OPPOSITION No B 2 407 362

Top Cable, S.A., Parque de Actividades Económicas, Can Sant Joan, Camí Vell de Sant Cugat, s/n, 08191 Rubi (Barcelona), Spain (opponent), represented by Herrero & Asociados, Alcalá, 35, 28014 Madrid, Spain (professional representative)

a g a i n s t

DSR Wire, 15 Sandan 1-gil, Seo-myeon, Suncheon-si, Jeollanam-do, Republic of Korea (applicant), represented by Patronus IP Patent und Rechtsanwälte, Neumarkter Straße 18, 81673 München, Germany (professional representative).

On 12/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 407 362 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 872 008 ‘Powerflex’. The opposition is based on Spanish trade mark registration No 1 773 812 ‘POWERFLEX’ and international trade mark registration No 696 807 ‘POWERFLEX’ designating Benelux, Denmark, France, Italy, Austria, Portugal and Sweden. 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

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

Class 9: Electrical cables.

The contested goods are the following:

Class 6: Wire ropes; ropes of metal; steel wire; wire of common metal; slings of metal for handling loads; thread of metal for tying-up purpose; braces of metal for load handling.

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.

The contested wire ropes; ropes of metal are goods consisting of several metal strands twisted together, which are used for holding and lifting weights. The contested steel wire; wire of common metal; thread of metal for tying-up purpose are a variety of slender flexible strands or rods of metal. The contested slings of metal for handling loads are metal ropes or straps used for securing or lifting, or metal rope nets swung from a crane used for loading and unloading cargo. The contested braces of metal for load handling are metal bars usually used to reduce or inhibit front to rear shifting of freight/cargo.

The opponent’s electrical cables in Class 9 are assemblies of lines for carrying an electric current or electrical signals, consisting of a number of individually insulated wires bound together inside a protective sheath of insulating material.

Even though some of the goods in comparison have some attributes in common, such as containing elongated threads, this is not enough to find similarity. The materials within the goods differ in density, strength, durability and conductivity, which are specific to the purpose or function that the goods perform. The goods clearly differ in purpose; while the opponent’s goods are used for carrying an electric current, and thus are specifically intended for the provision of electricity, the contested goods are used in the construction and cargo and freight industries for securing and supporting structures; securing, supporting and moving weights/cargos; tying up and lifting of other heavy objects. The method of use of the goods is also different. While the opponent’s goods are meant for connection to or within the electrical grid, so as to ensure the carrying of the electrical current, and thus are used specifically for their conductivity, the contested goods are mechanically attached to the object that needs to be secured and/or lifted, thus relying on mechanical strength and durability. Finally, the goods do not usually originate from the same enterprise, as they exhibit different qualities, and thus different equipment and technologies are required to produce them. The goods are neither complementary nor in competition. They target different end users and have different distribution channels. Even if they could be found in the same store, they would be placed in different departments/sections and not next to each other. This segmentation would also apply when the goods are offered online.

Following that, note should be taken of the printout from the web page www.redondoygarcia.com, which was submitted by the opponent and appears to be a website offering hardware. The opponent points out that the web page offers ‘braces...wires’, as well as ‘cables’. Even on this single example page submitted by the opponent, the different goods offered are grouped into different sections: ‘braces...wires’ are clearly grouped below ‘Tornillería…Perfilería’ (‘Fasteners…Profiles’), while ‘cables’ are below ‘Material Eléctrico’ (‘Electric Material’) along with other goods offered for supply of electricity. Furthermore, below each of these groups are listed the trade marks (brand names) of the goods sold, which show completely different brands for the two different groups, thus referring to their different origins. It follows that the submitted material further confirms the conclusion reached by the Opposition Division that the goods in comparison are unlikely to originate from the same undertaking. Therefore, the contested wire ropes; ropes of metal; steel wire; wire of common metal; slings of metal for handling loads; thread of metal for tying-up purpose; braces of metal for load handling and the opponent’s goods are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Ferenc GAZDA

Eamonn KELLY

Plamen IVANOV

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.