CANCELLATION No C 40 283 (INVALIDITY)

 

Draper Tools Ltd., Hursley Road, Chandlers Ford, Hampshire SO53 1YF Eastleigh, United Kingdom (applicant), represented by Nigel Brooks, Hill Hampton, East Meon, GU32 1QN Petersfield, United Kingdom (professional representative)

 

a g a i n s t

 

Zenon Wójtowicz, Długosza 34, 48-303 Nysa, Poland  (EUTM proprietor).

On 29/10/2020, the Cancellation Division takes the following

 

 

DECISION

1.	The application for a declaration of invalidity is partially upheld.

 

2.	European Union trade mark No 18 096 714 is declared invalid for some of the contested goods and services, namely:   Class 7: Gasoline lawn mowers; electric lawnmowers; self-propelled mowers; line trimmers for garden use; garden rotavators; hedge trimmers [machines]; power driven hedge shears; hedge cutters [machines]; robotic lawnmowers; lawn sweepers [machines]; cordless sweepers; electric garden scythes; scythes [machines]; soil aerators; angle grinders; grinders (power tools); disc sanding machines, bench grinders [machines]; electrofusion welding machines, electric arc welders, electric welding machines, plasma welding machines, laser welding machines, ultrasonic welding machines, welding and soldering equipment, plastics welding machines, gas-operated soldering irons. Class 35: Wholesale services in relation to horticulture equipment; retail services in relation to horticulture equipment.
3.	The European Union trade mark remains registered for all the remaining goods and services, namely:   Class 7: Electric brooms, road sweeping machines [self-propelled], high pressure washers, machines for cleaning surfaces using high pressure water, spray lances for attachment to pressure washing machines for cleaning purposes, cordless vacuum cleaners, robotic vacuum cleaners, vacuum cleaners for industrial purposes, vacuum cleaning machines for use in households (listed twice), wet and dry vacuum cleaners; wood milling machines, compacting machines, earth compacting machines, wood beating machines, wood chipping machines; current generators; emergency power generators; oil-lubricated compressors. Class 11: Room air fans; electrically powered fans for ventilation purposes; table fans; electric bladeless fans; electric air conditioners; portable air conditioners; electric grills; gas grills; charcoal grills. Class 12: Horticultural tractors. Class 35: Wholesale services in relation to horticulture products; retail services in relation to horticulture products.
4.	Each party bears its own costs.

 

REASONS 

The applicant filed a request for a declaration of invalidity against European Union trade mark No 18 096 714 ‘VENOM’ (word mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on EUTM registration No 14 305 461 ‘VENOM’ (word mark). The applicant invoked
Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark is identical to the earlier trade mark and covers identical or similar goods and/or services.

The EUTM proprietor did not submit any observations or evidence in reply even though it was invited to do so by the Office.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 and services

 

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 goods on which the application is based are the following: 

Class 8: Hand-operated implements and hand tools; saws; panel saws; masonry saws; tenon saws; floorboard saws; dovetail saws; plasterboard saws; trowels; plasterers floats; scissors; filling knives; scrapers; trimming knives; cutting tools with retractable blades; bolster chisels; electricians chisels; cold chisels; hammers, including engineers hammers; general purpose hammers; claw hammers; sledge hammers; bolt cutters; spanners; G-Cramps; dual action clamps; bench vices; hacksaws; screwdrivers, including engineers screwdrivers; pouches for tools and nails; hexagon keys; spanners (wrenches); self-grip pliers; general purpose pliers; water pump pliers; wood cutting chisels; contractors shovels; wrecking/pry bars; parts and fittings for the aforementioned goods.

Class 9: Tape measures; spirit levels.

The contested goods and services are the following: 

Class 7: Gasoline lawn mowers; electric lawnmowers; self-propelled mowers; line trimmers for garden use; garden rotavators; hedge trimmers [machines]; power driven hedge shears; hedge cutters [machines]; robotic lawnmowers; cordless sweepers; lawn sweepers [machines]; electric brooms; road sweeping machines [self-propelled]; electric garden scythes; scythes [machines]; wood milling machines; high pressure washers; machines for cleaning surfaces using high pressure water; spray lances for attachment to pressure washing machines for cleaning purposes; cordless vacuum cleaners; robotic vacuum cleaners; vacuum cleaners for industrial purposes; vacuum cleaning machines for use in households; vacuum cleaning machines for use in households; wet and dry vacuum cleaners; current generators; emergency power generators; compacting machines; earth compacting machines; electrofusion welding machines; electric arc welders; electric welding machines; plasma welding machines; laser welding machines; ultrasonic welding machines; welding and soldering equipment; plastics welding machines; gas-operated soldering irons; wood beating machines; wood chipping machines; angle grinders; disc sanding machines; bench grinders [machines]; grinders (power tools); soil aerators; oil-lubricated compressors.

Class 11: Room air fans; electrically powered fans for ventilation purposes; table fans; electric bladeless fans; electric air conditioners; portable air conditioners; electric grills; gas grills; charcoal grills.

Class 12: Horticultural tractors.

Class 35: Wholesale services in relation to horticulture equipment; Retail services in relation to horticulture equipment; Wholesale services in relation to horticulture products; Retail services in relation to horticulture products.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. 

The term ‘including’, used in the applicant’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 (on the use of ‘in particular’ see reference in 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

  

Contested goods in Class 7 

Class 7 includes mainly machines and machine tools. Class 8 includes mainly hand-operated tools and implements for performing tasks, such as drilling, shaping, cutting and piercing and hand-operated agricultural, gardening and landscaping tools.

The contested gasoline lawn mowers; electric lawnmowers; self-propelled mowers; line trimmers for garden use; garden rotavators; hedge trimmers [machines]; power driven hedge shears; hedge cutters [machines]; robotic lawnmowers; lawn sweepers [machines]; cordless sweepers; electric garden scythes; scythes [machines]; soil aerators are gardening or landscaping machines and apparatus. They are similar to the applicant’s hand-operated implements and hand tools, which include gardening or landscaping hand tools. They can coincide in their purpose and are in competition. They could be found in the same distribution channels (e.g. garden centers, do-it-yourself stores) and target the same public. These are, therefore, considered to be similar.

The contested angle grinders; grinders (power tools) are tools with a round turning part that cuts or polishes hard materials such as metal; disc sanding machines, bench grinders [machines] are grinding machines. They are similar to the applicant’s hand-operated implements and hand tools which include files, hack saws or other cutting tools. They can coincide in their purpose and are in competition. They could be found in the same distribution channels (e.g. do-it-yourself stores) and target the same public. These are, therefore, considered to be similar.

The contested electrofusion welding machines, electric arc welders, electric welding machines, plasma welding machines, laser welding machines, ultrasonic welding machines, welding and soldering equipment, plastics welding machines, gas-operated soldering irons are different types of welding and soldering machines and devices. They are similar to the applicant’s hand-operated implements and hand tools, which include inter alia non-electric soldering irons. They can have the same purpose. They can coincide in end user and distribution channels. Furthermore, they are commonly used in combination and can even be complementary.

The same, however, could not be concluded for the remaining contested goods in this Class, namely electric brooms, road sweeping machines [self-propelled], high pressure washers, machines for cleaning surfaces using high pressure water, spray lances for attachment to pressure washing machines for cleaning purposes, cordless vacuum cleaners, robotic vacuum cleaners, vacuum cleaners for industrial purposes, vacuum cleaning machines for use in households (listed twice), wet and dry vacuum cleaners, which are sweeping, cleaning, and washing machines and apparatuses; wood milling machines, compacting machines, earth compacting machines, wood beating machines, wood chipping machines, are machines and machine tools for treatment of materials and for manufacturing and current generators; emergency power generators; oil-lubricated compressors as apart from having a different nature, namely the contested applicant´s goods in Classes 8 and 9 are handheld (non-machinery) tools, while the contested ones are machine equipment; they have different purposes (such as cleaning, generate electricity). The goods in comparison are neither complementary, nor in competition and the end user would not expect them to originate from the same producer. Finally, their distribution channels would usually not be the same. These are, therefore, found to be dissimilar.

Contested goods in Class 11 

The contested goods which are different types of fans, air conditioners and grills are dissimilar to the applicant’s goods. These goods have a different nature and have very different purposes. They usually have different distribution channels and a different origin. Moreover, they are neither in competition nor complementary in the sense that one is indispensable for the other.

Contested goods in Class 12 

The contested horticultural tractors are self-propelling vehicles used principally for horticultural purposes. They are dissimilar to the goods on which the application is based, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services.

Therefore, the contested wholesale services in relation to horticulture equipment; retail services in relation to horticulture equipment are similar to the applicant’s hand-operated implements and hand tools which include horticultural tools.

 

Wholesale services in relation to horticulture products; retail services in relation to horticulture products and the applicant’s goods in Classes 8 and 9 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The contested services relate to foodstuff whereas the applicant’s goods are tools. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

b) The signs

 

VENOM	VENOM
Earlier trade mark	Contested sign

 

The signs are identical. 

c) Conclusion

The signs are identical and the contested goods and services are similar or dissimilar to the goods 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 in conjunction with Article 60(1)(a) EUTMR for the similar goods and services. Therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 14 305 461 ‘VENOM’.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be similar to the goods of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed against these goods and services cannot be successful.

The cancellation application must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR and directed against the remaining goods and services because the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

 

Nicole CLARKE

Richard BIANCHI

Julie, Marie-Charlotte HAMEL

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.