OPPOSITION DIVISION
OPPOSITION Nо B 3 116 737
Hultafors Group AB, Box 38, 517 21 Bollebygd, Sweden (opponent), represented by Awa Sweden AB, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden (professional representative)
a g a i n s t
Ming
Shin Tools Co., Ltd., 31F.-2, No.
236, Shizheng N. 2nd Rd., Xitun Dist., Taichung City 407, Taiwan,
Province of People’s Republic of China (applicant), represented by
Arcade & Asociados,
C/ Isabel Colbrand, 6 - 5ª Planta, 28050 Madrid, Spain (professional
representative).
On 27/07/2021, the Opposition
Division takes the following
DECISION:
1. |
Opposition No B 3 116 737 is rejected in its entirety. |
2. |
The opponent bears the costs, fixed at EUR 300. |
On
23/04/2020, the opponent filed an opposition against all the goods of
European Union trade mark application No 18 163 813
(figurative
mark). The opposition is based on European Union trade mark
registration No 17 756 594
‘MST’ (word mark). The opponent invoked Article 8(1)(b)
EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.
The goods on which the opposition is based are the following:
Class 9: Levels [instruments for determining the horizontal].
The contested goods are the following:
Class 6: Tool boxes of metal, empty.
Class 7: Power-operated screwdrivers; pneumatic hammers; electric hammers; electric hand-held drills; power-driven wrenches; pneumatic drills; air drills; hammer drills; screwdrivers, pneumatic; screwdrivers, electric.
Class 8: Spanners; nut wrenches; die wrenches; tap wrenches; screwdrivers [hand tools]; socket sets [hand tools]; hammers [hand tools]; pliers; shears; scissors; saws [hand tools]; handles for hand-operated hand tools; drills [hand tools]; punches [hand tools]; nail pullers, hand-operated.
Class 20: Tool boxes, not of metal, empty.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
Contested goods in Classes 6 and 20
The
opponent's levels [instruments for
determining the horizontal] are
measuring devices that are used to measure a surface and determine
whether it is horizontal or vertical. Levels are used in the
construction industry to measure height differences over larger
distances.
The contested tool boxes of metal, empty in Class 6 and tool boxes, not of metal, empty in Class 20 have nothing in common with the opponent's levels [instruments for determining the horizontal]. The nature, specific purpose and method of use of the contested goods are different from those of the specific measuring instruments protected by the earlier mark in Class 9. The goods are neither complementary nor in competition. Furthermore, they differ in their distribution channels, relevant public and usual manufacturers. They are, therefore, dissimilar.
Contested goods in Classes 7 and 8
The contested power-operated
screwdrivers; pneumatic hammers; electric hammers; electric hand-held
drills; power-driven wrenches; pneumatic drills; air drills; hammer
drills; screwdrivers, pneumatic; screwdrivers, electric in
Class 7 are
all machine tools and power-operated tools and apparatus. The
contested spanners; nut wrenches; die
wrenches; tap wrenches; screwdrivers [hand tools]; socket sets [hand
tools]; hammers [hand tools]; pliers; shears; scissors; saws [hand
tools]; handles for hand-operated hand tools; drills [hand tools];
punches [hand tools]; nail pullers, hand-operated
in Class 8 are all hand operated tools for construction, repair
and maintenance purposes. They have different natures, purposes and
methods of use than the opponents levels
[instruments for determining the horizontal]
in Class 9. Moreover, they are neither complementary nor in
competition with each other. Although, as pointed out by the
opponent, they can be marketed together with the goods on which the
opposition is based and may target the same relevant public, namely
the professionals in the building industry or also DIY enthusiasts,
these connections are insufficient for finding any degree of
similarity. Therefore, the goods are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Victoria DAFAUCE MENÉNDEZ
|
Sylvie ALBRECHT |
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.