OPPOSITION Nо B 3 095 286

 

Gebr. Becker GmbH, Hölker Feld 29-31, 42279 Wuppertal, Germany (opponent), represented by Rieder & Partner mbB Patentanwälte - Rechtsanwalt, Corneliusstr. 45, 42329 Wuppertal, Germany (professional representative) 

 

a g a i n s t

 

Miglock Limited, 393 Lordship Lane, London N17 6ae, United Kingdom (applicant).

 

On 20/11/2020, the Opposition Division takes the following

 

 

DECISION:

1.			Opposition No B 3 095 286 is partially upheld, namely for the following contested goods: Class 7: Sweeping, cleaning, washing and laundering machines; Industrial robots; dispensing machines; current generators; all aforementioned goods not for use in the mining and tunneling industry. Class 8: Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance. Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; recorded content; optical devices; safety, security, protection and signalling devices; information technology and audio-visual, multimedia and photographic devices; apparatus, instruments for electricity; all aforementioned goods not for use in the mining and tunneling industry. Class 11: Heating, ventilating, and air conditioning and purification equipment (ambient); cooking, heating, cooling and preservation equipment, for food and beverages; refrigerating and freezing equipment; burners, boilers and heaters; regulating and safety accessories for water and gas installations.
	2.		European Union trade mark application No 18 081 718 is rejected for all 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 18 081 718 for the figurative mark  , namely against all the goods in Classes 7, 8, 9 and 11. The opposition is based on international trade mark registration designating the European Union No 1 357 155 for the figurative mark . 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 and services on which the opposition is based, after a restriction of protection communicated by WIPO on 28/06/2020, are the following:

Class 7: Machines and machine parts for generating, providing and regulating vacuums and fluids; pumps; vacuum pumps; rotary vane vacuum pumps; screw vacuum pumps; side channel vacuum pumps; radial vacuum pumps; compressors; compressors for air and gas; rotary vane compressors; screw compressors; side channel compressors; submersible motor compressors; radial compressors; turbo compressors; pressure-vacuum generators; pressure-vacuum compressors; vacuum tanks; blowers; suction filters; driving engines other than for land vehicles; valves, as included in this class; pressure control valves; pressure safety valves; cabinets and housings for the abovementioned goods; parts, spare parts and accessories to the aforementioned goods as included in this class.

Class 9: Electric and electronic measuring, signalling, checking (supervision), switch and control apparatus and instruments for the use in or for pumps, compressors and air supply installations; frequency converters; frequency inverters; data processors and computers as well as software for controlling and monitoring of pumps, compressors; housings for the abovementioned goods; switch cabinets; control cabinets; parts, spare parts and accessories to the aforementioned goods as included in this class; all the aforementioned goods excluding controls, analysis devices and radio remote controls for electric drives for darkening devices, roller blinds and curtains, for awnings, gates, smoke and fire protection devices, barrier systems, and for lifting devices, and excluding controls for air-conditioning technology and electronic apparatus for air-conditioning technology, and excluding alarm apparatus for building security, in particular for darkening devices and smoke and fire-protection devices, and excluding electronic security devices for windows and doors, and excluding electric cables.

Class 11: Heat recovery units and apparatus; valves for draining condensate as parts of heating, cooling or air supply installations; cabinets and housings for the abovementioned goods; parts, spare parts and accessories to the aforementioned goods as included in this class.

Class 37: Maintenance, servicing and repair of machines and parts of machines for the production, provision and control of vacuums and fluids, pumps, compressors, pressure-vacuum generators, valves, blowers, driving motors, other than for land vehicles, electric and electronic measuring, signaling, checking (supervision), switch and control apparatus and instruments in or for pumps, compressors and air supply installations, heat recovery units and apparatus, data processors and computers as well as software for controlling and monitoring of pumps, compressors.

Class 42: Technological consultancy; software development for controlling pumps, compressors; technical supervision with use of machines and parts of machines for the production, provision and control of vacuums and fluids, pumps, compressors, pressure-vacuum generators, valves, blowers, driving motors, other than for land vehicles, electric and electronic measuring, signaling, checking (supervision), switch and control apparatus and instruments in or for pumps, compressors and air supply installations, heat recovery units and apparatus; inspection of machinery and parts of machines for the production, provision and control of vacuums and fluids, pumps, compressors, pressure-vacuum generators, valves, blowers, driving motors, other than for land vehicles, electric and electronic measuring, signaling, checking (supervision), switch and control apparatus and instruments in or for pumps, compressors and air supply installations, heat recovery units and apparatus; maintenance and servicing of software for controlling pumps, compressors.

The contested goods are, after several limitations by the applicant, the following:

Class 7: Sweeping, cleaning, washing and laundering machines; Industrial robots; dispensing machines; current generators; all aforementioned goods not for use in the mining and tunneling industry.

Class 8: Edged and blunt weapons; hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; cutlery, and food preparation implements being kitchen knives, cutting and grinding implements; hand-operated hygienic and beauty implements for humans and animals.

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; recorded content; optical devices, enhancers and correctors; safety, security, protection and signalling devices; navigation, guidance, tracking, targeting and map making devices; information technology and audio-visual, multimedia and photographic devices; apparatus, instruments for electricity; all aforementioned goods not for use in the mining and tunneling industry.

Class 11: Heating, ventilating, and air conditioning and purification equipment (ambient); cooking, heating, cooling and preservation equipment, for food and beverages; refrigerating and freezing equipment; burners, boilers and heaters; personal heating and drying implements; sun tanning appliances; lighting and lighting reflectors; regulating and safety accessories for water and gas 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.

It should also be noted that all the contested goods in Classes 7 and 9 are limited, at the end of the respective specifications, with the wording all aforementioned goods not for use in the mining and tunneling industry. Given that the opponent’s goods and services are not specifically related to the mining and tunneling industry, the applicant’s limitations will not have any effect on the outcome of the comparisons. Therefore, while the abovementioned limitations will be taken into account, they will not be mentioned in the comparisons that follow.

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 sweeping, cleaning, washing and laundering machines may be powered by/comprise the opponent’s compressors. The basic operation of compressors entails taking air, compressing it and releasing it at a high speed. Compressors are common in high-power and around-the-clock industrial applications, as well as for smaller commercial or even personal tasks. Indeed, the opponent’s compressors are used e.g. in dry cleaning, sweeping and pressure washing machinery. Since air compressors can be a main component of the contested machines these goods are considered similar. The relevant public may expect these goods to be produced by, or under the control of, the same manufacturer, they target the same specialised and, on occasions, general public and are complementary to each other.

The contested industrial robots encompass pneumatic robots and the opponent’s compressors are a main and essential part/component for the functioning and control of pneumatic robots, used in automation applications to speed up the workflow. Compressors, as a main component of pneumatic robots, can be produced and/or sold by the same undertaking that manufactures the later. The relevant public may expect these goods to be produced by, or under the control of, the ‘original’ manufacturer. Moreover, these goods target the same specialised public and are complementary to each other. Therefore, these goods are considered similar.

The contested dispensing machines are machines designed to release a specific amount of the product that they contain. These goods overlap with the opponent’s machines for providing and regulating fluids. Therefore, they are identical.

The contested current generators are at least similar to the opponent’s driving engines other than for land vehicles since they usually coincide in producers, users and distribution channels.

Contested goods in Class 8

Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance are lowly similar to the opponent’s maintenance, servicing and repair of machines and parts of machines for the production, provision and control of vacuums and fluids, pumps, compressors, pressure-vacuum generators, valves, blowers, driving motors, other than for land vehicles, electric and electronic measuring, signaling, checking (supervision), switch and control apparatus and instruments in or for pumps, compressors and air supply installations, heat recovery units and apparatus, data processors and computers as well as software for controlling and monitoring of pumps, compressors in Class 37, based in their complementary character and on the fact that they may coincide in purpose and relevant public.

The remaining contested goods, namely, edged and blunt weapons, cutlery, and food preparation implements being kitchen knives, cutting and grinding implements, hand-operated hygienic and beauty implements for humans and animals are dissimilar to all the opponent’s goods and services in Classes 7, 9, 11, 37 and 42 since they do not have any relevant points of contact that could justify finding a level of similarity between them. These goods and services have a different purpose, are neither complementary nor in competition, do not usually originate from the same producers and are not distributed via the same channels.

Contested goods in Class 9

The contested recorded content is identical to the opponent’s software for controlling and monitoring of pumps, compressors.

The contested measuring, detecting and monitoring instruments, indicators and controllers; safety, security, protection and signalling devices are at least similar to the opponent’s electric and electronic measuring, signalling, checking (supervision), switch and control apparatus and instruments for the use in or for pumps, compressors and air supply installations.

The contested optical devices are similar to the opponent’s data processors and computers for controlling and monitoring of pumps, compressors. Optical drives need a data processor/computer to retrieve and/or store data on optical discs. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested information technology and audiovisual devices include, as a broader category, the opponent’s data processors for controlling and monitoring pumps, compressors. The contested apparatus, instruments for electricity include as a broad category the opponent’s frequency converters. Since the Opposition Division cannot dissect ex oficio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested multimedia and photographic devices and the opponent’s control cabinets usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary. Therefore, these goods are similar.

The contested enhancers and correctors are devices/instruments, such as magnifier glasses, contact lenses or glasses, used to correct consumers’ vision. The purpose of these contested goods completely differs from that of the opponent’s goods and services in Classes 7, 9, 11, 37 and 42. They are neither complementary nor in competition. Furthermore, they are sold or offered through completely different channels and also differ in their producers/providers. Consequently, they are considered dissimilar.

Finally, the contested navigation, guidance, tracking, targeting and map making devices encompass various instruments such as GPS apparatus, on-board computers for vehicles, etc. Contrary to the opponent’s assertions, these goods have no points in common with the opposing signalling apparatus and instruments for the use in or for pumps, compressors and air supply installations. They are also dissimilar to all the other goods and services of the opponent.

Contested goods in Class 11

Heat recovery is a method which is increasingly used to reduce the heating and cooling demands of buildings. By recovering the residual heat in the exhaust gas, the fresh air introduced into the air conditioning system is pre-heated/pre-cooled, and the fresh air enthalpy is increased/reduced before the fresh air enters the room or the air cooler or air conditioning unit performs heat and moisture treatment. Therefore, the contested heating, ventilating, and air conditioning and purification equipment (ambient) is at least similar to the opponent’s heat recovery units and apparatus.

The contested cooking, heating, cooling and preservation equipment, for food and beverages; refrigerating and freezing equipment; burners, boilers and heaters, regulating and safety accessories for water and gas installations can include as component parts the opponent’s valves for draining condensate as parts of heating, cooling or air supply installations. The goods in question may have the same producer, public and distribution channels. They are also complementary. Therefore, they are considered similar.

The contested personal heating and drying implements; sun tanning appliances, lighting and lighting reflectors do not have relevant points of contact with any of the opponent’s goods and services. They have different purposes and methods of use. Furthermore, they do not coincide in their distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	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).

 

Both marks are figurative marks. The earlier mark consists of the verbal element ‘BECKER’, written in bold standard navy-blue typeface, preceded by a square containing a geometrical shape. The contested sign consists of the verbal element ‘BECKHER’, written in black standard capital letters, and of a figurative element of a decorative nature. The distinctiveness of the figurative elements of the marks is average and neither of them has a visually dominant element. 

 

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Part of the relevant public, such as the German-speaking public, will identify the verbal element of the earlier mark, 'BECKER', as a very common surname, while ‘BECKHER’, the verbal element of the contested sign, does not convey a specific meaning for part of them. The Opposition Division finds it appropriate to focus the comparison of the signs on a different relevant public, such as e.g. the Spanish-speaking public, which will not assign any meaning to these word elements or will, at most, grasp that they both correspond to a foreign surname uncommon to them and having an average degree of distinctiveness.

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). 

Furthermore, 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.

Visually, the signs at issue coincide in the complete sequence of letters of the verbal element of the earlier mark, namely in its initial letters ‘BECK’ and in its final letters ‘ER’. The signs' verbal elements only differ in the additional letter ‘H’ placed towards the middle of the term in the contested sign. The signs also differ in the very slight stylisation, if any, of their verbal elements and in their figurative elements.

Given the total inclusion of the verbal element of the earlier mark in the contested sign, the position of the only differing letter between the signs, which makes it only lowly perceptible, and the fact that the verbal component of signs usually has a stronger impact on consumers that the figurative elements, the signs are considered visually similar at least to an average degree. 

Aurally, the pronunciation of the signs’ terms (BECKER/BECKHER) coincides completely. According to pronunciation rules in the relevant territory, the differing letter ‘H’ of the earlier mark is silent and results in no difference in the phonetic comparison of the two signs. Therefore, the signs are aurally identical. 

Conceptually, reference is made to the previous assertions concerning the semantic concept conveyed by the marks. For the part of the public for which ‘BECKER' and BECKHER' are meaningless, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public which will associate the signs with the same concept, i.e. a surname of foreign origin, ‘Beck(h)er’ (the difference in a middle and mute letter ‘H’ will in all probability be overlooked), the signs are conceptually identical. 

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

 

e) Global assessment, other arguments and conclusion

 

The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

Account is also taken of the fact 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). 

The contested goods are found to be partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The goods found to be identical or similar to varying degrees target the professional public and the public at large, and the degree of attention will vary from average to high. The signs are visually similar at least to an average degree and aurally identical. Conceptually, they are identical for the part of the public which associates both signs with a foreign surname and neutral for the rest of the relevant public. Furthermore, the earlier mark has a normal degree of distinctiveness.

All the letters of the verbal element of the earlier mark are fully incorporated in the same order in the contested sign, causing the signs to have identical beginnings and endings. The only difference between the verbal element of both signs lies in the addition of an extra (silent) 'H' letter placed in an inconspicuous position in the verbal element of the contested sign, and which, therefore, can be easily overlooked. Although the signs also contain figurative elements, as explained in section c) of this decision, these will have a weaker impact on the consumer than the verbal elements. Therefore, the similarities between the signs outweigh the differences. 

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, 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, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 357 155. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods and services of the earlier trade mark. As regards the goods that are similar to a low degree only, it must be kept in mind that 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). In the present case, the degree of similarity between the signs is sufficient to offset the low degree of similarity between some of the goods and services.

 

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

 

 

Martin EBERL

Helena GRANADO CARPENTER

Gonzalo BILBAO TEJADA

 

 

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.