OPPOSITION No B 2 580 143

KRD Sicherheitstechnik GmbH, Vierlander Str. 2, 21502 Geesthacht, Germany (opponent), represented by Andreas Noack, c/o Stolmár & Partner Hamburg, Neuer Wall 71, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Kasai Kogyo Co., Ltd., 3316, Miyayama, Samukawa-machi, 253-0106, Koza-gun, Kanagawa-ken, Japan (applicant), represented by Serjeants LLP, Dock, 75 Exploration Drive, Leicester LE4 5NU, United Kingdom (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 580 143 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 13 851 019 for the figurative mark . The opposition is based on European Union trade mark registration No 157 701 for the word mark ‘KASI’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

According to Article 10(1) EUTMDR, a request for proof of use of an earlier mark will be admissible only if it is submitted as an unconditional request in a separate document within the period specified by the Office. According to Article 82(2)(d) EUTMDR, Article 10 EUTMDR applies to requests for proof of use made after 01/10/2017 which is the case here.

On 08/02/2018, the applicant requested - as part of its observations, together with other claims and arguments - proof that the earlier mark has been used.

Since the applicant has not submitted the request for proof of use by way of a separate document, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

a) The goods

Following decision of 12/11/2019 in Cancellation No 23 821 (Revocation) before the EUIPO, the earlier mark was partially revoked and the decision is now final. The goods on which the opposition is based are consequently the following:

Class 17: Semi-worked plastic substances, in particular plastics materials in the form of sheets or panels [semi-finished products]; coverings, in particular laminated plastic surface materials; adhesive tapes, strips, bands and films, in particular adhesive-coated plastic sheets.

Following the limitation of the list of goods requested by the applicant on 02/11/2018, the remaining contested goods are the following:

Class 12: Automotive interior components, namely automobile doortrim, body-side trim, sun visors, trunk trim, rear parcels, pillar trim, roof trim, tonneau covers, tonneau boards, seats, assist grips, luggage trim, dashboards, consol boxes and kicking plates.

Class 27: Floor carpet for fitment to the interiors of automobiles during manufacture.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goodsare only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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 opponent’s goods are various types of semi-worked plastic goods, such as sheets, panels, strips, bands. On the other hand, the opponent’s automotive interior components, namely automobile doortrim, body-side trim, sun visors, trunk trim, rear parcels, pillar trim, roof trim, tonneau covers, tonneau boards, seats, assist grips, luggage trim, dashboards, consol boxes and kicking plates in Class 12, and floor carpet for fitment to the interiors of automobiles during manufacture in Class 27 are finished components, specifically to be fitted in the interior of automobiles .

Even though the contested goods can be (partially) made of plastic, as correctly pointed out by the opponent, this is not sufficient to find them similar to the opponent’s goods which need further processing to obtain products suitable for specific purposes. A different degree of transformation of the plastic material is crucial here and therefore, it cannot be considered that these goods have the same nature or purpose. Their method of use is also different. Moreover, they are not usually manufactured by the same undertakings or distributed through the same commercial channels. Although some of the opponent’s goods, such as adhesive tapes may be used in combination with some of the contested goods, it does not mean that they are complementary. According to case-law goods (or services) are complementary only if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Finally, these goods are not in competition.

Therefore, all the contested goods are dissimilar to the opponent’s goods in Class 17.

b) 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.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Nicole CLARKE

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

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.