OPPOSITION No B 2 445 313

Schlaeger Kunststofftechnik GmbH, Ritter-von-Eitzenberger-Str. 10, 95448 Bayreuth, Germany (opponent), represented by Hafner & Kohl, Schleiermacherstr. 25, 90491 Nürnberg, Germany (professional representative)

a g a i n s t

Swanson Industries Inc., 2608 Smithtown Road, Morgantown 26508, United States of America (applicant)

On 03/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 445 313 is upheld for all the contested goods and services, namely

Class 7: Hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor.

Class 40: Welding; heat treatment of metal components for hydraulic systems.

2. European Union trade mark application No 12 860 524 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 860 524 , namely against some of the goods and services in Classes 7 and 40. The opposition is based on European Union trade mark registration No 6 624 845 . 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 9: Electric, electro-pneumatic and/or pneumatic and/or hydraulic measuring, signalling and checking (supervision) apparatus and instruments; adjusters for hydraulic apparatus, equipment and installations.

Class 40: Conducting soldering processes, conducting thermo-compression processes.

The contested goods and services are the following:

Class 7: Hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor.

Class 40: Welding; heat treatment of metal components for hydraulic systems.

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 ‘namely’, in the applicant’s list of goods, is used to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 Hydraulic cylinders for machines; hydraulic system components for machines, namely, hydraulic pumps, hydraulic cylinders, hydraulic motors, hydraulic valves, hydraulic valve actuators, pneumatic valves, hydraulic controls for machines, and component, structural or replacement parts therefor are similar to the opponent´s adjusters for hydraulic apparatus, equipment and installations. These goods can coincide in purpose, are sometimes used in a complementary way and can be competition. They coincide in distribution channels and points of sale. They are directed at the same consumers and likely to come from the same kinds of undertakings.

Contested services in Class 40 Welding is identical to the opponent´s conducting soldering processes, since the same kind of services are referred to by using synonym expressions.

The contested heat treatment of metal components for hydraulic systems are identical to the opponent´s conducting thermo-compression processes, since these services overlap.

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 are directed at professionals.

The degree of attention paid by consumers during the purchase of these goods and services is deemed to be average.

3. The signs

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).

Both signs consist of two shapes with the form of a “U”, inclined and interlaced. The combination of the shapes in both signs form an hexagonal shape:

The differences between them rely on the fact that the earlier mark is formed by one grey shape and one black shape, whereas the contested sign is formed by two black shapes. The contested sign is bordered by a white outer line not found in the earlier mark.

In both signs, the shapes are separated by a white space, being the separation of the shapes in the earlier mark slightly wider. However, the difference in the width of the white space separating the shapes in both marks is not noticeable at first sight. As it is likely to be disregarded by the relevant public, it will not be taken into consideration in the present comparison.

Part of the public will perceive the signs as forming a highly stylised letter “S”, and therefore as having the concept of said letter, whereas others will merely see them as the combination of two shapes with the characteristics described above, with no particular concept.

In view of the foregoing, the signs have no elements more distinctive or dominant (visually eye-catching) than others.

Visually, the signs coincide in the fact that the same type of shapes (i.e. two inclined U-shaped elements) are interlaced in the same way and result in the same hexagonal shape which, by part of the public will be perceived as a highly stylised letter ‘S’.

The signs differ in the colours referred to above (i.e. grey and black vs. black) and in the white outer line of the contested mark.

The signs are visually similar to a high degree.

Aurally, for the part of the public perceiving both marks as highly stylised letters “S”, they will refer to both of them by pronouncing that letter. In that case, the signs are aurally identical.

Purely figurative signs are not subject to a phonetic assessment. Therefore, for the part of the public perceiving both signs as purely figurative (i.e. a mere combination of shapes with no concept), it is not possible to compare them aurally.

Conceptually, for the part of the public perceiving both marks as highly stylised letters “S”, both signs will be perceived as having the concept of said letter. In that case, the signs are conceptually identical. For consumers perceiving the concept of the hexagonal shape in the marks, the signs are also conceptually identical to this extent.

For the part of the public perceiving both signs as purely figurative, a conceptual comparison is not possible. Therefore, 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

The signs compared in section c) are visually similar to a high degree, and aurally and conceptually identical, at least for consumers perceiving them as a highly stylised letters “S”. They are also conceptually identical for consumers perceiving the hexagonal shapes in both marks.

The marks are not comparable aurally and conceptually for consumers perceiving them as a mere combination of shapes with no concept. In this last scenario, the signs cannot be differentiated aurally or conceptually.

The goods and services compared in section a) are partly identical and partly similar.

Both signs consist of the combination of two interlaced U-shaped elements, resulting in an original hexagonal shape, which can be seen as forming a highly stylised letter “S”. The coincidences in such particular characteristics of the signs are of significant weight in the present assessment.

As explained in section b), the goods and services herein involved are directed at professionals, and the degree of attention paid by them during the purchase of the goods and services is deemed to be average.

According to the principle of imperfect recollection, consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind. Based on this, consumers might believe that the conflicting goods and services come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the significant coincidences between the signs clearly outweigh their dissimilarities, and may induce the public, even if they are professionals, to believe that the conflicting goods and services come from the same or economically-liked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.

In the present case, although the public in the relevant territory might detect certain visual differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a variation of the earlier mark, configured in a different way depending on the type of goods and services that it designates. It is, therefore, conceivable that the relevant public will regard the goods and services designated by the conflicting signs as coming from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 624 845. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.