DECISION

of the Second Board of Appeal

of 4 March 2016

In Case R 656/2015-2

Biogest AG
Siemensstraße 1 DE-65232 Taunusstein Germany	Opponent / Appellant

represented by PATENTANWÄLTE DR. KELLER, SCHWERTFEGER, Westring 17, DE-76829 Landau, Germany

v

C.S.O. Technik Limited
Chequers Barn Chequers Hill Bough Beech Edenbridge Kent TN8 7PD United Kingdom	Applicant / Respondent

represented by ELKINGTON AND FIFE LLP, Prospect House, 8 Pembroke Road, Sevenoaks TN13 1XR, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 097 775 (Community trade mark application No 11 104 007)

The Second Board of Appeal

composed of T. de las Heras (Chairperson), C. Negro (Rapporteur) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 8 August 2012, C.S.O. Technik Limited (‘the applicant’) sought to register the word mark

PAS

for the following list of goods:

Class 6 − Metal screens;

Class 7 − Screening installations for rainwater and waste water;

Class 11 − Coarse strainers for water screening; water screens.

2. The application was published in the Community Trade Marks Bulletin No 188/2012 of 2 October 2012.

3. On 31 October 2012, Biogest AG (‘the opponent’) filed a notice of opposition against the contested mark, on the grounds laid down in Article 8(1)(a) and 8(1)(b) CTMR and based on the following earlier right:

• Community trade mark registration No 10 857 928 for the word mark

PAS

filed on 4 May 2012 and registered on 22 March 2014 for the following goods on which the opposition is based:

Class 7 − Sifting and screening installations for mixed water and rain water; Strainers; Rakes; Sieve baskets for rainwater drainage installations.

4. The opponent directed its opposition against all goods of the application.

5. On 30 May 2013, the Opposition Division suspended the proceedings as the opposition was based on an application for registration.

6. On 4 April 2014, the Opposition Division informed the parties that the opposition proceedings were resumed.

7. On 6 February 2015, the Opposition Division issued a decision on Opposition No B 2 097 775 (‘the contested decision’) whereby it partially upheld the opposition namely for all goods in Classes 7 and 11. It allowed the application to proceed for the remaining goods, namely all goods in Class 6. It ordered each party to bear its own costs. The contested decision may be summarized as follows:

• The contested goods in Class 6 ‘metal screens’ are dissimilar from the opponent’s goods in Class 7. ‘Metal screens’ are usually used for the home for internal or external design purposes, both to decorate and divide the space. The purpose and nature of the contested goods is different from that of the goods in Class 7, which are installations, strainers, rakes and sieve baskets, the main purpose of which is related to water, water purification and rain water drainage. The fact that they might be made of metal does not suffice to find similarity between them. Furthermore, they are neither used in combination nor complementary and they are normally produced by different companies. Therefore, they are considered dissimilar.

• The contested goods in Class 7 are identical with the opponent’s goods either because they are identically contained in either lists (including synonyms) or because the opponent’s goods are included in or overlap with the contested goods or vice versa.

• The Contested goods in Class 11 are similar, inter alia, with the opponent’s ‘strainers’ in Class 7. These goods share the same purpose, which is water purification and rain water drainage. They might coincide in producer and target the same public. Therefore, they are considered similar.

• The signs are identical.

• The signs were found to be identical and all goods in Class 7 are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) CTMR for these goods.

• The contested goods in Class 11 were found to be 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) CTMR and the opposition is upheld also in so far as it is directed against these goods.

8. On 1 April 2015, the opponent filed a notice of appeal against the contested decision and on 8 June 2015 it submitted its statement of grounds.

9. No revision was granted pursuant to Article 62 CTMR and the appeal was remitted to the Boards of Appeal on 15 July 2015.

10. The applicant did not submit any observations in reply.

Submissions and arguments of the opponent

11. The opponent requests that the opposition also be upheld for ‘metal screens’ in Class 6. To that extent, the opponent requests that the Board of Appeal set aside the contested decision, and that the fees and costs in both the opposition and the appeal proceedings should be borne by the applicant. Its arguments may be summarized as follows:

• ‘Metal screens’ are usual parts of screening installations for rain water and waste water. Furthermore, ‘metal screens’ can be part of strainers and rakes or sieve baskets for rainwater drainage installations.

• We disagree that ‘metal screens’ are usually used for the home for internal or external design purposes both to decorate and divide space. Both the applicant and the opponent are active in the same business area. In addition, the contested goods in Class 6, ‘metal screens’, are not limited to be used for the home for internal or external design purposes, as suggested by the Opposition Division. In fact, ‘metal screens’ can be used in screening installations for rain water and waste water, strainers, rakes or sieve baskets.

• Since the goods ‘metal screens’ in Class 6 are not further refined or restricted, they appear to fall within the same area of operation as the opponent’s. Therefore, the contested goods ‘metal screens’ must be considered to be at least similar with the goods on which the opposition is based.

• The signs are identical. Therefore there is a likelihood of confusion as regards the opponent’s goods and the contested goods in Class 6 ‘metal screens’, which may indeed be part of ‘sifting and screening installations for mixed water and rain water’ as covered by the earlier mark.

Reasons

12. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible.

Relevant public

13. In the present case, the earlier right is a Community trade mark. Therefore, the relevant territory in which to analyse the risk of confusion for the purposes of the application of Article 8(1)(b) CTMR concerns the European Union as a whole.

14. The goods at stake are technical products which are mainly aimed at DIY enthusiasts as well as being aimed at a specialised public active in the relevant field (in particular, that engaged in the area of water screening installations). The targeted consumers will apply a higher than average degree of attention to the selection and acquisition of those goods, the performance and quality of which is of utmost importance.

Likelihood of confusion - Article 8(1)(b) CTMR

15. According to Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

16. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; & 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

17. The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; & 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Comparison of the marks

18. The signs were correctly found to be identical by the Opposition Division. The identity of the signs does not represent a controversial issue and is herewith confirmed by the Board.

Comparison of the goods

19. The assessment of the similarity of goods and services must take into account all relevant factors, which include their nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 38).

20. Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking (01/03/2005, T‑169/03, Sissi Rossi, EU:T:2005:72, § 60).

21. Moreover, it is clear from Rule 2(4) CTMIR, that goods or services may not be regarded as dissimilar from each other on the sole ground that they appear in different classes for the purposes of the Nice Classification. It follows from case-law that goods or services do not necessarily have to fall within the same class, or even in the same category within a given class, in order reasonably to be the subject of a comparison and give rise to a finding of similarity or of lack of similarity between those goods or services (22/10/2015, T−309/13, ELMA / ELMEX, EU:T:2015:792, § 40, and the case-law cited).

22. The contested goods subject of the present appeal are the following:

Class 6 − Metal screens.

23. These goods must be compared with the goods on which the opposition is based, namely:

Class 7 − Sifting and screening installations for mixed water and rain water; Strainers; Rakes; Sieve baskets for rainwater drainage installations.

24. The Board considers, contrary to the Opposition Division, that the contested goods subject to the appeal are highly similar to the opponent’s goods as will be explained here below.

25. Contrary to what was found in the contested decision, the use of the contested ‘metal screens’ is not limited to internal or external design purposes of the home, to ‘decorate and divide the space’. In fact, as the opponent correctly pointed out, ‘metal screens’ as such, defined in a broad manner, can be an essential part of the goods covered by the earlier mark, in particular of screening installations for rain water and waste water. To that extent, these goods are clearly complementary and have a similar nature. Furthermore, given that they can belong to the same sector of hydraulic screening, they share the same final purpose and method of use and can have the same manufacturers. Finally, those goods can be found in the same specialised wholesale outlets or in the same or adjoining sections of DYI stores. Therefore, those conflicting goods display a high degree of similarity.

Global assessment

26. In the light of the principle of interdependence (see para. 17), taking into account, in particular, the undisputed identity of the signs and average distinctiveness of the earlier mark, since the contested goods have been found highly similar to the earlier mark’s goods, the Board considers that the targeted consumers, despite their enhanced level of attention in the purchase of the goods in question, are likely to believe that the goods covered by the identical marks in dispute come from the same undertaking or from economically-linked undertakings.

27. It follows from all the above that the appeal is to be upheld and the contested decision is to be annulled to the extent that it rejected the opposition and allowed the CTM application to proceed for ‘metal screens’ in Class 6.

Costs

28. As the applicant is the losing party in the opposition and appeal proceedings within the meaning of Article 85(1) CTMR, it must be ordered to bear the costs incurred by the opponent in both proceedings.

29. Pursuant to Article 85(6) CTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board shall, where applicable, include the fixing of the amount of the costs to be paid by the losing party. In agreement with Rule 94(7)(d) CTMIR, the amount of representation costs of the appeal proceedings to be paid by the applicant to the opponent shall be fixed at the standard rate of EUR 550, whilst the costs for the opposition proceedings are fixed at EUR 300. The appeal fee is EUR 800 and the opposition fee EUR 350. The total amount is EUR 2 000.

Order

On those grounds,

THE BOARD

hereby:

1. Upholds the appeal and annuls the contested decision to the extent that it rejected the opposition and allowed the CTM application to proceed for ‘metal screens’ in Class 6;

2. Rejects the CTM applied for in its entirety;

3. Orders the applicant to bear the costs of the opposition and appeal proceedings;

4. Fixes the amount of costs to be paid by the applicant to the opponent at EUR 2 000.

Signed T. de las Heras

Signed C. Negro

Signed H. Salmi

Registrar: Signed H.Dijkema