OPPOSITION Nо B 3 126 484

 

Mulag Fahrzeugwerk Heinz Wössner GmbH & Co. Kg, Gewerbestr. 8, 77728 Oppenau, Germany (opponent), represented by Weickmann & Weickmann Patent- Und Rechtsanwälte Partmbb, Richard-Strauss-Str. 80, 81679 München, Germany (professional representative) 

 

a g a i n s t

 

Wei Rong, No. 146 Zhaoyang East Road, Dahetang Sub-district Office, Shaodong County, 422800 Shaoyang City, Hu'nan Province, People’s Republic of China (applicant), represented by Brimondo Ab, Kvarnbergsgatan 2, 41105 Göteborg, Sweden (professional representative).

On 24/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.		Opposition No B 3 126 484 is partially upheld, namely for the following contested goods:
	Class 7: Shearing machines for animals; lawnmowers [machines]; cutting machines; machines and apparatus for cleaning, electric; knives, electric; hand-held tools, other than hand-operated; woodworking machines.   Class 8: Hobby knives [scalpels]; cutting tools [hand tools]; hand tools, hand-operated; shearers [hand instruments].
2.	European Union trade mark application No 18 228 904 is rejected for all the above goods. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 21/07/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 228 904 (figurative mark). The opposition is based on European union trade mark registration No 14 775 712, MULAG (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.

 

 a) The goods and services

 

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

 

Class 7: Agricultural machines; Harvesting machines; Agricultural implements (not hand-operated), in particular mowers, in particular for the immediate surroundings of street reflector posts, motorised cultivators, mulchers, choppers, collectors, in particular collectors operated using suction air, cutters, in particular tree, hedgerow and shrub trimmers, in particular pruning shears; Excavators; Waste disposals; Cleaning (Machines and apparatus for -), electric.

Class 12: Trailers [vehicles]; Sprinkling trucks; Cleaning machines and apparatus, in particular for tunnel walls, roadways, building walls, street reflector posts, road signs, photovoltaic panels, reflective panels for solar installations; Industrial and airfield vehicles, in particular industrial and airfield towing vehicles, in particular airfield towing vehicles for towing luggage trolleys at the airport; Luggage trolleys with conveyor belts, in particular for use at airports; Self-propelled conveyor belts, in particular for use at airports; Container transporters, in particular for use at airports.

Class 37: Installation, maintenance, servicing and repair of agricultural machinery and equipment, excavators, waste compactors, cleaning machines and implements, trailers, industrial and airfield vehicles, luggage trolleys with conveyor belts, self-propelled conveyor belts, container transporters.

 

The contested goods and services are the following:

Class 7: Shearing machines for animals; lawnmowers [machines]; cutting machines; welding machines, electric; electric hammers; machines and apparatus for cleaning, electric; knives, electric; hand-held tools, other than hand-operated; screwdrivers, electric; woodworking machines.

Class 8: Hobby knives [scalpels]; cutting tools [hand tools]; abrading instruments [hand instruments]; lifting jacks, hand-operated; spanners [hand tools]; hand tools, hand-operated; pliers; shearers [hand instruments]; hammers [hand tools]; bits [parts of hand tools].

Class 35: Sales promotion for others; marketing; import-export agency services; commercial administration of the licensing of the goods and services of others; telemarketing services; provision of an on-line marketplace for buyers and sellers of goods and services; advertising; publicity; procurement services for others [purchasing goods and services for other businesses]; 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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods 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 Class 7

 

The contested Shearing machines for animals are included in the broad category of, or overlap with, the opponent’s Agricultural machines, since animal farming is also part of agricultural activities. Therefore, they are identical.

The contested lawnmowers [machines] overlap with the opponent’s Agricultural implements (not hand-operated), in particular mowers, in particular for the immediate surroundings of street reflector posts. Therefore, they are identical.

The contested cutting machines; knives, electric; woodworking machines are included in, or overlap with the opponent’s Agricultural implements (not hand-operated), cutters, Therefore, they are identical.

Machines and apparatus for cleaning, electric are identically contained in both lists of goods.

The contested hand-held tools, other than hand-operated; include, as a  broader category, or overlap with, the opponent’s Agricultural implements (not hand-operated), in particular cutters, in particular tree, hedgerow and shrub trimmers, in particular pruning shears. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The remaining goods welding machines, electric; electric hammers; screwdrivers, electric are machines and tools with very specific purpose. They have a different nature, purpose and methods of use compared to all the opponent’s goods and services. They have different distribution channels, manufacturers and users. These goods are dissimilar.

Contested goods in Class 8

The contested Hobby knives [scalpels]; cutting tools [hand tools]; shearers [hand instruments]; have similar purpose, being cutting tools, than the opponent’s Agricultural implements (not hand-operated), in particular cutters, in particular tree, hedgerow and shrub trimmers, in particular pruning shears. They can have the same manufacturers, distribution channels and users. The goods are similar.

The contested hand tools, hand-operated are similar to Agricultural implements (not hand-operated), as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are in competition

The remaining abrading instruments [hand instruments]; lifting jacks, hand-operated; spanners [hand tools]; pliers; hammers [hand tools]; bits [parts of hand tools] are tools and instruments with very specific purpose. They have a different nature, purpose and methods of use compared to all the opponent’s goods and services. They have different distribution channels, manufacturers and users. These goods are dissimilar.

Contested services in Class 35

The contested Sales promotion for others; marketing; import-export agency services; commercial administration of the licensing of the goods and services of others; telemarketing services; provision of an on-line marketplace for buyers and sellers of goods and services; advertising; publicity; procurement services for others [purchasing goods and services for other businesses]; auctioneering are not similar to any of the opponent’s goods and services contrary to their arguments. The goods are not complementary. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods found to be identical or similar are directed at the public at large and at professionals with specific professional knowledge or expertise.

 

The degree of attention is average due to the nature of the goods.  

c) The signs

 

MULAG
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word MULAN in the contested figurative mark is  meaningful in certain territories, for example in those countries where  Swedish is understood. The word means ‘the mule’ (https://www.ne.se/ordb%C3%B6cker/search?d=ne_en_pro&s=mula), therefore possibly affecting the distinctiveness of the mark for that public.

It must be borne in mind that conceptual differences between the marks often counteract other similarities if at least one of the two signs at issue has a clear and specific meaning (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 56; 12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 20). The Opposition Division will therefore assess the signs from the perspective of the public that does not understand the meaning of the word MULAN, such as the German, English, Spanish, French, Italian and Portuguese-speaking consumers.

The graphic features of the verbal element of figurative sign have a limited impact, since the minimalistic stylisation of the letters is rather common; the typeface in which the verbal element is depicted is standard.

The elements MULAG and MULAN in the have no meaning for the relevant public and are, therefore, distinctive.

  

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in in their first four letters MULA. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ in their last letters G/N.

Therefore, the signs are visually and aurally highly similar.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. 

 

e) Global assessment, other arguments and conclusion

 

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods and services have been found partially identical, partially similar and partially dissimilar. The marks are visually and aurally highly similar, the conceptual comparison is not possible.

The marks coincide in the letter sequence MULA in their beginnings and differ in the last letters G/N, to which the consumers tend to attribute less attention due to their position.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

It is considered that the similarities between the signs established above are sufficient to cause the public to believe that the conflicting goods, which are identical or similar, come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German, English, Spanish, French, Italian and Portuguese -speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Gonzalo BILBAO TEJADA

Erkki J. MÜNTER

Aldo BLASI

 

 

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.