods of European Union trade mark application No 17 886 310 for the figurative mark . The opposition is based on European Union trade mark registrations No 4 514 816 and No 15 683 352, both for the word mark ‘FIBRO’. 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 mark 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 mark 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.

1. The goods

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

EUTM No 4 514 816

Class 1: Marker paints, quick-acting cyanoacrylate adhesives, epoxy resin, resin, casting resin, in particular with an epoxy resi ...Show moren base, oil, high-performance oil, adhesives, leak-detecting spray, metal adhesive accessories, solvents, metal adhesives, structural adhesives, structural spray, high-performance spindle oil, polyurethane, polyurethane forming material, rust inhibitors, lubricants, quick-acting cleaners, spindle oil, punch lubricating oil, solid lubricants, releasing agents, mainly with a silicon oil base, releasing agents, mainly with a wax base, thinners for resin.

Class 7: Machines and machine tools; tools as parts of machines; standard specifications for tool construction, namely pressure s ...Show moreprings, pressure pins, tuning discs, strippers, stripping tools, starter discs, screw-down columns, retention bolts for round springs, control bars, retention sockets for springs, retention sockets for clipping punches, retention plates for clipping punches, ejector sockets, ejector guides, limit guides for conveyor belts, drill bushes (with and without collars), bolt guides, bushes, flange sleeves, head posts, data stamps, damping discs, cover strips, distance plates, distance sleeves, spacers and distance sleeves for ball bearing cages, triangular profiles, triangular hollow bars, triangular bars, pressure springs, pressure plates, press pins for clipping punches, thrust-carrying members, adapting sleeves, charging tools for sprung thrust-carrying members, die spigots, injection cartridges, injector guns, position adapters with position controls, follow-on composite tools, technical attachments, expansion bellows, spring blocks, spring bolts, spring, adapter and spacer units, springs, sprung thrust-carrying members, flat springs, spring plates, spring plate accessories, flat ejector pins, flat fitting strips, flange bushings, follow-on composite tools, conveyor belts, conveyor belt accessories, guide bolts, guide bushes, guide lugs, guide strips, guide elements, guide bearings, guide columns, gas pressure springs, transmitter-receiver systems, bevelled plates and strips, slide elements, sliding plates, sliding blocks, rubber bellows, cast die sets, retention bushes, retention bearings, retention discs, retention members, hard metal clipping punches, hollow round bars, hollow columns, sleeves, cage retainers, cases for test pins, tapered slide valves, small presses, ball retainers, ball guides, ball bearing cages, brass, plastic springs, plastic plates, coupling hubs, attachment eyes, strips, hole-punching and embossing units, punches, loosening tools, die plates, measuring pins, measuring pin holders, centre head posts, adapter screws, adapter pins, adapter pin bushings, plates, pneumatic conveyor belts, pneumatic transporters, embossing material, precision thickness gauge foils, precision parts, precision flat and square bar steel, press consoles, prism guides, profile clipping stamps, test pins, test pin holders, test pin cases, transverse profiles for conveyor belts, rectangular ejectors, rectangular column blocks, rectangular stamps, ring brackets, ring bolts, roll cages, roll bars, rust removers, round springs, round bars, columns, column blocks, column frames, column frame accessories, dirt strippers, piercing die bushes, clipping punches, clipping punch retention plates, quick-change clipping punches, quick-change frames, screws for T-slots, helical spiral springs, collar adapter screws, flat head screws, safety flanges, sintered guide bushings, special column frames, clamping elements, clamping tool cases, clamping spigots, special springs, special safety devices, steel plates, steel column frames, stands for conveyor belts, punch guide bushings, strip guide bolts, pilot pins, collector plate systems, elevators, plate springs, suppor bolts, support hooks, support screws, support rods, lifting lugs, transport and attachment elements, overrun blocks, shaped profile bars, universal swivel lugs, urethane springs, urethane plates, VDI sleeves, VDI punches, screw plugs, square punches, square bars, square hollow bars, square steel, four-column frames, roller attachments, roller strips, low-maintenance sliding elements, exchangeable guide columns, tool superstructures for follow-on composite tools, tool sliders, tool quick-change frames, tool steel, angle strips, swivel lugs, centering pins, centering units, dual-column frames, cylinder head ejectors, cylinder head punches, cylinder screws, cylinder pin bushings, cylinder pins, cylinder pin loosening tools; mechanical handling apparatus for gripping, holding, removing, for translatory and/or rotary movement and/or for transport workpieces and/or loading and unloading machine tools; elements for the aforesaid handling apparatus, namely grippers, linear motion units and/or rotary units; gantry robots for machine tools, parts for automaton and robotics, in particular short stroke units, translation units, linear axles, rotation units, electric motor-driven modules and grippers; rotary indexing tables, flush-mounted rotary indexing tables, NC rotary tables, electromechanical rotary indexing tables; revolver heads, in particular electric rotary tables; all the above mentioned goods with the exception of centrifugal pumps.

Class 8: Hand tools, included in class 8.

EUTM No 15 683 352

Class 9: Software; Recorded computer programs; Assistive software; Manufacturing software; Mechanical engineering software.

The contested goods are the following:

Class 7: Industrial robots; robotic arms for industrial purposes; agricultural machines; bicycle assembling machines; metalworking machines; milling machines; handling apparatus for loading and unloading; embossing machines; filling machines; finishing machines; machines for processing plastics; wrapping machines.

Class 9: Humanoid robots with artificial intelligence; laboratory robots; teaching robots; security surveillance robots; computer hardware and software.

Some of the contested goods 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 listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. 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 assumed to be identical are directed at the public at large (e.g. computer hardware and software in Class 9) and at business customers with specific professional knowledge or expertise in the field of IT and industry (e.g. the robots and machines in Classes 7 and 9). The degree of attention will vary from average to high, depending on the specialised nature and sophistication of the goods and services, the frequency of purchase and their price.

3. The signs

FIBRO
Earlier trade marks	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 marks consist of the single word ‘FIBRO’. As pointed out by the applicant, it is meaningful in some languages of the relevant territory, such as in English, where as a prefix it will be understood as indicating fibrous tissue; indicating fibre. In other parts of the relevant territory it will be perceived as a meaningless word. Since it has no direct meaning in relation to any of the relevant goods, it is distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘FIIBOT’ in a stylised font. The initial letter ‘L’ and the letters ‘-BOT’ are depicted in uppercase whereas the letter string ‘ii’ is depicted in lower case.

While the element ‘FiiBOT’ is meaningless as a whole it must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Since the contested goods are various robots, machines and apparatus in Classes 7 and 9, and due to the uppercase lettering, it is likely that at least part of the public will perceive the word ‘bot’ in the contested sign. This word has several meanings in English (e.g. a robot or an autonomous program on a network, which can interact with systems or users) and must be considered rather weak in relation to the relevant goods. Nevertheless, seen as whole, the verbal element ‘FIIBOT’ is meaningless, and therefore, distinctive. For the remainder of the relevant public, for which the verbal element is meaningless, it is also distinctive.

There is no element that can be considered more dominant (eye-catching) in the contested sign.

Visually, the signs coincide in the letters “FI*B*O**’ and differ in the fourth letter ‘R’ of the earlier mark and the additional letters ‘I’ and ‘T’ of the contested sign. They also differ in the stylisation and typeface of the verbal element of the contested sign, which play a relevant role in the visual impression created by that sign. Moreover, the rather striking letter sequence 'ii' in the contested sign will not go unnoticed by consumers. This is also reinforced by the fact they are the only lowercase letters in the contested sign.

Furthermore, 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 share some of the letters, but they cannot, for that reason alone, be regarded as visually similar.

Therefore, the signs are visually lowly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters “FI*B*O**’ present in the signs. The pronunciation differs in the sound of the letter ‘R’ of the earlier marks and the additional letters ‘I’ and ‘T’ in the contested sign, which produce a difference in the rhythm and intonation.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public for which the signs will be associated with the meanings explained above, they are dissimilar since the signs do not coincide in any element.

For another part of the relevant public, that will only perceive a meaning in the earlier or in the contested sign, the signs are conceptually not similar.

For the remainder, neither of the signs has a meaning. 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.

4. 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 mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its 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.

5. Global assessment, other arguments and conclusion

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).

The goods are assumed to be identical and are directed at the public at large and a more specialised public. The earlier marks have normal inherent distinctiveness.

While it is true that the signs share some letters, there are important differences, especially from the visual point of view, that outweigh the similarities. In particular, the double ‘ii’ in the contested mark rather stands out and will certainly catch consumers’ attention, due to its position towards the beginning of the sign.

As the opponent argues, the signs are not particularly long or complex. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Furthermore, for a substantial part of the relevant public the signs have different meanings, which helps to differentiate them.

The Opposition Division is of the view that the differences between the signs, mainly arising from the stylization and the additional letters ‘I’ and ‘T’ of the contested sign, are sufficient to compensate the coincidence in four letters. It is also important to note that the coinciding letters do not constitute an independent element (a meaningful unit) in any of the signs but are rather, and merely, coinciding sequences of letters which will not be artificially singled out and dissected by consumers.

Considering all the above, even assuming that the goods are identical there is no likelihood of confusion on the part of the public, even for the part of the public for which the attentiveness is average.

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

Begoña VALIENTE URIARTE

Martin INGESSON

Kieran HENEGHAN

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.