OPPOSITION. No B 3 093 137

Porto Forno, S.A., Rua Vasco da Gama, n.º 33, Gualtar, 4710-051 Braga, Portugal (opponent), represented by Abel Dário Pinto de Oliveira, Rua Nossa Senhora de Fátima, n° 419 - 3º Frente, 4050-428 Porto, Portugal (professional representative)

a g a i n s t

Solarfocus Holding GmbH, Werkstraße 1, 4451 Garsten, Austria (applicant), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative).

On 17/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 137 is partially upheld, namely for the following contested goods:

Class 11: Heating installations; heating boilers; heat pumps; air-heating pumps; solar furnaces.

2. European Union trade mark application No 18 026 704 is refused protection for all of the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 026 704 ‘MAXIMUS” (word mark). The opposition is based on Portuguese trade mark registration No 504 550 ‘MAXIMUS’ (word mark). 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.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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:

Class 11: Heating stoves [heating apparatus]; kitchen stoves; portable forgings; kitchen oven [stoves]; baker's ovens; oven, not for lab use; solar oven.

The contested goods are the following:

Class 11: Heating installations; heating boilers; heat pumps; air-heating pumps; solar collectors [heating]; solar water heaters; solar furnaces; solar installations.

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.

The contested heating installations include, as a broader category, the opponent’s heating stoves. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested solar furnaces overlap with the opponent’s solar oven. Therefore, they are identical.

The contested heat pumps, air-heating pumps are similar to the earlier heating stoves [heating apparatus]. The goods under comparison are all equipment which is usually installed in houses, offices and all sorts of buildings to create good conditions for living in or using such places, providing heat supply. Therefore, they have the same purpose of heating. Furthermore, the manufacturers operating in this field are the same, the goods are distributed through the same channels and are directed at the same relevant public.

The contested heating boilers are closed vessels to heat water and the opponent’s heating stoves are devices in which fuel is burned to heat either the space in which the stove is situated, items placed on the heated stove or inside it, in an oven. Therefore, they have, broadly speaking, the same purpose of heating. Moreover, they can be sold in the same retail outlets or in the same sections of department stores and target the same consumer. Thus, they are similar to a low degree.

Contrary to the applicant's argument, all the goods compared above have the same purpose (heating). In this regard, and in the absence of a valid request for proof of use that might narrow the goods on which the opposition can be based, the applicant’s claim according to which the opponent’s goods are intended to be used for kitchen purposes exclusively, must be set aside.

The remaining contested goods, namely solar collectors [heating solar], solar water heaters, solar installations are devices which collect heat by absorbing sunlight usually requiring an installation by professionals. They need a very different know-how and techniques for their production compared to the opponent’s goods which are heating devices for domestic use and, therefore, their nature and commercial origin is different. Furthermore, the method of use of these goods is different, they are not sold through the same distribution channels and target different relevant public. Finally, they are not in competition nor complementary. Therefore, they are dissimilar.

2. The signs

MAXIMUS	MAXIMUS
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, as established above in section a) of this decision, are also identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, some contested goods, as established above in section a) of this decision, were found to be similar and similar to a low degree to those 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 and the opposition is upheld also insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As the 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Carolina MOLINA BARDISA

Helen Louise MOSBACK

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.