OPPOSITION Nо B 3 112 054

 

Sociedad Anónima Trabajos y Obras (Sato), Paseo de la Castellana, 259-D - Torre Espacio, Planta 8, 28046 Madrid, Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro, 9, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Apex Brands, Inc., 1000 Lufkin Road, 27539 Apex, United States of America (applicant), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative).

On 07/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 054 is partially upheld, namely for the following contested services:

 

	Class 37: Installation and maintenance of electrical equipment; rustproofing; re-tinning; painting services.
2.	European Union trade mark application No 18 134 621 is rejected for all the above services. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

REASONS

 

On 19/02/2020, the opponent filed an opposition against all the services (Class 37) of European Union trade mark application No 18 134 621 (figurative mark). The opposition is based on European Union trade mark registration No 18 049 051, . 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 services

 

The services on which the opposition is based are the following:

 

Class 37: Civil engineering construction; construction supervision of civil engineering projects; services for the rental of machinery for civil engineering; machinery for use in construction (rental of -).

The contested services are the following:

 

Class 37: Repairing of hand tools; machinery installation, maintenance and repair; installation and maintenance of electrical equipment; delivery vehicle maintenance; rustproofing; re-tinning; painting services; retreading of tires; vulcanization of tires.

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 applicant argues that the opponent is a construction company operating mainly in maritime and port projects, whereas the applicant provides highly sophisticated tools and machinery. However, the Opposition Division points out that the field in which the parties operate does not form the basis of the comparison of the goods and services in question. Their comparison must be based on the wording indicated in the respective lists of goods and services in order to guarantee that the protection granted is sufficiently broad not to undermine the opponent’s legitimate interest in being able, in the future, to extend its range of goods or services while enjoying the protection which the registration of that trade mark confers on it.

The contested installation and maintenance of electrical equipment; rustproofing; re-tinning; painting services are similar to the opponent’s civil engineering construction as they usually coincide in producer, relevant public and distribution channels. The Opposition Division disagrees with the applicant’s statements that the works such as rustproofing, installation of electrical equipment, re-tinning and painting are not part of the construction work, which overall finality is to build a building and/or infrastructure. The fact that some construction undertaking may provide all work themselves while others work with specific different undertakings for each step, does not undermine the fact that it is offered and provided usually by the same undertaking in the construction field.

The contested machinery installation, maintenance and repair are services rendered in the final stage at which machinery is unpacked, reassembled, realigned, connected to essential services and tested exhaustively to ensure it works at peak operating efficiency. Usually the installation team consist of specialist from the fields of mechanical, electrical and electronic engineering along with experts in heavy lifting technology. Consequently, the purpose hereof is different to the civil engineering (building construction) and to the rental of machinery; the method of use, distribution channels, sales outlets, producers/providers are different and they are neither in competition or complementary to each other. Therefore, these contested services are dissimilar to the opponent’s services. The rental of machines does not include the know-how of assembling the machines, but rather the offering of use for a certain time of the physical good, consequently, the opponent’s arguments cannot hold.

With respect to the contested repairing of hand tools, the relevant public which contracts building services does not need the repair of tools that are, or may be, used during the construction works. The services of repair of hand tools are directed at users of these tools in the field of construction, agriculture, gardening, carpentry, masonry as examples (these may be individuals or companies). Even considering that building services include, obviously, the services of sub-contractors and thus the relevant public for building services is not limited to the general public but includes also other businesses in this field, e.g. the developers of real estate, the repair services in relation to hand tools, they do not target the same public. Only because of the fact that both services are included in Class 37 does not make them similar per se.

The opponent argues that these services are complementary and a possible line of development of the construction field, however, this argument fails. By definition, goods intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48). Also, the specialization and/or technical know-how in the repair of tools is not necessarily part of the construction engineer.

Even arguing that the providers of building services (whether individuals or companies) are responsible for the maintenance of their tools and possess know-how about their repair and maintenance, this is not applicable either, because the repair works will be done in-house and not offered as a service to others. In any event, the opponent did not provide further arguments or support of this argument either.

Consequently, the nature, purpose of the services (building/repair), the undertaking rendering the services and method of rendering the services are different. These services are neither in competition, or complementary, therefore, being dissimilar.

The contested delivery vehicle maintenance; retreading of tires; vulcanization of tires these services are related to the maintenance of tires and vehicles. Vulcanization is a range of processes for the hardening of rubbers, whereas the retreading of tires is giving a renewed tread and sidewall rubber to a worn casing of a tire. This is then vulcanized to the original casing and the result is a new tire with a new tread pattern. The maintenance of vehicles is a mechanical check of the car, which also includes a control of the tires. Consequently, these services are dissimilar to the opponent’s civil engineering construction; construction supervision of civil engineering projects as well as to the services for the rental of machinery for civil engineering and machinery for use in construction (rental of -). They do not coincide in any of the relevant factors, namely nature, purpose of the services, distribution channels, outlet, providers, method of use and they are neither in competition or complementary to each other.

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 services found to be similar 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, sophistication and/or specialised nature, or terms and conditions of the services purchased.

 

c) The signs and distinctiveness of the earlier mark

 

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). 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 element ‘SATA’ has different meanings as for example in Croatia where it may be perceived as a ‘a timepiece/ hours’, or ‘SATO’ as ‘a measurement of the amount of grapes in viticulture/harvest’ in Finnish. To avoid conceptual differences between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, for whom the words are meaningless.

Both words, ‘SATO’ in the earlier mark and ‘SATA’ in the contested sign are meaningless and have a normal degree of distinctiveness.

The earlier mark ‘SATO’ is in white letters within a blue, background rectangle of purely decorative nature, which is not distinctive. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and despite the decorative figurative elements, the earlier mark has a normal degree of distinctiveness.

The contested verbal element ‘SATA’ is preceded by a divided hexagon, which due to this division is normally distinctive as it is not a simple geometrical figure. Furthermore, the contested sign has no element that could be considered clearly more dominant than other elements.

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).

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 coincide in their first three letters ‘SAT*’. However, they differ in their last letters, ‘O’ in the earlier and ‘A’ in the contested sign. Consequently, even with a distinctive figurative element upfront in the contested sign, the coincidences of the verbal elements have a stronger impact with three identical letters out of four, which will catch the attention of the reader first and have a higher impact.

Therefore, the signs are visually similar to an average degree.

 

Aurally, the signs coincide in the pronunciation of their first three identical letters ‘SAT*’, differing only in their last letters, ‘O’ in the earlier and ‘A’ in the contested sign. Furthermore, as the figurative elements are not subject to a phonetic assessment, the phonetic assessment is limited to the four letter words, in which the last vowel differs.

Consequently, the signs are aurally similar to a high degree.

Conceptually, 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.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

The earlier mark has an average degree of distinctiveness and the relevant public, the general and specialised public, has an average to high degree of attention.

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).

 

The services are partly similar and partly dissimilar. The signs are visually similar to an average and aurally to a high degree. As both signs are meaningless, the conceptual aspect does not influence the assessment of the similarity of the signs.

Contrary to the applicant’s arguments, the signs at stake are not short signs, which at most may include three letters, however, they can be considered relatively short signs with four letters. This does not undermine the fact that the first three letters are identical and that they only differ in the last letter, being both vowels. This holds true, even for high attentive public, who do not have a concept which might help them to safely hold the signs apart.

Taking into account the visual and aural similarities at the beginning of the signs and the differences only in their last letters, both vowels which attract less attention of the consumer, it is considered that the relevant public having an imperfect recollection of the signs and displaying an average to high level of attention, might be lead to believe that the similar services come from the same or economically linked undertakings. The blue background of the earlier and the figurative hexagone of the contested sign, the later even if distinctive, might be considered just another trade mark mock-up still coming from the same or related undertaking.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

 

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The applicant made reference to the case VIVO vs VIVA (B 10 464 of 31/01/2002) in which some conceptual considerations of the signs were taken into account and which lead to no likelihood of confusion, while in the present case, the signs at stake are meaningless. With respect to the ALFA v ALFI case (B 2 926 106 of 29/08/2018) the dominant figurative element was highly relevant for the outcome of no likelihood of confusion (similar to the TOPO case B 1 354 093 of 11/11/2009). In the case ELSE v ELSA (B 2 537 598 of 27/03/2018) the stylization of the sign made it difficult to clearly identify the verbal element was also the main argument for no likelihood of confusion (similar to the outcome of the LUNI v LUNA case B1 844003 of 16/5/2012).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 services found to be similar to those of the earlier trade mark.

 

The rest of the contested services are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these services 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Karin KLÜPFEL

Astrid Victoria WÄBER

Peter QUAY

 

 

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.