OPPOSITION No B 2 350 109

Gühring KG, Herderstr. 50-54, 72458 Albstadt, Germany (opponent), represented by Stumpf Patentanwälte PartgmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Ehlis S.A., Calle Sevilla s/n, Zona Industrial Noreste, 08007 Sant Andreu de la Barca, Spain (applicant), represented by J.D. Nuñez Patentes y Marcas S.L., Rambla de Cataluña 120, 08008 Barcelona, Spain (professional representative).

On 21/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 350 109 is partially upheld, namely for the following contested goods and services:

Class 7: Electric welding apparatus; Gardening machines (Powered -); Electric blenders; Power drills and bores; Electric sanders, belt sanders, endless belt sanders, floor sanders, sanding machines for woodworking, grinding belts for motorised sanders, grinding discs for motorised sanders, abrasive belts for motorised sanders, power saws; Milling-drilling machines, Radial drills, Impact drills, Power drills and bores, bits for electric drills, Drilling machines (electric tools), electric hand drill operation; Electric welding apparatus, Laser welding machines, gas welding machines expressly not including tools being parts of machines; Cutting tools (machines); Mechanical tools for machine tools; The aforesaid goods included in class 7 not relating to the field of business concepts for consumers.

Class 35: Wholesaling and retailing, of gardening articles.

2. European Union trade mark application No 12 487 104 is rejected for all the above mentioned goods and services. It may proceed for the remaining contested and uncontested goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 487 104 namely against all the goods in Class 7 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 10 517 936 ‘Ratio’. 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.

1. The goods and services

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

Class 7: Tools as parts of machines; Cutting tools; Mechanical tools for machine tools; The aforesaid goods in class 7 not being in the B2C sector.

Class 37: Fix, Maintenance and servicing of tools.

Class 40: Treatment of materials, namely grinding and coating of tools.

The contested goods and services are the following:

Class 7: Electric welding apparatus; Gardening machines (Powered -); Electric blenders; Power drills and bores; Electric sanders, belt sanders, endless belt sanders, floor sanders, sanding machines for woodworking, grinding belts for motorised sanders, grinding discs for motorised sanders, abrasive belts for motorised sanders, power saws; Milling-drilling machines, Radial drills, Impact drills, Power drills and bores, bits for electric drills, Drilling machines (electric tools), electric hand drill operation; Electric welding apparatus, Laser welding machines, gas welding machines expressly not including tools being parts of machines; Cutting tools (machines); Mechanical tools for machine tools; The aforesaid goods included in class 7 not relating to the field of business concepts for consumers.

Class 35: Import, export and business representations, and wholesaling and retailing, of ironmongery, small items of metal hardware, and DIY, gardening and household articles; Centres for the purchase of ironmongery and small items of metal hardware.

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.

Considering that the opponent’s limitation the aforesaid goods in class 7 not being in the B2C sector and the applicant’s limitation the aforesaid goods included in class 7 not relating to the field of business concepts for consumers do not alter the nature and characteristics of the goods in question in Class 7 and, in any event, have the same meaning, they do not have any influence on the comparison of the goods and services in question in the present case and therefore, will not be referred to in the assessment below.

In contrast, it has to be noted that the wording gas welding machines expressly not including tools being parts of machines does restrict the nature of the gas welding machines in question to tools which are not parts of machines.

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

Cutting tools (machines); Mechanical tools for machine tools are identically included in both lists of goods in Class 7 in spite of a slight difference in wording for the former.

It is noted, as regards the remaining contested goods, that they mainly consist of different types of machines, machine tools and mechanical tools for machine tools. From the outset, it is noted, in that respect, that a machine tool is a machine driven by power that cuts, shapes, or finishes metal or other materials. Machine tools comprise inter alia turning, engraving, drilling, sawing, milling, grinding and sanding machines. Finally, mechanical tools for machine tools are components of machine tools that are either used to assemble the machine tool or to repair it (spare parts).

In light of the above, it has to be considered that the bores (listed twice); grinding belts for motorised sanders, grinding discs for motorised sanders; abrasive belts for motorised sanders; bits for electric drills are included in the broad category of the opponent’s mechanical tools for machine tools and are, therefore, identical.

The contested gardening machines (powered -) are identical to the opponent’s cutting tools in Class 7 since they overlap. For example, chain saws are cutting tools and at the same time gardening machines (powered -).

The contested electric welding apparatus (listed twice); electric blenders; power drills (listed twice); electric sanders, belt sanders, endless belt sanders, floor sanders, sanding machines for woodworking, power saws; milling-drilling machines, radial drills, impact drills, drilling machines (electric tools), electric hand drill operation; laser welding machines, gas welding machines expressly not including tools being parts of machines are all machine tools. They are highly similar to the opponent’s mechanical tools for machine tools which are parts of machine tools. Indeed, the conflicting goods are produced by the same manufacturers since companies who produce machine tools usually also produce parts/components of these machines. They are moreover complementary and serve the same purpose (i.e. to assist in various tasks such as cutting, sanding, blending, etc.). They are bought by the same consumers and distributed over the same distribution channels.

Contested services in Class 35

As regards the contested wholesaling and retailing, of gardening articles it has to be borne in mind that wholesale and retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary. Furthermore, retail of specific goods and the specific goods target the same public and these services are generally offered in the same places where the goods are offered for sale.

Since as explained above, the opponent’s gardening apparatus are identical to the opponent’s cutting tools and considering that the difference between apparatus and article is immaterial, these contested services have to be considered similar to a low degree to the opponent’s cutting tools.

In contrast, as similarity between wholesale and retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the wholesale and/or retail services and the specific goods covered by the other mark are identical and given that this condition is not fulfilled in the present case, the contested wholesaling and retailing, of ironmongery, small items of metal hardware, and DIY, household articles; centres for the purchase of ironmongery and small items of metal hardware are dissimilar to any of the opponent’s goods. They are dissimilar also to the opponent’s services as they also differ from these in nature, purpose, usual origin, relevant public and method of use.

The remaining contested services are also dissimilar to all of the opponent’s goods and services. The contested import, export and business representations, of ironmongery, small items of metal hardware, and DIY, gardening and household articles. These services form part of the business administration or business management of an undertaking and if they are preparatory or ancillary to the commercialisation of goods, they do not qualify as complementary goods and services as defined in case-law. The fact that the subject matter of the services and the goods in question are the same is thus an irrelevant factor for finding similarity and these services are deemed to be dissimilar to the goods and services of the earlier mark.

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.

Since as explained above, the limitation contained in the earlier mark states ‘the aforesaid goods in class 7 not being in the B2C sector’ and that of the contested application states ‘the aforesaid goods included in class 7 not relating to the field of business concepts for consumers’ do not alter the nature and characteristics of the goods in question but merely describe the parties’ commercial strategy, it has to be considered that the relevant goods and services are directed at both business customers with specific professional knowledge or expertise and non-professional consumers (03/07/2017, R 1917/2016-1, EHLIS RATIO / Ratio, § 18 to 25).

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

3. The signs

Ratio
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 earlier mark is a word mark consisting of the single word ‘Ratio’ and the contested sign is a figurative mark consisting of the same word ‘ratio’ depicted in standard white lower case typeface with the registration symbol (®) depicted on the right hand side of this word, this word element is superimposed on a red polygon.

The word ‘ratio’ present in both signs will be associated with a measure of the relative size of two classes which is expressible as a proportion by the part of the public that knows this word, for example, the French and English-speaking parts of the public in the relevant territory. As this word has no meaning in relation to the goods and services in question and is not otherwise weak, it is considered distinctive.

The figurative element consisting of a polygon is a simple geometrical shape that merely serves to highlight the word element contained therein and hence plays a decorative and secondary role. Moreover, the registration symbol lacks any distinctive character and is barely visible so that it is negligible. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, such symbol will not be taken into account in the comparison of the signs.

Therefore, the element ‘ratio’ is the most distinctive element of the contested sign.

The marks have no element that could be considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in their only word element, namely, ‘ratio’. However, they differ in relation to the graphical representation of the contested sign (including the polygon), which is secondary in comparison to the word element.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the element ‘ratio’ and it does not differ in any element. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of the public will perceive both signs as referring to a measure of the relative size of two classes which is expressible as a proportion conveyed by the common element ‘ratio’ and considering that the contested sign’s polygon device does not convey any clear concept, the signs will be perceived as conceptually identical by the part of the public for whom ‘ratio’ is meaningful.

For the remaining part of the public, as neither of the signs conveys any (clear) concept, a conceptual comparison is not possible. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public in the relevant territory.

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 claimed that the earlier trade mark enjoys a high degree of inherent distinctiveness.

In this regard, the Opposition Division recalls that when an earlier mark is not descriptive (or is not otherwise non-distinctive), it is Office practice to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB, EU:T:2015:192, § 49, last alternative).

In the present case, the opponent did not file any evidence in order to prove such a claim. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As 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, its distinctiveness must be seen as normal in accordance with the Office practice.

5. Global assessment, other arguments and conclusion

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, the earlier mark has an average degree of distinctiveness and the differences between the signs are confined to secondary elements and aspects, namely, the graphical depiction of the common word element in white against a red polygon in the contested sign.

As the verbal component of a sign usually has a stronger impact on the consumer than the figurative aspects because the public will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), the consumer, when confronted with signs which are visually highly similar and aurally identical and also conceptually identical for part of the public, in the context of identical and similar goods will thus most likely confuse their commercial origin.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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 varying degrees to those of the earlier trade mark, including those found similar to a low degree. Indeed, in view of the high visual similarity, the aural identity and also for part of the public at least, the conceptual identity between the signs, the low degree of similarity between these contested services and the opponent’s goods is clearly offset by the similarity/identity between the signs.

The rest of the contested services 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 services cannot be successful.

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

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.