CANCELLATION No C 44 865 (invalidity) 

 

Risus Makina Ve Insaat Sanayi Ticaret Limited Sirketi, Doganlar Mah. 1427 Sok. Nº.8, Bornova, Izmir, Turkey (applicant), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative)

 

a g a i n s t

 

Risus Industry Makina Ve Insaat Sanayi Ticaret Limited Sirketi, Ferhatpasa Mah. 63.Sokak No:16 Iç Kapi No: 1 Atasehir, Istanbul, Turkey  (EUTM proprietor), represented by Casas Asin, S.L., Av. San Francisco Javier, 9 Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).

On 24/03/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

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

2.	European Union trade mark No 18 158 516 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

 

On 15/07/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 158 516 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on international trade mark registration designating, inter alia, France, Germany, Italy and Spain No 1 520 801 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(a) and Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM object of this action is identical to the earlier mark. Moreover, it claims that the goods and services in Classes 7 and 35 of the challenged right are identical to the goods and services protected by the earlier trade mark. According to the applicant, where the goods and services in Classes 7 and 35 of the registration are not deemed identical to the goods and services in the same classes of the earlier mark, these should be considered at least similar. In view of the identity of the marks and the similarity of the goods and services (where these are not found identical), the applicant concludes that there exists a likelihood of confusion on the part of the public between the marks in dispute and the proprietor’s mark was registered in breach of Article 8(1)(a) and/or Article 8(1)(b) EUTMR, so that the provisions of Article 60(1)(a) EUTMR are duly satisfied.

The EUTM proprietor did not file any argument in reply.

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 and services on which the application is based are the following: 

Class 7: Machines, machine tools and industrial robots for processing and shaping wood, metals, glass, plastics and minerals; construction machines and robotic mechanisms (machines) for use in construction, bulldozers, diggers (machines), excavators, road construction and road paving machines, drilling machines, rock drilling machines, road sweeping machines; lifting, loading and transmission machines and robotic mechanisms (machines) for lifting, loading and transmission purposes: elevators, escalators and cranes; machines and robotic mechanisms (machines) for use in agriculture and animal breeding, machines and robotic mechanisms (machines) for processing cereals, fruits, vegetables and food; engines and motors, other than for land vehicles, parts and fittings therefor, hydraulic and pneumatic controls for engines and motors, brakes other than for vehicles, brake linings for engines, crankshafts, cylinders for engines, pistons for engines, turbines, not for land vehicles, filters for engines and motors, oil, air and fuel filters for land vehicle engines, exhausts for land vehicle engines, exhaust manifolds for land vehicle engines, engine cylinders for land vehicles, engine cylinder heads for land vehicles, pistons for land vehicle engines, carburetors for land vehicles, fuel conversion apparatus for land vehicle engines, injectors for land vehicle engines, fuel economizers for land vehicle engines, valves for land vehicle engines, starter motors for land vehicles, dynamos for land vehicle engines, sparking plugs for land vehicle engines; bearings (parts of machines), roller or ball bearings; machines for mounting and detaching tires; alternators, current generators, electric generators, current generators operated with solar energy; painting machines, automatic spray guns for paint, electric, hydraulic and pneumatic punching machines and guns, electric adhesive tape dispensers (machines), electric guns for compressed gas or liquid spraying machines, electric hand drills, electric hand saws, jigsaw machines, compressed air machines, compressors (machines), vehicle washing installations, robotic mechanisms (machines) with the abovementioned functions; electric and gas-operated welding apparatus, electric arc welding apparatus, electric soldering apparatus, electric arc cutting apparatus, electrodes for welding machines, industrial robots (machines) with the abovementioned functions; printing machines; packaging machines, filling, plugging and sealing machines, labelers (machines), sorting machines, industrial robots (machines) with the abovementioned functions; machines for textile processing, sewing machines, industrial robots (machines) with the abovementioned functions; electric kitchen machines for chopping, grinding, crushing, mixing and mincing foodstuff, washing machines, laundry washing machines, dishwashers, spin driers (not heated), electric cleaning machines for cleaning floors, carpets or floorings, vacuum cleaners and parts thereof; automatic vending machines.

Class 35: Advertising, marketing and public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; design for advertising; provision of an online marketplace for buyers and sellers of goods and services; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management, business administration and business consultancy; accounting; commercial consultancy services; personnel recruitment, personnel placement, employment agencies, import-export agencies; temporary personnel placement services; auctioneering; the bringing together, for the benefit of others, of a variety of goods, namely, machines, machine tools and industrial robots for processing and shaping wood, metals, glass, plastics and minerals, construction machines and robotic mechanisms (machines) for use in construction, bulldozers, diggers (machines), excavators, road construction and road paving machines, drilling machines, rock drilling machines, road sweeping machines, lifting, loading and transmission machines and robotic mechanisms (machines) for lifting, loading and transmission purposes, elevators, escalators and cranes, machines and robotic mechanisms (machines) for use in agriculture and animal breeding, machines and robotic mechanisms (machines) for processing cereals, fruits, vegetables and food, engines and motors, other than for land vehicles, parts and fittings therefor, hydraulic and pneumatic controls for engines and motors, brakes other than for vehicles, brake linings for engines, crankshafts, cylinders for engines, pistons for engines, turbines, not for land vehicles, filters for engines and motors, oil, air and fuel filters for land vehicle engines, exhausts for land vehicle engines, exhaust manifolds for land vehicle engines, engine cylinders for land vehicles, engine cylinder heads for land vehicles, pistons for land vehicle engines, carburetors for land vehicles, fuel conversion apparatus for land vehicle engines, injectors for land vehicle engines, fuel economizers for land vehicle engines, valves for land vehicle engines, starter motors for land vehicles, dynamos for land vehicle engines, sparking plugs for land vehicle engines, bearings (parts of machines), roller or ball bearings, machines for mounting and detaching tires, alternators, current generators, electric generators, current generators operated with solar energy, painting machines, automatic spray guns for paint, electric, hydraulic and pneumatic punching machines and guns, electric adhesive tape dispensers (machines), electric guns for compressed gas or liquid spraying machines, electric hand drills, electric hand saws, jigsaw machines, compressed air machines, compressors (machines), vehicle washing installations, robotic mechanisms (machines) with the abovementioned functions, electric and gas-operated welding apparatus, electric arc welding apparatus, electric soldering apparatus, electric arc cutting apparatus, electrodes for welding machines, industrial robots (machines) with the abovementioned functions, printing machines, packaging machines, filling, plugging and sealing machines, labelers (machines), sorting machines, industrial robots (machines) with the abovementioned functions, machines for textile processing, sewing machines, industrial robots (machines) with the abovementioned functions, electric kitchen machines for chopping, grinding, crushing, mixing and mincing foodstuff, washing machines, laundry washing machines, dishwashers, spin driers (not heated), electric cleaning machines for cleaning floors, carpets or floorings, vacuum cleaners and parts thereof, automatic vending machines, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

 

The contested goods and services are the following: 

Class 7: Machines for shaping metal; machines for shaping glass; machines for shaping wood; machines for shaping plastic material; machine tools; industrial robots for shaping glass; industrial robots for shaping metal; industrial robots for shaping plastic material; industrial robots for shaping wood; 3d printers; construction machines; bulldozers; diggers (machines); excavators; road paving machines; drilling machines; rock drills [machines]; road sweeping machines; lifting machines; loading machines; transporting machines; transferring machines; machines for lifting; elevators; escalators; cranes; machines for use in agriculture; feeding machines; cereal processing machines; machines for processing fruits; machines for processing vegetables; machines for processing foods; hydraulic controls for machines, motors and engines; pneumatic controls for machines, motors and engines; brakes for machines; band brakes [machine elements not for land vehicles]; block brakes [machine elements not for land vehicles]; linings for brakes [parts of machines]; crank shafts; cylinders for motors and engines; pistons for engines; turbines not for land vehicles; filters for motors and engines; oil filters for motors and engines; filters for engines; sumps being parts of vehicle gearboxes [other than land vehicle]; oil filters; fuel filters; air filters for engines; exhaust pipes for land vehicles; exhaust systems for vehicles; engine cylinders for land vehicles; pistons for land vehicle engines; carburetors [vehicle parts]; fuel conversion apparatus for internal combustion engines; fuel injector parts for land and water vehicle enginevehicle engines; valves for engines; dynamos; spark plugs for land vehicle engines; bearings (parts of machines); ball bearings for roller skates; machines for mounting and detaching tires; alternators; current generators; electric generators; painting machines; bearings; fuel economisers for motors and engines; pumps for land vehicle engines; automatic robotic spray guns for paint; adhesive tape dispensers [machines]; guns for compressed air spraying machines; guns for compressed liquid spraying machines; electric hand drills; hand saws (electrically operated -); electric wood saw machines; self-driven machines for sawing; spiral conveyors [machines]; grinding machines with spiral bevel gears; compressed air machines; compressors (machines); vehicle washing installations; gas-operated welding apparatus; electric arc welding apparatus; electric soldering apparatus; electric arc cutting apparatus; electrodes for welding machines; industrial robots; printing machines; packaging machines; sealing machines; labellers (machines); batch sorting machines; waste sorting machines; packing machines; material production and processing machines; sewing machines; pumps as parts of machines, motors and engines; fuel dispensing pumps for service stations; self-regulating fuel pumps; electric kitchen machines; whitewashing machines; laundry washing machines; dishwashers; spin driers (not heated); vacuum cleaners; automatic vending machines; electroplating machines; electric door openers-closers used in land vehicles; joints (parts of engines).

Class 35: Retail services in relation to machines for shaping metal; wholesale services in relation to machines for shaping metal; online retail services in relation to machines for shaping metal; mail order retail services in relation to machines for shaping metal; retail services in relation to machines for shaping glass; wholesale services in relation to machines for shaping glass; online retail services in relation to machines for shaping glass; mail order retail services in relation to machines for shaping glass; retail services in relation to machines for shaping wood; wholesale services in relation to machines for shaping wood; online retail services in relation to machines for shaping wood; mail order retail services in relation to machines for shaping wood; retail services in relation to machines for shaping plastic material; wholesale services in relation to machines for shaping plastic material; online retail services in relation to machines for shaping plastic material; mail order retail services in relation to machines for shaping plastic material; retail services in relation to machine tools; wholesale services in relation to machine tools; online retail services in relation to machine tools; mail order retail services in relation to machine tools; retail services in relation to industrial robots for shaping glass; wholesale services in relation to industrial robots for shaping glass; online retail services in relation to industrial robots for shaping glass; mail order retail services in relation to industrial robots for shaping glass; retail services in relation to industrial robots for shaping metal; wholesale services in relation to industrial robots for shaping metal; online retail services in relation to industrial robots for shaping metal; mail order retail services in relation to industrial robots for shaping metal; retail services in relation to industrial robots for shaping plastic material; wholesale services in relation to industrial robots for shaping plastic material; online retail services in relation to industrial robots for shaping plastic material; mail order retail services in relation to industrial robots for shaping plastic material; retail services in relation to industrial robots for shaping wood; wholesale services in relation to industrial robots for shaping wood; online retail services in relation to industrial robots for shaping wood; mail order retail services in relation to industrial robots for shaping wood; retail services in relation to 3d printers; wholesale services in relation to 3d printers; online retail services in relation to 3d printers; mail order retail services in relation to 3d printers; retail services in relation to construction machines; wholesale services in relation to construction machines; online retail services in relation to construction machines; mail order retail services in relation to construction machines; retail services in relation to bulldozers; wholesale services in relation to bulldozers; online retail services in relation to bulldozers; mail order retail services in relation to bulldozers; retail services in relation to diggers (machines); wholesale services in relation to diggers (machines); online retail services in relation to diggers (machines); mail order retail services in relation to diggers (machines); retail services in relation to excavators; wholesale services in relation to excavators; online retail services in relation to excavators; mail order retail services in relation to excavators; retail services in relation to road paving machines; wholesale services in relation to road paving machines; online retail services in relation to road paving machines; mail order retail services in relation to road paving machines; retail services in relation to drilling machines; wholesale services in relation to drilling machines; online retail services in relation to drilling machines; mail order retail services in relation to drilling machines; retail services in relation to rock drills [machines]; wholesale services in relation to rock drills [machines]; online retail services in relation to rock drills [machines]; mail order retail services in relation to rock drills [machines]; retail services in relation to road sweeping machines; wholesale services in relation to road sweeping machines; online retail services in relation to road sweeping machines; mail order retail services in relation to road sweeping machines; retail services in relation to lifting machines; wholesale services in relation to lifting machines; online retail services in relation to lifting machines; mail order retail services in relation to lifting machines; retail services in relation to loading machines; wholesale services in relation to loading machines; online retail services in relation to loading machines; mail order retail services in relation to loading machines; retail services in relation to transporting machines; wholesale services in relation to transporting machines; online retail services in relation to transporting machines; mail order retail services in relation to transporting machines; retail services in relation to transferring machines; wholesale services in relation to transferring machines; online retail services in relation to transferring machines; mail order retail services in relation to transferring machines; retail services in relation to machines for lifting; wholesale services in relation to machines for lifting; online retail services in relation to machines for lifting; mail order retail services in relation to machines for lifting; retail services in relation to elevators; wholesale services in relation to elevators; online retail services in relation to elevators; mail order retail services in relation to elevators; retail services in relation to escalators; wholesale services in relation to escalators; online retail services in relation to escalators; mail order retail services in relation to escalators; retail services in relation to cranes; wholesale services in relation to cranes; online retail services in relation to cranes; mail order retail services in relation to cranes; retail services in relation to machines for use in agriculture; wholesale services in relation to machines for use in agriculture; online retail services in relation to machines for use in agriculture; mail order retail services in relation to machines for use in agriculture; retail services in relation to feeding machines; wholesale services in relation to feeding machines; online retail services in relation to feeding machines; mail order retail services in relation to feeding machines; retail services in relation to cereal processing machines; wholesale services in relation to cereal processing machines; online retail services in relation to cereal processing machines; mail order retail services in relation to cereal processing machines; retail services in relation to machines for processing fruits; wholesale services in relation to machines for processing fruits; online retail services in relation to machines for processing fruits; mail order retail services in relation to machines for processing fruits; retail services in relation to machines for processing vegetables; wholesale services in relation to machines for processing vegetables; online retail services in relation to machines for processing vegetables; mail order retail services in relation to machines for processing vegetables; retail services in relation to machines for processing foods; wholesale services in relation to machines for processing foods; online retail services in relation to machines for processing foods; mail order retail services in relation to machines for processing foods; retail services in relation to hydraulic controls for machines, motors and engines; wholesale services in relation to hydraulic controls for machines, motors and engines; online retail services in relation to hydraulic controls for machines, motors and engines; mail order retail services in relation to hydraulic controls for machines, motors and engines; retail services in relation to pneumatic controls for machines, motors and engines; wholesale services in relation to pneumatic controls for machines, motors and engines; online retail services in relation to pneumatic controls for machines, motors and engines; mail order retail services in relation to pneumatic controls for machines, motors and engines; retail services in relation to brakes for machines; wholesale services in relation to brakes for machines; online retail services in relation to brakes for machines; mail order retail services in relation to brakes for machines; retail services in relation to band brakes [machine elements not for land vehicles]; wholesale services in relation to band brakes [machine elements not for land vehicles]; online retail services in relation to band brakes [machine elements not for land vehicles]; mail order retail services in relation to band brakes [machine elements not for land vehicles]; retail services in relation to block brakes [machine elements not for land vehicles]; wholesale services in relation to block brakes [machine elements not for land vehicles]; online retail services in relation to block brakes [machine elements not for land vehicles]; mail order retail services in relation to block brakes [machine elements not for land vehicles]; retail services in relation to linings for brakes [parts of machines]; wholesale services in relation to linings for brakes [parts of machines]; online retail services in relation to linings for brakes [parts of machines]; mail order retail services in relation to linings for brakes [parts of machines]; retail services in relation to crank shafts; wholesale services in relation to crank shafts; online retail services in relation to crank shafts; mail order retail services in relation to crank shafts; retail services in relation to cylinders for motors and engines; wholesale services in relation to cylinders for motors and engines; online retail services in relation to cylinders for motors and engines; mail order retail services in relation to cylinders for motors and engines; retail services in relation to pistons for engines; wholesale services in relation to pistons for engines; online retail services in relation to pistons for engines; mail order retail services in relation to pistons for engines; retail services in relation to turbines not for land vehicles; wholesale services in relation to turbines not for land vehicles; online retail services in relation to turbines not for land vehicles; mail order retail services in relation to turbines not for land vehicles; retail services in relation to filters for motors and engines; wholesale services in relation to filters for motors and engines; online retail services in relation to filters for motors and engines; mail order retail services in relation to filters for motors and engines; retail services in relation to oil filters for motors and engines; wholesale services in relation to oil filters for motors and engines; online retail services in relation to oil filters for motors and engines; mail order retail services in relation to oil filters for motors and engines; retail services in relation to filters for engines; wholesale services in relation to filters for engines; online retail services in relation to filters for engines; mail order retail services in relation to filters for engines; retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; wholesale services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; online retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; mail order retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; retail services in relation to oil filters; wholesale services in relation to oil filters; online retail services in relation to oil filters; mail order retail services in relation to oil filters; retail services in relation to fuel filters; wholesale services in relation to fuel filters; online retail services in relation to fuel filters; mail order retail services in relation to fuel filters; retail services in relation to air filters for engines; wholesale services in relation to air filters for engines; online retail services in relation to air filters for engines; mail order retail services in relation to air filters for engines; retail services in relation to exhaust pipes for land vehicles; wholesale services in relation to exhaust pipes for land vehicles; online retail services in relation to exhaust pipes for land vehicles; mail order retail services in relation to exhaust pipes for land vehicles; retail services in relation to exhaust systems for vehicles; wholesale services in relation to exhaust systems for vehicles; online retail services in relation to exhaust systems for vehicles; mail order retail services in relation to exhaust systems for vehicles; retail services in relation to engine cylinders for land vehicles; wholesale services in relation to engine cylinders for land vehicles; online retail services in relation to engine cylinders for land vehicles; mail order retail services in relation to engine cylinders for land vehicles; retail services in relation to pistons for land vehicle engines; wholesale services in relation to pistons for land vehicle engines; online retail services in relation to pistons for land vehicle engines; mail order retail services in relation to pistons for land vehicle engines; retail services in relation to carburetors [vehicle parts]; wholesale services in relation to carburetors [vehicle parts]; online retail services in relation to carburetors [vehicle parts]; mail order retail services in relation to carburetors [vehicle parts]; retail services in relation to fuel conversion apparatus for internal combustion engines; wholesale services in relation to fuel conversion apparatus for internal combustion engines; online retail services in relation to fuel conversion apparatus for internal combustion engines; mail order retail services in relation to fuel conversion apparatus for internal combustion engines; retail services in relation to fuel injector parts for land and water vehicle engines; wholesale services in relation to fuel injector parts for land and water vehicle engines; online retail services in relation to fuel injector parts for land and water vehicle engines; mail order retail services in relation to fuel injector parts for land and water vehicle engines; retail services in relation to pumps for land vehicle engines; wholesale services in relation to pumps for land vehicle engines; online retail services in relation to pumps for land vehicle engines; mail order retail services in relation to pumps for land vehicle engines; retail services in relation to valves for engines; wholesale services in relation to valves for engines; online retail services in relation to valves for engines; mail order retail services in relation to valves for engines; retail services in relation to dynamos; wholesale services in relation to dynamos; online retail services in relation to dynamos; mail order retail services in relation to dynamos; retail services in relation to spark plugs for land vehicle engines; wholesale services in relation to spark plugs for land vehicle engines; online retail services in relation to spark plugs for land vehicle engines; mail order retail services in relation to spark plugs for land vehicle engines; retail services in relation to bearings (parts of machines); wholesale services in relation to bearings (parts of machines); online retail services in relation to bearings (parts of machines); mail order retail services in relation to bearings (parts of machines); retail services in relation to ball bearings for roller skates; wholesale services in relation to ball bearings for roller skates; online retail services in relation to ball bearings for roller skates; mail order retail services in relation to ball bearings for roller skates; retail services in relation to machines for mounting and detaching tires; wholesale services in relation to machines for mounting and detaching tires; online retail services in relation to machines for mounting and detaching tires; mail order retail services in relation to machines for mounting and detaching tires; retail services in relation to alternators; wholesale services in relation to alternators; online retail services in relation to alternators; mail order retail services in relation to alternators; retail services in relation to current generators; wholesale services in relation to current generators; online retail services in relation to current generators; mail order retail services in relation to current generators; retail services in relation to electric generators; wholesale services in relation to electric generators; online retail services in relation to electric generators; mail order retail services in relation to electric generators; retail services in relation to painting machines; wholesale services in relation to painting machines; online retail services in relation to painting machines; mail order retail services in relation to painting machines; retail services in relation to bearings; wholesale services in relation to bearings; online retail services in relation to bearings; mail order retail services in relation to bearings; retail services in relation to fuel economisers for motors and engines; wholesale services in relation to fuel economisers for motors and engines; online retail services in relation to fuel economisers for motors and engines; mail order retail services in relation to fuel economisers for motors and engines; retail services in relation to automatic robotic spray guns for paint; wholesale services in relation to automatic robotic spray guns for paint; online retail services in relation to automatic robotic spray guns for paint; mail order retail services in relation to automatic robotic spray guns for paint; retail services in relation to adhesive tape dispensers [machines]; wholesale services in relation to adhesive tape dispensers [machines]; online retail services in relation to adhesive tape dispensers [machines]; mail order retail services in relation to adhesive tape dispensers [machines]; retail services in relation to guns for compressed air spraying machines; wholesale services in relation to guns for compressed air spraying machines; online retail services in relation to guns for compressed air spraying machines; mail order retail services in relation to guns for compressed air spraying machines; retail services in relation to guns for compressed liquid spraying machines; wholesale services in relation to guns for compressed liquid spraying machines; online retail services in relation to guns for compressed liquid spraying machines; mail order retail services in relation to guns for compressed liquid spraying machines; retail services in relation to electric hand drills; wholesale services in relation to electric hand drills; online retail services in relation to electric hand drills; mail order retail services in relation to electric hand drills; retail services in relation to hand saws (electrically operated -); wholesale services in relation to hand saws (electrically operated -); online retail services in relation to hand saws (electrically operated -); mail order retail services in relation to hand saws (electrically operated -); retail services in relation to electric wood saw machines; wholesale services in relation to electric wood saw machines; online retail services in relation to electric wood saw machines; mail order retail services in relation to electric wood saw machines; retail services in relation to self-driven machines for sawing; wholesale services in relation to self-driven machines for sawing; online retail services in relation to self-driven machines for sawing; mail order retail services in relation to self-driven machines for sawing; retail services in relation to spiral conveyors [machines]; wholesale services in relation to spiral conveyors [machines]; online retail services in relation to spiral conveyors [machines]; mail order retail services in relation to spiral conveyors [machines]; retail services in relation to grinding machines with spiral bevel gears; wholesale services in relation to grinding machines with spiral bevel gears; online retail services in relation to grinding machines with spiral bevel gears; mail order retail services in relation to grinding machines with spiral bevel gears; retail services in relation to compressed air machines; wholesale services in relation to compressed air machines; online retail services in relation to compressed air machines; mail order retail services in relation to compressed air machines; retail services in relation to compressors (machines); wholesale services in relation to compressors (machines); online retail services in relation to compressors (machines); mail order retail services in relation to compressors (machines); retail services in relation to vehicle washing installations; wholesale services in relation to vehicle washing installations; online retail services in relation to vehicle washing installations; mail order retail services in relation to vehicle washing installations; retail services in relation to gas-operated welding apparatus; wholesale services in relation to gas-operated welding apparatus; online retail services in relation to gas-operated welding apparatus; mail order retail services in relation to gas-operated welding apparatus; retail services in relation to electric arc welding apparatus; wholesale services in relation to electric arc welding apparatus; online retail services in relation to electric arc welding apparatus; mail order retail services in relation to electric arc welding apparatus; retail services in relation to electric soldering apparatus; wholesale services in relation to electric soldering apparatus; online retail services in relation to electric soldering apparatus; mail order retail services in relation to electric soldering apparatus; retail services in relation to electric arc cutting apparatus; wholesale services in relation to electric arc cutting apparatus; online retail services in relation to electric arc cutting apparatus; mail order retail services in relation to electric arc cutting apparatus; retail services in relation to electrodes for welding machines; wholesale services in relation to electrodes for welding machines; online retail services in relation to electrodes for welding machines; mail order retail services in relation to electrodes for welding machines; retail services in relation to industrial robots; wholesale services in relation to industrial robots; online retail services in relation to industrial robots; mail order retail services in relation to industrial robots; retail services in relation to printing machines; wholesale services in relation to printing machines; online retail services in relation to printing machines; mail order retail services in relation to printing machines; retail services in relation to packaging machines; wholesale services in relation to packaging machines; online retail services in relation to packaging machines; mail order retail services in relation to packaging machines; retail services in relation to sealing machines; wholesale services in relation to sealing machines; online retail services in relation to sealing machines; mail order retail services in relation to sealing machines; retail services in relation to labellers (machines); wholesale services in relation to labellers (machines); online retail services in relation to labellers (machines); mail order retail services in relation to labellers (machines); retail services in relation to batch sorting machines; wholesale services in relation to batch sorting machines; online retail services in relation to batch sorting machines; mail order retail services in relation to batch sorting machines; retail services in relation to waste sorting machines; wholesale services in relation to waste sorting machines; online retail services in relation to waste sorting machines; mail order retail services in relation to waste sorting machines; retail services in relation to packing machines; wholesale services in relation to packing machines; online retail services in relation to packing machines; mail order retail services in relation to packing machines; retail services in relation to material production and processing machines; wholesale services in relation to material production and processing machines; online retail services in relation to material production and processing machines; mail order retail services in relation to material production and processing machines; retail services in relation to sewing machines; wholesale services in relation to sewing machines; online retail services in relation to sewing machines; mail order retail services in relation to sewing machines; retail services in relation to fuel dispensing pumps for service stations; wholesale services in relation to fuel dispensing pumps for service stations; online retail services in relation to fuel dispensing pumps for service stations; mail order retail services in relation to fuel dispensing pumps for service stations; retail services in relation to self-regulating fuel pumps; wholesale services in relation to self-regulating fuel pumps; online retail services in relation to self-regulating fuel pumps; mail order retail services in relation to self-regulating fuel pumps; retail services in relation to electric kitchen machines; wholesale services in relation to electric kitchen machines; online retail services in relation to electric kitchen machines; mail order retail services in relation to electric kitchen machines; retail services in relation to whitewashing machines; wholesale services in relation to whitewashing machines; online retail services in relation to whitewashing machines; mail order retail services in relation to whitewashing machines; retail services in relation to laundry washing machines; wholesale services in relation to laundry washing machines; online retail services in relation to laundry washing machines; mail order retail services in relation to laundry washing machines; retail services in relation to dishwashers; wholesale services in relation to dishwashers; online retail services in relation to dishwashers; mail order retail services in relation to dishwashers; retail services in relation to spin driers (not heated); wholesale services in relation to spin driers (not heated); online retail services in relation to spin driers (not heated); mail order retail services in relation to spin driers (not heated); retail services in relation to vacuum cleaners; wholesale services in relation to vacuum cleaners; online retail services in relation to vacuum cleaners; mail order retail services in relation to vacuum cleaners; retail services in relation to automatic vending machines; wholesale services in relation to automatic vending machines; online retail services in relation to automatic vending machines; mail order retail services in relation to automatic vending machines; retail services in relation to electroplating machines; wholesale services in relation to electroplating machines; online retail services in relation to electroplating machines; mail order retail services in relation to electroplating machines; retail services in relation to electric door openers-closers used in land vehicles; wholesale services in relation to electric door openers-closers used in land vehicles; online retail services in relation to electric door openers-closers used in land vehicles; mail order retail services in relation to electric door openers-closers used in land vehicles; retail services in relation to joints (parts of engines); wholesale services in relation to joints (parts of engines); online retail services in relation to joints (parts of engines); mail order retail services in relation to joints (parts of engines); research services relating to advertising and marketing; organization of exhibitions and trade fairs for commercial or advertising purposes; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management; business administration; business consultancy; accounting; commercial consultancy services; personnel recruitment; personnel placement; employment agencies; import-export agencies; temporary personnel placement services; auctioneering.

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 ‘namely, used in the applicant’s list of  goods and services, in particular in the list of services in Class 35, to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

 

Contested goods in Class 7 

The contested guns for compressed air spraying machines; guns for compressed liquid spraying machines include, as broader categories, the applicant's electric guns for compressed gas or liquid spraying machines. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the earlier goods.

The contested joints (parts of engines); pumps for land vehicle engines (listed twice); pumps as parts of machines, motors and engines are included in the applicant’s broad category of engines and motors, other than for land vehicles, parts and fittings therefor. Therefore, they are identical.

The contested fuel injector parts for land vehicle engines are included in the applicant’s broad category of injectors for land vehicle engines . Therefore, they are identical.

The contested fuel conversion apparatus for internal combustion engines overlap with the applicant’s fuel conversion apparatus for land vehicle engines. Therefore, they are identical.

The contested fuel economisers for motors and engines include, as a broader category the applicant’s fuel economizers for land vehicle engines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested hand saws (Electrically operated -); electric wood saw machines; self-driven machines for sawing overlap with the applicant’s jigsaw machines. Therefore, they are identical.

The contested transferring machines overlap with the applicant’s sorting machines. Therefore, they are identical.

Machines for mounting and detaching tires; printing machines; automatic vending machines; bulldozers; diggers (machines); excavators; drilling machines; road sweeping machines; elevators; escalators; cranes; pistons for engines; turbines not for land vehicles; engine cylinders for land vehicles; pistons for land vehicle engines; bearings (parts of machines); alternators; current generators; electric generators; painting machines; electric hand drills; compressed air machines; compressors (machines); vehicle washing installations; electric arc cutting apparatus; electrodes for welding machines; packaging machines; sewing machines; laundry washing machines; dishwashers; spin driers (not heated); vacuum cleaners; machines for shaping metal; machines for shaping glass; machines for shaping wood; machines for shaping plastic material; cereal processing machines; machines for processing fruits; machines for processing vegetables; machines for processing foods; industrial robots for shaping glass; industrial robots for shaping metal; industrial robots for shaping plastic material; industrial robots for shaping wood; gas-operated welding apparatus; electric arc welding apparatus; electric soldering apparatus; construction machines; road paving machines; machines for use in agriculture; rock drills [machines]; lifting machines; machines for lifting; sealing machines; labellers (machines); loading machines; packing machines; crank shafts; hydraulic controls for motors and engines; pneumatic controls for motors and engines; cylinders for motors and engines; filters for motors and engines; filters for engines; exhaust pipes for land vehicles; exhaust systems for vehicles; bearings; spark plugs for land vehicle engines are identically contained in both lists of goods (including synonyms).

The contested 3D printers are included in the applicant’s broad category of printing machines. Therefore, they are identical.

The contested linings for brakes [parts of machines] include, as a broader category the applicant’s brake linings for engines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested carburetors [vehicle parts] include, as a broader category the applicant’s carburetors for land vehicles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested whitewashing machines are included in the applicant’s broad category of painting machines. Therefore, they are identical.

The contested automatic robotic spray guns for paint are included in the applicant’s broad category of automatic spray guns for paint. Therefore, they are identical.

The contested electric kitchen machines include, as a broader category the applicant’s electric kitchen machines for chopping, grinding, crushing, mixing and mincing foodstuff. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested industrial robots; machine tools; material production and processing machines include, as a broader categories, or overlap with, the applicant’s machine tools and industrial robots for processing and shaping wood, metals, glass, plastics and minerals. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the earlier goods.

The contested spiral conveyors [machines] are included in the applicant’s broad category of lifting, loading and transmission machines and robotic mechanisms (machines) for lifting, loading and transmission purposes. Therefore, they are identical.

The contested oil filters for motors and engines; air filters for engines are included in the applicant’s broad category of filters for engines and motors. Therefore, they are identical.

The contested valves for engines include, as a broader category the applicant’s valves for land vehicle engines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested brakes for machines; band brakes [machine elements not for land vehicles]; block brakes [machine elements not for land vehicles] are included in the applicant’s broad category of brakes other than for vehicles. Therefore, they are identical.

The contested ball bearings for roller skates are included in the applicant’s broad category of ball bearings. Therefore, they are identical.

The contested adhesive tape dispensers [machines] include, as a broader category the applicant’s electric adhesive tape dispensers (machines). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested dynamos are included in the applicant’s broad category of electric generators. Therefore, they are identical.

The contested waste sorting machines; batch sorting machines are included in the applicant’s broad category of sorting machines. Therefore, they are identical.

The contested oil filters; fuel filters include, as a broader category the applicant’s oil, air and fuel filters for land vehicle engines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested hydraulic controls for machines; pneumatic controls for machines are similar to a high degree to the applicant’s hydraulic and pneumatic controls for engines and motors because they have the same nature, purpose, distribution channels and producer. Furthermore, they are addressed at the same public.

The contested grinding machines with spiral bevel gears are similar to a high degree to the applicant’s electric arc cutting apparatus because they have the same nature, purpose, distribution channels and producer. Furthermore, they are addressed at the same public.

The contested self-regulating fuel pumps are similar to a high degree to the applicant’s fuel economizers for land vehicle engines because they have the same nature, i.e regulating/controlling fuel, and they coincide in distribution, relevant public and producer.

The contested fuel dispensing pumps for service stations are similar to a high degree to the applicant’s automatic vending machines because they have the same nature, purpose, distribution channels and producer. Furthermore, they are addressed at the same public.

The contested electroplating machines are similar to a high degree to the applicant’s painting machines because they have the same purpose and they coincide in distribution channels, relevant public and producer.

The contested sumps being parts of vehicle gearboxes [other than land vehicle] are similar to the applicant’s engines and motors, other than for land vehicles, parts and fittings therefor because they coincide in distribution channels, relevant public and producer.

The contested electric door openers-closers used in land vehicles are similar to the applicant’s starter motors for land vehicles because they are all parts of land vehicles. Although their purpose is not the same, they coincide in distribution channels, relevant public and producer.

The contested transporting machines; feeding machines are similar to the applicant’s packaging machines because they have the same nature, they share a certain degree of complementarity and they can coincide in distribution channels, relevant public and producer.

The contested fuel injector parts for water vehicle engines are similar to the applicant’s injectors for land vehicle engines because they have the same nature and they can coincide in distribution channels and producer.

Contested services in class 35

The contested research services relating to advertising and marketing; organization of exhibitions and trade fairs for commercial or advertising purposes; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management; business administration; business consultancy; accounting; commercial consultancy services; personnel recruitment; personnel placement; employment agencies; import-export agencies; temporary personnel placement services; auctioneering are identical to the applicant’s advertising, marketing and public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; design for advertising; provision of an online marketplace for buyers and sellers of goods and services; office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; business management, business administration and business consultancy; accounting; commercial consultancy services; personnel recruitment, personnel placement, employment agencies, import-export agencies; temporary personnel placement services; auctioneering, either because they are identically contained in both lists, or because the contested services include, are included in, or overlap with the applicant’s services.

As regards the rest of the contested services, preliminarily, account must be taken of the fact that retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

 

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

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, online retail (internet shopping), catalogue or mail order services in Class 35.

The contested retail services in relation to machines for shaping metal; wholesale services in relation to machines for shaping metal; online retail services in relation to machines for shaping metal; mail order retail services in relation to machines for shaping metal; retail services in relation to machines for shaping glass; wholesale services in relation to machines for shaping glass; online retail services in relation to machines for shaping glass; mail order retail services in relation to machines for shaping glass; retail services in relation to machines for shaping wood; wholesale services in relation to machines for shaping wood; online retail services in relation to machines for shaping wood; mail order retail services in relation to machines for shaping wood; retail services in relation to machines for shaping plastic material; wholesale services in relation to machines for shaping plastic material; online retail services in relation to machines for shaping plastic material; mail order retail services in relation to machines for shaping plastic material; retail services in relation to machine tools; wholesale services in relation to machine tools; online retail services in relation to machine tools; mail order retail services in relation to machine tools; retail services in relation to industrial robots for shaping glass; wholesale services in relation to industrial robots for shaping glass; online retail services in relation to industrial robots for shaping glass; mail order retail services in relation to industrial robots for shaping glass; retail services in relation to industrial robots for shaping metal; wholesale services in relation to industrial robots for shaping metal; online retail services in relation to industrial robots for shaping metal; mail order retail services in relation to industrial robots for shaping metal; retail services in relation to industrial robots for shaping plastic material; wholesale services in relation to industrial robots for shaping plastic material; online retail services in relation to industrial robots for shaping plastic material; mail order retail services in relation to industrial robots for shaping plastic material; retail services in relation to industrial robots for shaping wood; wholesale services in relation to industrial robots for shaping wood; online retail services in relation to industrial robots for shaping wood; mail order retail services in relation to industrial robots for shaping wood; retail services in relation to 3d printers; wholesale services in relation to 3d printers; online retail services in relation to 3d printers; mail order retail services in relation to 3d printers; retail services in relation to construction machines; wholesale services in relation to construction machines; online retail services in relation to construction machines; mail order retail services in relation to construction machines; retail services in relation to bulldozers; wholesale services in relation to bulldozers; online retail services in relation to bulldozers; mail order retail services in relation to bulldozers; retail services in relation to diggers (machines); wholesale services in relation to diggers (machines); online retail services in relation to diggers (machines); mail order retail services in relation to diggers (machines); retail services in relation to excavators; wholesale services in relation to excavators; online retail services in relation to excavators; mail order retail services in relation to excavators; retail services in relation to road paving machines; wholesale services in relation to road paving machines; online retail services in relation to road paving machines; mail order retail services in relation to road paving machines; retail services in relation to drilling machines; wholesale services in relation to drilling machines; online retail services in relation to drilling machines; mail order retail services in relation to drilling machines; retail services in relation to rock drills [machines]; wholesale services in relation to rock drills [machines]; online retail services in relation to rock drills [machines]; mail order retail services in relation to rock drills [machines]; retail services in relation to road sweeping machines; wholesale services in relation to road sweeping machines; online retail services in relation to road sweeping machines; mail order retail services in relation to road sweeping machines; retail services in relation to lifting machines; wholesale services in relation to lifting machines; online retail services in relation to lifting machines; mail order retail services in relation to lifting machines; retail services in relation to loading machines; wholesale services in relation to loading machines; online retail services in relation to loading machines; mail order retail services in relation to loading machines; retail services in relation to transporting machines; wholesale services in relation to transporting machines; online retail services in relation to transporting machines; mail order retail services in relation to transporting machines; retail services in relation to transferring machines; wholesale services in relation to transferring machines; online retail services in relation to transferring machines; mail order retail services in relation to transferring machines; retail services in relation to machines for lifting; wholesale services in relation to machines for lifting; online retail services in relation to machines for lifting; mail order retail services in relation to machines for lifting; retail services in relation to elevators; wholesale services in relation to elevators; online retail services in relation to elevators; mail order retail services in relation to elevators; retail services in relation to escalators; wholesale services in relation to escalators; online retail services in relation to escalators; mail order retail services in relation to escalators; retail services in relation to cranes; wholesale services in relation to cranes; online retail services in relation to cranes; mail order retail services in relation to cranes; retail services in relation to machines for use in agriculture; wholesale services in relation to machines for use in agriculture; online retail services in relation to machines for use in agriculture; mail order retail services in relation to machines for use in agriculture; retail services in relation to feeding machines; wholesale services in relation to feeding machines; online retail services in relation to feeding machines; mail order retail services in relation to feeding machines; retail services in relation to cereal processing machines; wholesale services in relation to cereal processing machines; online retail services in relation to cereal processing machines; mail order retail services in relation to cereal processing machines; retail services in relation to machines for processing fruits; wholesale services in relation to machines for processing fruits; online retail services in relation to machines for processing fruits; mail order retail services in relation to machines for processing fruits; retail services in relation to machines for processing vegetables; wholesale services in relation to machines for processing vegetables; online retail services in relation to machines for processing vegetables; mail order retail services in relation to machines for processing vegetables; retail services in relation to machines for processing foods; wholesale services in relation to machines for processing foods; online retail services in relation to machines for processing foods; mail order retail services in relation to machines for processing foods; retail services in relation to hydraulic controls for machines, motors and engines; wholesale services in relation to hydraulic controls for machines, motors and engines; online retail services in relation to hydraulic controls for machines, motors and engines; mail order retail services in relation to hydraulic controls for machines, motors and engines; retail services in relation to pneumatic controls for machines, motors and engines; wholesale services in relation to pneumatic controls for machines, motors and engines; online retail services in relation to pneumatic controls for machines, motors and engines; mail order retail services in relation to pneumatic controls for machines, motors and engines; retail services in relation to brakes for machines; wholesale services in relation to brakes for machines; online retail services in relation to brakes for machines; mail order retail services in relation to brakes for machines; retail services in relation to band brakes [machine elements not for land vehicles]; wholesale services in relation to band brakes [machine elements not for land vehicles]; online retail services in relation to band brakes [machine elements not for land vehicles]; mail order retail services in relation to band brakes [machine elements not for land vehicles]; retail services in relation to block brakes [machine elements not for land vehicles]; wholesale services in relation to block brakes [machine elements not for land vehicles]; online retail services in relation to block brakes [machine elements not for land vehicles]; mail order retail services in relation to block brakes [machine elements not for land vehicles]; retail services in relation to linings for brakes [parts of machines]; wholesale services in relation to linings for brakes [parts of machines]; online retail services in relation to linings for brakes [parts of machines]; mail order retail services in relation to linings for brakes [parts of machines]; retail services in relation to crank shafts; wholesale services in relation to crank shafts; online retail services in relation to crank shafts; mail order retail services in relation to crank shafts; retail services in relation to cylinders for motors and engines; wholesale services in relation to cylinders for motors and engines; online retail services in relation to cylinders for motors and engines; mail order retail services in relation to cylinders for motors and engines; retail services in relation to pistons for engines; wholesale services in relation to pistons for engines; online retail services in relation to pistons for engines; mail order retail services in relation to pistons for engines; retail services in relation to turbines not for land vehicles; wholesale services in relation to turbines not for land vehicles; online retail services in relation to turbines not for land vehicles; mail order retail services in relation to turbines not for land vehicles; retail services in relation to filters for motors and engines; wholesale services in relation to filters for motors and engines; online retail services in relation to filters for motors and engines; mail order retail services in relation to filters for motors and engines; retail services in relation to oil filters for motors and engines; wholesale services in relation to oil filters for motors and engines; online retail services in relation to oil filters for motors and engines; mail order retail services in relation to oil filters for motors and engines; retail services in relation to filters for engines; wholesale services in relation to filters for engines; online retail services in relation to filters for engines; mail order retail services in relation to filters for engines; retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; wholesale services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; online retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; mail order retail services in relation to sumps being parts of vehicle gearboxes [other than land vehicle]; retail services in relation to oil filters; wholesale services in relation to oil filters; online retail services in relation to oil filters; mail order retail services in relation to oil filters; retail services in relation to fuel filters; wholesale services in relation to fuel filters; online retail services in relation to fuel filters; mail order retail services in relation to fuel filters; retail services in relation to air filters for engines; wholesale services in relation to air filters for engines; online retail services in relation to air filters for engines; mail order retail services in relation to air filters for engines; retail services in relation to exhaust pipes for land vehicles; wholesale services in relation to exhaust pipes for land vehicles; online retail services in relation to exhaust pipes for land vehicles; mail order retail services in relation to exhaust pipes for land vehicles; retail services in relation to exhaust systems for vehicles; wholesale services in relation to exhaust systems for vehicles; online retail services in relation to exhaust systems for vehicles; mail order retail services in relation to exhaust systems for vehicles; retail services in relation to engine cylinders for land vehicles; wholesale services in relation to engine cylinders for land vehicles; online retail services in relation to engine cylinders for land vehicles; mail order retail services in relation to engine cylinders for land vehicles; retail services in relation to pistons for land vehicle engines; wholesale services in relation to pistons for land vehicle engines; online retail services in relation to pistons for land vehicle engines; mail order retail services in relation to pistons for land vehicle engines; retail services in relation to carburetors [vehicle parts]; wholesale services in relation to carburetors [vehicle parts]; online retail services in relation to carburetors [vehicle parts]; mail order retail services in relation to carburetors [vehicle parts]; retail services in relation to fuel conversion apparatus for internal combustion engines; wholesale services in relation to fuel conversion apparatus for internal combustion engines; online retail services in relation to fuel conversion apparatus for internal combustion engines; mail order retail services in relation to fuel conversion apparatus for internal combustion engines; retail services in relation to fuel injector parts for land and water vehicle engines; wholesale services in relation to fuel injector parts for land and water vehicle engines; online retail services in relation to fuel injector parts for land and water vehicle engines; mail order retail services in relation to fuel injector parts for land and water vehicle engines; retail services in relation to pumps for land vehicle engines; wholesale services in relation to pumps for land vehicle engines; online retail services in relation to pumps for land vehicle engines; mail order retail services in relation to pumps for land vehicle engines; retail services in relation to valves for engines; wholesale services in relation to valves for engines; online retail services in relation to valves for engines; mail order retail services in relation to valves for engines; retail services in relation to dynamos; wholesale services in relation to dynamos; online retail services in relation to dynamos; mail order retail services in relation to dynamos; retail services in relation to spark plugs for land vehicle engines; wholesale services in relation to spark plugs for land vehicle engines; online retail services in relation to spark plugs for land vehicle engines; mail order retail services in relation to spark plugs for land vehicle engines; retail services in relation to bearings (parts of machines); wholesale services in relation to bearings (parts of machines); online retail services in relation to bearings (parts of machines); mail order retail services in relation to bearings (parts of machines); retail services in relation to ball bearings for roller skates; wholesale services in relation to ball bearings for roller skates; online retail services in relation to ball bearings for roller skates; mail order retail services in relation to ball bearings for roller skates; retail services in relation to machines for mounting and detaching tires; wholesale services in relation to machines for mounting and detaching tires; online retail services in relation to machines for mounting and detaching tires; mail order retail services in relation to machines for mounting and detaching tires; retail services in relation to alternators; wholesale services in relation to alternators; online retail services in relation to alternators; mail order retail services in relation to alternators; retail services in relation to current generators; wholesale services in relation to current generators; online retail services in relation to current generators; mail order retail services in relation to current generators; retail services in relation to electric generators; wholesale services in relation to electric generators; online retail services in relation to electric generators; mail order retail services in relation to electric generators; retail services in relation to painting machines; wholesale services in relation to painting machines; online retail services in relation to painting machines; mail order retail services in relation to painting machines; retail services in relation to bearings; wholesale services in relation to bearings; online retail services in relation to bearings; mail order retail services in relation to bearings; retail services in relation to fuel economisers for motors and engines; wholesale services in relation to fuel economisers for motors and engines; online retail services in relation to fuel economisers for motors and engines; mail order retail services in relation to fuel economisers for motors and engines; retail services in relation to automatic robotic spray guns for paint; wholesale services in relation to automatic robotic spray guns for paint; online retail services in relation to automatic robotic spray guns for paint; mail order retail services in relation to automatic robotic spray guns for paint; retail services in relation to adhesive tape dispensers [machines]; wholesale services in relation to adhesive tape dispensers [machines]; online retail services in relation to adhesive tape dispensers [machines]; mail order retail services in relation to adhesive tape dispensers [machines]; retail services in relation to guns for compressed air spraying machines; wholesale services in relation to guns for compressed air spraying machines; online retail services in relation to guns for compressed air spraying machines; mail order retail services in relation to guns for compressed air spraying machines; retail services in relation to guns for compressed liquid spraying machines; wholesale services in relation to guns for compressed liquid spraying machines; online retail services in relation to guns for compressed liquid spraying machines; mail order retail services in relation to guns for compressed liquid spraying machines; retail services in relation to electric hand drills; wholesale services in relation to electric hand drills; online retail services in relation to electric hand drills; mail order retail services in relation to electric hand drills; retail services in relation to hand saws (electrically operated -); wholesale services in relation to hand saws (electrically operated -); online retail services in relation to hand saws (electrically operated -); mail order retail services in relation to hand saws (electrically operated -); retail services in relation to electric wood saw machines; wholesale services in relation to electric wood saw machines; online retail services in relation to electric wood saw machines; mail order retail services in relation to electric wood saw machines; retail services in relation to self-driven machines for sawing; wholesale services in relation to self-driven machines for sawing; online retail services in relation to self-driven machines for sawing; mail order retail services in relation to self-driven machines for sawing; retail services in relation to spiral conveyors [machines]; wholesale services in relation to spiral conveyors [machines]; online retail services in relation to spiral conveyors [machines]; mail order retail services in relation to spiral conveyors [machines]; retail services in relation to grinding machines with spiral bevel gears; wholesale services in relation to grinding machines with spiral bevel gears; online retail services in relation to grinding machines with spiral bevel gears; mail order retail services in relation to grinding machines with spiral bevel gears; retail services in relation to compressed air machines; wholesale services in relation to compressed air machines; online retail services in relation to compressed air machines; mail order retail services in relation to compressed air machines; retail services in relation to compressors (machines); wholesale services in relation to compressors (machines); online retail services in relation to compressors (machines); mail order retail services in relation to compressors (machines); retail services in relation to vehicle washing installations; wholesale services in relation to vehicle washing installations; online retail services in relation to vehicle washing installations; mail order retail services in relation to vehicle washing installations; retail services in relation to gas-operated welding apparatus; wholesale services in relation to gas-operated welding apparatus; online retail services in relation to gas-operated welding apparatus; mail order retail services in relation to gas-operated welding apparatus; retail services in relation to electric arc welding apparatus; wholesale services in relation to electric arc welding apparatus; online retail services in relation to electric arc welding apparatus; mail order retail services in relation to electric arc welding apparatus; retail services in relation to electric soldering apparatus; wholesale services in relation to electric soldering apparatus; online retail services in relation to electric soldering apparatus; mail order retail services in relation to electric soldering apparatus; retail services in relation to electric arc cutting apparatus; wholesale services in relation to electric arc cutting apparatus; online retail services in relation to electric arc cutting apparatus; mail order retail services in relation to electric arc cutting apparatus; retail services in relation to electrodes for welding machines; wholesale services in relation to electrodes for welding machines; online retail services in relation to electrodes for welding machines; mail order retail services in relation to electrodes for welding machines; retail services in relation to industrial robots; wholesale services in relation to industrial robots; online retail services in relation to industrial robots; mail order retail services in relation to industrial robots; retail services in relation to printing machines; wholesale services in relation to printing machines; online retail services in relation to printing machines; mail order retail services in relation to printing machines; retail services in relation to packaging machines; wholesale services in relation to packaging machines; online retail services in relation to packaging machines; mail order retail services in relation to packaging machines; retail services in relation to sealing machines; wholesale services in relation to sealing machines; online retail services in relation to sealing machines; mail order retail services in relation to sealing machines; retail services in relation to labellers (machines); wholesale services in relation to labellers (machines); online retail services in relation to labellers (machines); mail order retail services in relation to labellers (machines); retail services in relation to batch sorting machines; wholesale services in relation to batch sorting machines; online retail services in relation to batch sorting machines; mail order retail services in relation to batch sorting machines; retail services in relation to waste sorting machines; wholesale services in relation to waste sorting machines; online retail services in relation to waste sorting machines; mail order retail services in relation to waste sorting machines; retail services in relation to packing machines; wholesale services in relation to packing machines; online retail services in relation to packing machines; mail order retail services in relation to packing machines; retail services in relation to material production and processing machines; wholesale services in relation to material production and processing machines; online retail services in relation to material production and processing machines; mail order retail services in relation to material production and processing machines; retail services in relation to sewing machines; wholesale services in relation to sewing machines; online retail services in relation to sewing machines; mail order retail services in relation to sewing machines; retail services in relation to fuel dispensing pumps for service stations; wholesale services in relation to fuel dispensing pumps for service stations; online retail services in relation to fuel dispensing pumps for service stations; mail order retail services in relation to fuel dispensing pumps for service stations; retail services in relation to self-regulating fuel pumps; wholesale services in relation to self-regulating fuel pumps; online retail services in relation to self-regulating fuel pumps; mail order retail services in relation to self-regulating fuel pumps; retail services in relation to electric kitchen machines; wholesale services in relation to electric kitchen machines; online retail services in relation to electric kitchen machines; mail order retail services in relation to electric kitchen machines; retail services in relation to whitewashing machines; wholesale services in relation to whitewashing machines; online retail services in relation to whitewashing machines; mail order retail services in relation to whitewashing machines; retail services in relation to laundry washing machines; wholesale services in relation to laundry washing machines; online retail services in relation to laundry washing machines; mail order retail services in relation to laundry washing machines; retail services in relation to dishwashers; wholesale services in relation to dishwashers; online retail services in relation to dishwashers; mail order retail services in relation to dishwashers; retail services in relation to spin driers (not heated); wholesale services in relation to spin driers (not heated); online retail services in relation to spin driers (not heated); mail order retail services in relation to spin driers (not heated); retail services in relation to vacuum cleaners; wholesale services in relation to vacuum cleaners; online retail services in relation to vacuum cleaners; mail order retail services in relation to vacuum cleaners; retail services in relation to automatic vending machines; wholesale services in relation to automatic vending machines; online retail services in relation to automatic vending machines; mail order retail services in relation to automatic vending machines; retail services in relation to electroplating machines; wholesale services in relation to electroplating machines; online retail services in relation to electroplating machines; mail order retail services in relation to electroplating machines; retail services in relation to electric door openers-closers used in land vehicles; wholesale services in relation to electric door openers-closers used in land vehicles; online retail services in relation to electric door openers-closers used in land vehicles; mail order retail services in relation to electric door openers-closers used in land vehicles; retail services in relation to joints (parts of engines); wholesale services in relation to joints (parts of engines); online retail services in relation to joints (parts of engines); mail order retail services in relation to joints (parts of engines) are either identical to the applicant’s the bringing together, for the benefit of others, of a variety of goods, namely, machines, machine tools and industrial robots for processing and shaping wood, metals, glass, plastics and minerals, construction machines and robotic mechanisms (machines) for use in construction, bulldozers, diggers (machines), excavators, road construction and road paving machines, drilling machines, rock drilling machines, road sweeping machines, lifting, loading and transmission machines and robotic mechanisms (machines) for lifting, loading and transmission purposes, elevators, escalators and cranes, machines and robotic mechanisms (machines) for use in agriculture and animal breeding, machines and robotic mechanisms (machines) for processing cereals, fruits, vegetables and food, engines and motors, other than for land vehicles, parts and fittings therefor, hydraulic and pneumatic controls for engines and motors, brakes other than for vehicles, brake linings for engines, crankshafts, cylinders for engines, pistons for engines, turbines, not for land vehicles, filters for engines and motors, oil, air and fuel filters for land vehicle engines, exhausts for land vehicle engines, exhaust manifolds for land vehicle engines, engine cylinders for land vehicles, engine cylinder heads for land vehicles, pistons for land vehicle engines, carburetors for land vehicles, fuel conversion apparatus for land vehicle engines, injectors for land vehicle engines, fuel economizers for land vehicle engines, valves for land vehicle engines, starter motors for land vehicles, dynamos for land vehicle engines, sparking plugs for land vehicle engines, bearings (parts of machines), roller or ball bearings, machines for mounting and detaching tires, alternators, current generators, electric generators, current generators operated with solar energy, painting machines, automatic spray guns for paint, electric, hydraulic and pneumatic punching machines and guns, electric adhesive tape dispensers (machines), electric guns for compressed gas or liquid spraying machines, electric hand drills, electric hand saws, jigsaw machines, compressed air machines, compressors (machines), vehicle washing installations, robotic mechanisms (machines) with the abovementioned functions, electric and gas-operated welding apparatus, electric arc welding apparatus, electric soldering apparatus, electric arc cutting apparatus, electrodes for welding machines, industrial robots (machines) with the abovementioned functions, printing machines, packaging machines, filling, plugging and sealing machines, labelers (machines), sorting machines, industrial robots (machines) with the abovementioned functions, machines for textile processing, sewing machines, industrial robots (machines) with the abovementioned functions, electric kitchen machines for chopping, grinding, crushing, mixing and mincing foodstuff, washing machines, laundry washing machines, dishwashers, spin driers (not heated), electric cleaning machines for cleaning floors, carpets or floorings, vacuum cleaners and parts thereof, automatic vending machines, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues, because they are contained in both lists of services (including synonyms) or they are included in the applicant’s broad categories of services, or they are at least similar, considering the outcome of the comparison of goods in Class 7 hereinabove and/or because they have the same nature, purpose and method of use, and they coincide in distribution channels and relevant public.

 

b) The signs

 

Earlier trade mark	Contested trade mark

 

The signs are identical. 

The presence of a light grey background in the contested sign is irrelevant since it is a mere reprographic difference.

 

c) Global assessment, other arguments and conclusion 

 

The signs are identical and some of the contested goods and services are identical. Therefore, the cancellation application must be upheld pursuant to Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR for the goods and services found to be identical. The remaining contested goods and services are at least similar to those 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 and the cancellation application is also upheld insofar as it is directed against these goods and services.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

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

 

 

The Cancellation Division

 

Solveiga BIEZA

Andrea VALISA

Ioana MOISESCU

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.