OPPOSITION Nо B 3 113 319

Körber AG, Anckelmannsplatz 1, 20537 Hamburg, Germany (opponent), represented by Habermann, Hruschka & Schnabel, Montgelasstr. 2, 81679 München, Germany (professional representative)

a g a i n s t

Kober SRL, Str. Gheorghe Caranfil, No. 2, 617410 Dumbrava Rosie, Romania (applicant).

On 08/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 113 319 is upheld for all the contested goods, namely:

Class 7: All the goods in this class.

2. European Union trade mark application No 18 107 022 is rejected for all the contested goods. It may proceed for the remaining non-contested goods in Classes 1, 2, 3 and 17.

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 18 107 022 for the figurative mark , namely against all the goods in Class 7. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 235 266 for the word mark ‘KÖRBER SOLUTIONS’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating the European Union No 1 235 266.

a) The goods

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

Class 7: Mechanical dust extractors; cutting machines; machine tools, grinding machines, in particular external and internal cylindrical grinding machines, centreless grinding machines, cam shaft and non-cylindrical grinding machines, crankshaft grinding machines, surface and profile grinding machines, grinding machines; honing machines.

The contested goods are the following:

Class 7: Sanding machines (rotary -); disc sanding machines; polishing discs [parts of machines]; belt sanders [machines]; piece holders for polishing machines; sanding machines; belt sanding machines; milling machines and grinding machines for the treatment of ceramics and metal; electric sharpeners; machines and apparatus for polishing [electric]; floor polishing machines; sanding belts for use with machines; abrasive belts for power-operated sanders; machines for sanding floors; abrasive disks for power-operated sanders; sanding disks for use with machines; satinizing machines; polishing discs for use with electric floor polishers; parquet wax-polishers, electric; electric wax-polishing machines for industrial purposes; floor sanders; abrasive grinding wheels [tools for machines].

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. 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 relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 grinding machines for the treatment of ceramics and metal are included in the broad category of the opponent’s grinding machines. Therefore, they are identical.

The contested abrasive grinding wheels [tools for machines] are included in the broad category of the opponent’s machine tools. Therefore, they are identical.

The contested sanding machines (rotary -); disc sanding machines; belt sanders [machines]; sanding machines; belt sanding machines; milling machines; electric sharpeners; machines and apparatus for polishing [electric]; machines for sanding floors; satinizing machines; electric wax-polishing machines for industrial purposes; floor sanders are machines and machine tools used for the treatment of materials and for manufacturing, in particular in the processes of sanding, polishing, milling, sharping and satinising. The opponent’s cutting machines; grinding machines; honing machines also consist of or include machines and machine tools used for the treatment of materials and for manufacturing. Furthermore, the goods under comparison can be used in the manufacturing or treatment processes of the same goods and in the same production lines. Therefore, although the goods under comparison can fulfil different functions, they can still target the same relevant public and share the same distribution channels. Moreover, it is conceivable that they could be produced by the same undertakings, providing machines and machine tools for the treatment and manufacture of goods. Therefore, although it is not excluded that some of these categories may overlap, it is clear that they are at least similar.

The contested parquet wax-polishers, electric; floor polishing machines are various floor polishers, which are essentially versatile floor-cleaning machines that operate by using rotating brushes or pads to polish a floor to maintain its appearance. In addition, there are various alternative attachments for different floor surfaces, which makes them quite versatile cleaning machines. For example, polishing machines using the dry polishing method are often used together with a dust-collection system, either sold together as an integral unit or available to purchase separately. On the other hand, the opponent’s mechanical dust extractors have to be interpreted broadly. They include various dust extractors for very distinct purposes, such as dust-extracting machines for chemical processing (i.e. machines and machine tools for treatment of materials), but also dust extractors for cleaning purposes. The latter goods are versatile wet- or dry-cleaning machines designed to cleanse the air of dust or any other dust-like pollutant, which help the user to prevent any harm to the lungs and to eliminate any harmful particulates. Against this background, the contested parquet wax-polishers, electric; floor polishing machines are similar to the opponent’s mechanical dust extractors as they coincide in relevant public and distribution channels, and they can be produced by the same undertakings. They can also be complementary.

The contested polishing discs [parts of machines]; piece holders for polishing machines; sanding belts for use with machines; abrasive belts for power-operated sanders; abrasive disks for power-operated sanders; sanding disks for use with machines; polishing discs for use with electric floor polishers consist of holders for machine tools and parts of machines. They have relevant characteristics in common with the opponent’s machine tools. These goods normally originate from the same undertakings and target the same consumers. In addition, they are often complementary. Therefore, they are similar.

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 in question.

In the present case, the goods found to be identical or at least similar are directed at the public at large (e.g. enthusiasts in the DIY sector) and at business customers with specific professional knowledge or expertise (see, to this effect, 09/02/2021, R 1362/2020‑4, Hurthag / Würth, § 21).

Neither the general nor the professional public will purchase the goods spontaneously; they will only do so after an in-depth analysis of their needs and usually with the assistance of salespersons. The attention of both parts of the public is higher than average (09/02/2021, R 1362/2020‑4, Hurthag / Würth, § 21).

c) The signs

KÖRBER SOLUTIONS
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).

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.

The verbal elements ‘SOLUTIONS’ of the earlier mark and ‘Industries’ of the contested sign are meaningful in certain territories, for example in those countries where English is understood. This affects the perception of the signs by the relevant public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the EU.

The earlier mark is a word mark containing the verbal elements ‘KÖRBER’ and ‘SOLUTIONS’. The first word, ‘KÖRBER’, has no meaning for the relevant public and is, therefore, distinctive. The second verbal element of the earlier mark, ‘SOLUTIONS’, is the plural from of ‘solution’, understood as ‘a means of solving a problem or dealing with a difficult situation’ (information extracted from Oxford Dictionaries Online on 24/02/2021 at https://www.lexico.com/definition/solution). The relevant goods are various machines in Class 7 that aim to solve customers’ specific problems in this field; this element is therefore considered non-distinctive, as it will be seen as referring to the intended purpose of the goods in question, namely that they are aimed at solving problems in the relevant machine-related field (see, to this effect, 25/03/2020, R 2097/2019‑4, SQS SOLUTIONS (fig.) / SQS (fig.), § 23).

Moreover, the protection offered by the registration of a word mark applies to the word stated in the application for registration, and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. The earlier mark in this case does not deviate from the usual way of writing, since it is written entirely in upper-case letters, which is a fairly common way of depicting words. In addition, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

The contested sign is a figurative mark consisting of the black letter ‘K’. On the right side of this letter, the verbal elements ‘Köber’ and ‘Industries’ are written on two separate lines. The verbal elements ‘K’ and ‘Köber’ have no meaning for the contested goods and are therefore distinctive. The word ‘Industries’ is non-distinctive for the goods at issue (30/11/2007, R 1070/2005‑4, riello INDUSTRIES (fig.) / RIELLO (fig.) et al., § 20), since it will be associated by the relevant public with an undertaking that provides manufacturing capabilities and taken as an informative indication of the type and sector of specialisation of the goods’ manufacturer. Bearing in mind that the relevant goods are items likely to be manufactured in factories, this element is non-distinctive for all the goods.

The typeface of the contested sign is commonplace, with the exception of the letter ‘K’, which displays a certain degree of stylisation. Nevertheless, this degree of stylisation does not hinder the immediate recognition of this letter. The relatively standard black typeface of the contested sign will be perceived as a purely decorative graphic element, as it is usual in the relevant market sector for a sign’s verbal elements to be slightly stylised.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in almost all the letters of their most distinctive verbal elements ‘Kö*ber’ and ‘KÖBER’ (and their sounds), which form the first verbal element of the earlier mark and the second verbal element of the contested sign. The third letter in the earlier mark, ‘R’, is not present in the contested sign. However, this differentiating letter may go unnoticed by the public, considering the coincidence in all the other letters of these relatively long and meaningless verbal elements. The signs also differ in the additional verbal element ‘K’ of the contested sign (and its sound), which has no counterpart in the earlier mark. However, this element is likely to be understood simply as a repetition of the initial letter of the contested sign’s distinctive element ‘KÖBER’, as it is a standard practice in the relevant market sector for brands to graphically highlight their initial letter.

In addition, the signs differ in their remaining verbal elements and their sounds, namely ‘SOLUTIONS’ in the earlier mark and ‘Industries’ in the contested sign. However, these elements are non-distinctive, as indicated above. Furthermore, taking into account the fact that they are placed at the end of the signs, they have a lesser impact on the signs’ overall impression, as consumers generally pay more attention to the beginnings of signs. The signs also differ visually in the slight stylisation of the contested sign. However, its impact on consumers’ perception of the signs is limited and, in any event, less important, since the earlier mark is a word mark, which may be stylised in various ways. Moreover, the figurative aspects of the contested sign are not subject to a phonetic assessment.

The independent and more distinctive verbal elements of the signs have the same beginning and ending. Moreover, they coincide in five letters and differ only in the one additional letter placed in the middle of the earlier mark. As the differentiating elements and aspects cannot counteract these similarities, they are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As described above, the verbal elements ‘KÖRBER’ and ‘Köber’ do not convey any specific meaning. In addition, the letter ‘K’ of the contested sign will evoke the concept of the corresponding letter of the Latin alphabet and will be immediately linked to the first letter of the distinctive element ‘KÖBER’, which the public will perceive as the main indicator of origin in the contested sign. The remaining verbal elements, ‘SOLUTIONS’ of the earlier mark and ‘Industries’ of the contested sign, are meaningful for the relevant public under examination. However, as these elements are non-distinctive and cannot indicate the commercial origin, they are not able on their own to create any conceptual difference between the signs.

Since the letter ‘K’ of the contested sign has a certain semantic value, as explained above, the signs are not conceptually similar. However, this conceptual difference does not have a significant impact on consumers, as they will focus on the meaningless terms ‘KÖRBER’ and ‘Köber’ as indicators of origin.

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 goods in question from the perspective of the public under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly (at least) similar. They target the public at large and a professional public, whose degree of attentiveness is higher than average. The distinctiveness of the earlier mark is deemed to be normal.

Account is 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).

In the present case, as established above, the signs are visually and aurally similar to an average degree due to the similarities in their verbal elements ‘KÖRBER’ and ‘Köber’. Since these elements play an independent and distinctive role in each sign and are prominent placed, they have the greatest impact in the overall impression created by the signs. The differences between the signs are confined to the contested sign’s additional letter ‘K’, the non-distinctive verbal elements ‘SOLUTIONS’ and ‘Industries’, and a slight stylisation of the contested sign. The signs do not have any further verbal or figurative elements, and the conceptual difference created by the additional element ‘K’ of the contested sign does not have a significant impact, because from a consumer’s point of view the meaningless terms ‘KÖRBER’ and ‘Köber’ have greater trade mark significance and will serve as the main indicators of origin. Therefore, in an overall assessment of the marks, the differences do not have sufficient impact to counteract the similarities and enable the relevant public to safely distinguish between them. Therefore, it is highly conceivable that the relevant public, who will have to rely on their imperfect recollection of the signs, could confuse the signs or believe that the identical or similar goods originate from the same or economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 235 266. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration designating the European Union No 1 235 266 for the word mark ‘KÖRBER SOLUTIONS’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Gueorgui IVANOV

Anna PĘKAŁA

Lars HELBERT

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.