OPPOSITION No B 3 091 647

MD S.P.A., Zona Industriale A.S.I. Capannone N.18, 81030 Gricignano di Aversa (CE), Italy (opponent), represented by Studio Legale Bird & Bird, Via Borgogna, 8, 20122 Milano, Italy (professional representative)

a g a i n s t

Mannheimer Diesel GmbH, C/o RSM, Markgrafenstr 32, 10117 Berlin, Germany (applicant),

On 07/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 647 is upheld for all the contested goods, namely:

Class 8: Hand tools, hand-operated; Agricultural, gardening and landscaping tools.

2. European Union trade mark application No 18 054 711 is rejected for all the contested goods. It may proceed for the remaining goods (i.e., the
non-contested goods in Classes 7 and 12).

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 18 054 711 (figurative), namely against all the goods in Class 8.

The opposition is based on Italian trade mark registration No 2018 000 027 504 (figurative).

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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 8: Hand tools and implements [hand-operated].

The contested goods are the following:

Class 8: Hand tools, hand-operated; agricultural, gardening and landscaping tools.

The contested hand tools, hand-operated are identically contained in the opponent´s list (including synonyms) and the contested agricultural, gardening and landscaping tools fall in the opponent´s broad category of hand tools and implements [hand-operated], and are, therefore, also considered identical.

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 found to be identical are directed at the public at large and professionals (e.g. professionals in the agricultural field). The degree of attention paid by consumers during the purchase of these goods is deemed to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 ‘MD’ is meaningless and distinctive in relation to the goods involved. In addition, it is the dominant (visually eye-catching) element in the contested sign, and a co-dominant element in the earlier mark, due to its bigger size and position.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is relevant to note that in this case the first element read/pronounced in both marks is ‘MD’, which is also fully distinctive in both signs and visually dominant or co-dominant.

The contested sign also contains a verbal element ‘Geräte’, placed between two thin horizontal lines. This element, is of less visual impact, due to its smaller size and the fact that it is in second position. However, it is not a negligible element, since it is still noticeable at first sight and is not likely to be disregarded by the relevant public.

The word ‘Geräte’ is meaningless for the Italian-speaking consumers and is, therefore, of average distinctive character. The horizontal lines as well as the grey and black rectangular frame of the contested sign will be perceived as merely decorative by consumers as merely decorative in nature, and not as indications of commercial origin.

The earlier mark also contains a depiction of a house, which is co-dominant, and the verbal element ‘casa’, which is smaller and placed at the end of the sign, and therefore secondary, for the reasons explained below..

However, 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). Therefore, the figurative element in the earlier mark, despite being visually co-dominant, has less of an impact for this reason, and the consumer´s attention will be focussed on the verbal element ‘MD’.

The depiction of the house and the word ‘casa’ (i.e., the Italian word for ‘house’) are of lower than average distinctive character, since they can be seen as allusive of the characteristics of the goods involved (e.g., their purpose, since they are frequently used to build/repair houses or buildings)

Visually, the signs coincide in the element ‘MD’. This coinciding element is the most distinctive element in the earlier mark, in which it is also visually co-dominant, and the dominant element in the contested mark, in which it is of average distinctive character.

They differ in the depiction of the house and the verbal element ‘casa’ of the earlier mark, and in the verbal element ‘Geräte’ and horizontal lines and frame of the contested mark. These differences are found in elements that have been considered of reduced impact for the various reasons explained above (i.e., their position and/or size and/or degree of distinctive character). They also differ in colour and typeface, although neither is particularly fanciful or striking.

The signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of ‘MD’, present identically in both signs. They differ in the pronunciation of ‘casa’ of the earlier mark and ‘Geräte’ in the contested sign.

Taking into account the greater or lesser impact or weight of each of the elements forming the marks, for the reasons explained above, it is considered that the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the the word ‘casa’ and the house depiction of the earlier mark as referring to the concept of a house, the contested sign has no meaning in that territory.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements (i.e., the word ‘casa’ and the depiction of a house) in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical. They are directed at the public at large and professionals. The degree of attention paid by consumers during the purchase of these goods is deemed to be average.

The signs are visually similar to an average degree, aurally highly similar, and not conceptually similar. The earlier mark is of average distinctive character.

The signs coincide in ‘MD’, which is the co-dominant and most distinctive element in the earlier mark and the dominant and distinctive element in the contested sign. As explained above, it is also the first element read and pronounced in both signs, which increases its weight even more. In addition, the differences between the marks are found in elements that have a reduced impact for various reasons (i.e., due to their much smaller size and position within the sign, and/or due to their degree of distinctive character). Lastly, the differences in typeface and colour are not sufficient to help consumers clearly differentiate the marks, taking into account the circumstances described.

The applicant refers to the way in which the signs compared are used in the market, and submits evidence in this regard. However, as argued by the opponent, the signs to be compared are the signs as registered, as their actual use in the market is irrelevant. The claim is, therefore, set aside.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, in this case it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 2018 000 027 504. 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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

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.