OPPOSITION No B 3 089 946

Söndgerath Pumpen Handelsgesellschaft mit beschränkter Haftung, Zur Schmiede 7, 45141 Essen, Germany (opponent), represented by Von Rohr Patentanwälte Partnerschaft MBb, Rüttenscheider Str. 62, 45130 Essen, Germany (professional representative)

a g a i n s t

Wuxi Super Precise Machinery Science & Technology Co., LTD, No. 9 Yuhao Road, Qianzhou Supporting Area, Huishan Economic Development Zone, Wuxi City, Jiangsu Province, People’s Republic of China (applicant), represented by Cabinet Laurent & Charras, Le Contemporain, 50 Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 946 is upheld for all the contested goods, namely

Class 7: Pumps [machines]; pumps [parts of machines, engines or motors]; vacuum pumps [machines]; hydraulic pumps.

2. European Union trade mark application No 18 050 008 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 050 008 for the figurative mark , namely against some of the goods in Class 7. The opposition is based on European Union trade mark registration No 15 819 238 for the word mark ‘SPR’. 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: Mechanical pumps, in particular sewage, waste water, well and submersible pumps; electric motors, control apparatus and drives for pumps; parts for the aforesaid goods.

The contested goods are the following:

Class 7: Pumps [machines]; pumps [parts of machines, engines or motors]; vacuum pumps [machines]; hydraulic pumps.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested pumps [machines]; pumps [parts of machines, engines or motors] include, as broader categories, or overlap with, the opponent’s mechanical pumps, in particular sewage, waste water, well and submersible pumps. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested vacuum pumps [machines]; hydraulic pumps are included in the broad category of, or overlap with, the opponent’s mechanical pumps, in particular sewage, waste water, well and submersible pumps. Therefore, they are identical.

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 identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods purchased.

c) The signs

SPR
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs fully coincide in their sole verbal element ‘SPR’. This appears to have no meaning, nor have the parties adduced anything that would allow a different conclusion. Nonetheless, in the event a meaning were to be attributed to this verbal element, it would be immaterial, since the degree of distinctiveness of the signs’ verbal elements is irrelevant as they are the same in both marks. Moreover, the only differentiating elements of the contested sign reside in the slight stylisation of its verbal element and in a simple geometric shape of ellipse framing it, both of which are merely decorative and, therefore, non-distinctive. Consequently, the impact of these elements is minimal on the visual comparison and they do not affect the aural and conceptual comparison of the signs.

It follows that the signs are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the common element ‘SPR’, or, if not, the conceptual aspect would not influence the comparison of the signs.

d) Global assessment, other arguments and conclusion

As concluded above, the goods are identical and they target the public at large and professionals, whose degree of attention will vary from average to high. The distinctiveness of the earlier mark is immaterial in the present case for the reasons explained in section c) of this decision.

Despite the differences in the additional figurative element and slight stylisation of the verbal element in the contested sign, the signs are visually similar to a high degree and aurally identical on account of the common verbal element ‘SPR’. Conceptually, the signs would be identical if a meaning were attributed to their common verbal element, and, if not, the conceptual aspect is neutral and has no impact on assessing likelihood of confusion.

The only differing elements between the signs, namely the slight stylisation of the contested sign’s verbal element and the ellipse framing it, are clearly of a secondary nature within the overall impression of the contested sign. Given that the contested sign’s only verbal element reproduces the entire earlier mark, it is highly conceivable that the relevant consumers, even those displaying a high degree of attention, when encountering the marks in the context of identical goods, will perceive the contested sign as a variation or a newer version of the earlier mark and will be led to believe that the goods in question come from the same undertaking or economically linked undertakings.

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 well founded on the basis of the opponent’s European Union trade mark registration No 15 819 238.

It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marine DARTEYRE

Rasa BARAKAUSKIENE

Cristina CRESPO MOLTÓ

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.