OPPOSITION No B 2 242 595

Steelwind Nordenham GmbH (former DH Nordenham Projekt GmbH), Adolf-Vinnen-Straße 30, 26954, Nordenham, Germany (opponent), represented by PPR & Partner Pape Rauh Rechtsanwälte Partg mbB, Königsallee 70, 40212, Düsseldorf, Germany (professional representative)

a g a i n s t

Stalatube Oy, Taivalkatu 7, 15170 Lahti, Finland (applicant), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 242 595 is partially upheld, namely for the following contested goods and services:

Class 6: Metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; goods of common metal not included in other classes; steel structure towers; metal structure towers; towers for wind turbines; stainless steel tubes.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); wind turbines; generators for wind turbines; turbines for power generation.

Class 37: Building construction; repair; installation services.

2. European Union trade mark application No 11 789 518 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 789 518 for the word mark ‘STALAWIND’. The opposition is based on, inter alia, international trade mark registration No 1 115 615 designating the European Union for the word mark ‘STEELWIND’. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 115 615 designating the European Union.

1. The goods and services

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

Class 6: Building materials of metal, building components of metal, metal pipes and metal tubes; metal components for wind installations.

Class 7: Metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations.

Class 42: Technical consultancy relating to the construction of wind installations.

The contested goods and services are the following:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; steel structure towers; metal structure towers; towers for wind turbines; stainless steel tubes.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; wind turbines; generators for wind turbines; turbines for power generation.

Class 37: Building construction; repair; installation services.

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 Class 6

Metal building materials; pipes and tubes of metal are identically contained in both lists of goods (including synonyms).

The contested ironmongery, small items of metal hardware; steel structure towers; metal structure towers; stainless steel tubes are included in the broad category of the earlier building materials of metal, building components of metal, metal pipes and metal tubes. Therefore, they are identical.

The contested transportable buildings of metal; goods of common metal not included in other classes cannot be clearly separated from the opponent’s building materials of metal, building components of metal. These categories of goods overlap significantly and, therefore, they are considered identical.

The contested towers for wind turbines are similar to a high degree to the earlier metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations in Class 7 because they coincide in the following criteria: They have the same purpose. They coincide in method of use. They are complementary. They coincide in distribution channels. They coincide in end user. They coincide in producer.

The contested non-electric cables and wires of common metal are similar to the earlier building materials of metal, building components of metal because they normally coincide in producer, distribution channels and end user. Furthermore, they are complementary.

The contested materials of metal for railway tracks; safes are goods used in the building of railways or to safely store valuable items. Although these goods may have the same nature as the opponent’s goods made of metal, they generally differ in their method of use and intended purpose. Furthermore, while the opponent’s goods and services include essentially building materials and consultancy related thereto, the contested goods are included in functioning systems of railways. The contested safes are metal boxes for storing valuables. The goods have different distribution channels and target different sectors of the public. They are not complementary nor in competition with each other. Therefore, the above contested goods are dissimilar to the opponent’s goods and services.

The contested common metals and their alloys; ores are dissimilar to the earlier building materials of metal, building components of metal, metal pipes and metal tubes because the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, the raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). They are also clearly dissimilar to all the remaining goods and services covered by the earlier mark, as they have no relevant point of contact.

Contested goods in Class 7

Wind turbines are identically contained in both lists of goods (including synonyms).

The contested machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles) cannot be clearly separated from the earlier metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations. These categories of goods overlap significantly and, therefore, they are considered identical.

The contested generators for wind turbines are included in the broad category of the earlier metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations. Therefore, they are identical.

The contested turbines for power generation overlap with the earlier metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations. Therefore, they are identical.

The contested agricultural implements other than hand-operated; incubators for eggs; automatic vending machines are dissimilar to the earlier metal components for wind installations, namely wind power machines and their parts, wind generators and their parts, windmills and their parts and wind turbines and their parts for wind installations because they are of a different nature and purpose. They do not follow the same method of use. They are not complementary or not in competition. They do not share the same distribution channels, as well as they do not target the same end user. They are produced by different companies. They are also clearly dissimilar to the remaining earlier goods and services in Classes 6 and 42, as they have no relevant characteristics in common.

Contested services in Class 37

These services belong to the category of goods-related services. Since, by nature, goods and services are dissimilar, similarity between goods and their installation, maintenance and repair can only be established when it is common in the relevant market sector for the manufacturer of the goods to also provide such services; and the relevant public coincides; and installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).

The contested building construction; repair are similar to a low degree to the earlier building materials of metal, building components of metal, metal pipes and metal tubes because they can coincide in provider/producer and the end user, as the companies which provide building services and the repair related thereto often also supply directly to their client the major building materials and components. They are also complementary, since in order to construct and repair buildings the earlier goods in Class 6 are needed. The opponent tried to prove that the construction, installation and repair services are typically provided independently from the goods by submitting printouts of web pages of different manufacturers of wind installations and important parts thereof. One of the print outs submitted as Annex 4 is regarding project services of the company Nordex SE mentioning its offers of “engineering and installation of a complete substation”, “installation and connection of the medium-voltage system, including buildings”, “implementation of all excavation work and building foundations”. In the Annex 8 the print out of the web page regarding the portfolio of Nordex Service is submitted, and it states that “You can also request individual services from our range independently of the Nordex Service contracts.” Below this statement, the services provided are listed, such as “repair service”. The opponent stated that Nordex SE not only offers these services but also sells wind turbines by pointing out the section in their web site named “Wind turbines” under the section “Products&Services” in the above mentioned annexes. The opponent submitted in the Annexes 5 and 6 the screenshots regarding “Sales and Project Management” of the company ENERCON GmbH stating that it offers an entire project of implementation including installation and in the Annex 7 the product portfolio brochure shows that it also sells wind installations or generators. As seen from all, the Opposition Division considers that it is possible for the manufacturer of the goods to provide the installation, maintenance and repair services but also these services ay be provided independently of the purchase of the goods (not aftersales services).

The contested installation services are similar to a low degree to the earlier metal components for wind installations because as explained above they also coincide in the provider/producer and end user. They are also complementary.

2. 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 and services found to be identical or similar (to different degrees) are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

STEELWIND	STALAWIND
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘WIND’, as well as the remaining verbal components of the signs, are not meaningful for a substantial part of the public in certain territories, for example in those countries where English or German is not understood. Consequently, as this affects the distinctiveness of these components in relation to the relevant services, the Opposition Division finds it appropriate to focus the comparison of the signs on the substantial part of the public in the EU for which both signs will be viewed as meaningless terms, possibly consisting of words in a foreign language, such as the relevant part of the Spanish-, Portuguese- and Bulgarian-speaking public.

Visually, the signs coincide in six of their nine letters, portrayed in identical positions: the initial letters ‘ST-‘ and the final letters ‘WIND’. They only differ in their middle sections (third to fifth letters), ‘-EEL-’ in the earlier mark and ‘-ALA-’ in the contested sign.

The length of the signs is identical as each consists of one word of 9 letters and they visually only differ in 3 letters (from 3^rd to 5^th position), whereas they coincide in the remaining 6. Furthermore, in the differing sequence they both have the letter ‘L’.

Since the difference is placed in the middle section of these relatively long signs, it is less likely to be remembered by the consumers, for which the identical length, beginnings and endings of the signs will have a stronger impact. Therefore, the signs are considered visually similar to an above than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their initial letters ‘ST’, as well as in the sound of their endings, ‘WIND’. The pronunciation differs only in the sound of the letters placed in the middle sections of the signs from 3^rd to 5^th positions (‘EEL’ vs ‘ALA’). As mentioned above, differences in the middle section of relatively long signs are less likely to catch the consumers’ attention. Therefore, even taking into consideration the different vowels appearing in the referred middle sections, the signs are deemed aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the relevant part of the public taken into consideration. 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.

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Some of the contested goods and services are identical or similar (to different degrees) to the opponent’s goods and services.

As detailed in section c) above, the similarity between the signs is considered aurally average and visually higher than average.

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).

In the present case, the sings have no meaning for a substantial part of the relevant public taken into consideration and therefore, there is no concept to assist the consumers in distinguishing the signs.

Considering the numbers of the coinciding letters and their placement, as well as the fact that the differing sequence of letters is placed in the middle section of these relatively long signs, even the more attentive consumers may easily overlook the differences, relying on their imperfect recollection of the earlier mark.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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). In the present case, visual and aural similarities of the signs are sufficiently significant to outweigh the lower similarity of some of the relevant goods and services.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word element ‘WIND’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word element ‘WIND’. Under these circumstances, the applicant’s claims must be set aside. Furthermore, the present examination is based on the perception of the relevant part of the public in the EU which will perceive these terms are meaningless units, as covered previously.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the substantial part of the Spanish-, Portuguese- and Bulgarian-speaking consumers which will perceive both signs as meaningless terms; therefore, the opposition is partly well founded on the basis of the opponent’s international 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 and services found to be identical or similar to those of the earlier trade mark.

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

The opponent has also based its opposition on the following earlier trade mark: German trade mark registration No 302 011 053 352 for the word mark ‘STEELWIND’. With this trade mark, Classes 6, 7 and 42 are identically covered (as compared to the international registration analysed above), whereas the only additional services are in Class 35: ‘Retail services and wholesale services relating to building materials of metal, building components of metal, metal pipes and metal tubes; professional business consultancy relating to the construction of wind installations’. These services are also clearly dissimilar to the goods for which the opposition has been rejected in Classes 6 and 7, because they do not coincide in nature, purpose, method of use, distribution channels, sales outlets, or the producers. They are neither in competition with each other nor complementary.

Since this mark is identical to the one which has been compared, it follows that the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Gueorgui IVANOV

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Ewelina ŚLIWIŃSKA

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.