OPPOSITION Nо B 3 107 555

 

Fini Nuair S.p.A., Via Einaudi, 6, 10070 Robassomero, Italy (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Turin, Italy (professional representative)

a g a i n s t

SuZhou iFIN Materials Co. Ltd., 1520, 105 Building, Huadu Yishu, Zhoushi Town, Kunshan City, Suzhou City, Jiangsu Province, People’s Republic of China (applicant), represented by Tom Palmisano, 30 rue Notre-Dame des Victoires, 75002, Paris, France (professional representative)

On 17/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 107 555 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 104 105 , namely against all the goods in Class 7. The opposition is based on Italian trade mark registrations No 1 570 737 and No 1 297 504, and international trade mark registration No 614 796 designating Benelux, Denmark, Germany, Ireland, Greece, France, Hungary, Austria, Poland, Portugal, Romania and Finland all 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 on which the opposition is based are the following.

Italian trade mark registration No 1 570 737

Class 7: Reciprocating piston air compressors, rotary air compressors, medical air compressors e accessories, filters for air treatment, lubricators, pressure reducers, valves and fittings for compressed air, automatic condensate drains, water-oil separators, tools and equipment pneumatic, compressed air tanks, electric motors.

Italian trade mark registration No 1 297 504

Class 7: Air compressors and plants for production and distribution of compressed air.

International trade mark registration No 614 796

Class 7: Piston-type alternating air compressors, rotary air compressors, lubricators, pressure reducing valves, valves and connectors for compressed air, condensation press unloaders, oil water separators, pneumatic apparatus and tools, tanks for compressed air, electric motors.

The contested goods are the following:

Class 7: Labellers [machines]; finishing machines; brushing [sweeping] machines; printing machines; sealing machines for industrial purposes; electrical apparatus for sealing plastics [packaging]; electromechanical machines for chemical industry; electric knives; machines and apparatus for cleaning, electric; 3D printers; brushing machines.

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 goods are different kinds of machines, namely machines for labelling, printing, sealing for industrial purposes, brushing, finishing, sealing plastics, cutting and cleaning, and for the chemical industry. The opponent’s goods are various types of air compressors and their parts and accessories, as well as machine parts and tools.

The opponent argues that its air compressors and their accessories could be parts of the contested goods, given that the latter need energy for their proper functioning and, therefore, these goods are similar. The opponent also claims that these goods share distribution and commercialisation channels and are often produced by the same undertakings.

However, the mere fact that a certain good can be composed of several components does not automatically establish any similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379 § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity – such as having the same producer and/or public, and/or the existence of complementarity – are present. Such an exception is based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts.

To support its argument, the opponent defines an ‘air compressor’, broadly speaking, as a device that converts power into potential energy, stored in pressurised air by various methods.

The contested goods are different kinds of machines, used for very specific purposes, which differ from that of the opponent’s air compressors (as defined above) and their parts and accessories.

The opponent’s air compressors and their parts and accessories might, as argued by the opponent, be used as parts of the contested goods. However, as indicated above, this does not automatically render the goods similar. Bearing in mind that the contested machines are of a very specific type (labelling machines, plastic-sealing machines, brushing machines, etc.), there is no similarity. The targeted consumers are different. The opponent’s goods target professionals in the compressed air industry and other large industries. In contrast, the contested goods target both the general public or professionals in the packaging, chemical, cleaning and printing industries. It should be borne in mind that, contrary to the opponent’s argument, by definition, goods targeting different publics cannot be complementary. Moreover, since they target different publics, the goods are also offered through different distribution channels. Most importantly, the goods are produced by completely different companies because very different techniques and know-how are necessary to produce these goods. Given their different purposes, the goods are not in competition. Moreover, the goods have different natures. Therefore, these goods are dissimilar.

The same conclusion applies to the opponent’s machine parts and tools, other than those for air compressors, such as tools and equipment pneumatic, electric motors, lubricators, automatic condensate drains, water-oil separators. These sets of goods and the contested goods target different publics, and their manufacture requires specific know-how which does not coincide. Consequently, they are normally produced by different undertakings, operating in different market sectors. Furthermore, they are distributed through different channels. It follows that these goods are also dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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

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

 

 

 

The Opposition Division

 

 

Rasa BARAKAUSKIENÉ

Cristina CRESPO MOLTO

Cynthia DEN DEKKER

 

 

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.