OPPOSITION No B 2 695 313

Brammer plc, St Ann's House, 1 Old Market Place, Knutsford Cheshire WA16 6PD, United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Bedrunka & Hirth Gerätebau GmbH, Giessnaustraße 8, 78199 Bräunlingen, Germany (applicant), represented by Maucher Jenkins, Urachstr. 23, 79102 Freiburg im Breisgau, Germany (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 695 313 is upheld for all the contested goods.

2. European Union trade mark application No 14 962 501 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 962 501. The opposition is based on European Union trade mark registration No 12 536 041. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

It is noted that the request for an extension of a time limit filed by the applicant on 25/11/2016 was refused by the Office because the request was not in the language of the proceedings (English). Furthermore, the documents submitted by the applicant on 03/01/2017 and 23/01/2017 were not taken into account, as they were not received within the time limit, in accordance with Rule 20(2), (3) and (4) EUTMIR.

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 6: Racking, shelving, partitioning and pallet racking structures, all made of metal; containers, lockers, cabinets, steps and benches, all made of metal; parts and fittings for all the aforesaid.

Class 20: Furniture; benches, tables and storage units; parts and fittings therefor; all the aforesaid goods being for industrial use.

The contested goods are the following:

Class 6: Storage boxes of metal; Rolled and cast profiles of metal; Small items of metal hardware; Metal hardware.

Class 20: Racks; Cupboards; Benches (work-); Storage and operating equipment (furniture); Work station systems (furniture); Furniture for workplaces for the assembly and disassembly of industrial and handmade products, in particular tables, cupboards, benches (work-), working tables, workbenches, holding frames for tools and worktops.

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 applicant’s list of goods in Class 20, indicates that the specific goods are 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 6

The contested storage boxes of metal include, as a broader category, or overlap with, the opponent’s containers, lockers, cabinets, all made of metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested rolled and cast profiles of metal overlap with the opponent’s racking, shelving, partitioning and pallet racking structures; all made of metal. Therefore, these categories cannot be clearly separated and they are considered identical.

The contested small items of metal hardware and metal hardware overlap with the opponent’s racking, shelving, partitioning and pallet racking structures, all made of metal; containers, lockers, cabinets, steps and benches, all made of metal; parts and fittings for all the aforesaid. Therefore, these categories cannot be clearly separated and they are considered identical.

Contested goods in Class 20

The contested racks; cupboards; benches (work-); storage and operating equipment (furniture); work station systems (furniture); furniture for workplaces for the assembly and disassembly of industrial and handmade products, in particular tables, cupboards, benches (work-), working tables, workbenches, holding frames for tools and worktops overlap with the opponent’s Class 20 furniture; benches, tables and storage units; parts and fittings therefor; all the aforesaid goods being for industrial use. Therefore, as these categories of goods cannot be clearly separated and they are considered identical.

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 found to be identical are directed at the public at large and the professional public.

The degree of attention is considered 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).

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 verbal elements composing the signs are meaningful for the part of the relevant public with knowledge of English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark containing the word element ‘workline’, written in a black standard typeface, with the word ‘work’ printed in bold. A figurative element consisting of a purple rectangular background and a superimposed three-dimensional cubic element is located on the left side of the previously described ‘workline’ element. It should be noted that this figurative element is mostly ornamental and the public will perceive it as a graphic element used to embellish the sign and bring their attention to the word element of the mark.

The contested sign is a figurative mark containing the word element ‘Workline’, written in a stylized script typeface.

As regards both the earlier mark and the contested sign, although they are composed of one verbal element ‘WORKLINE’, the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Thus, the relevant public will perceive the separate elements ‘WORK’ and ‘LINE’ in the marks in contention.

This dissection will lead the relevant public to perceive this word element as being a play on words that suggests that the goods in question are a line of products meant to be used for work purposes. However, the Opposition Division considers this allusion to be sufficiently imaginative in the context of the goods so as to not materially affect its distinctiveness. Therefore, the element in question is considered to have an average degree of distinctiveness.

The earlier mark has no elements that could be considered clearly more dominant than other elements. Additionally, it is composed of a distinctive verbal element and a less distinctive figurative element of an essentially decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and 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).

Visually, the signs identically coincide in the verbal element ‘WORKLINE’. However, they differ due to the different stylizations of this element and the additional ornamental figurative element found in the earlier mark. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the sound of their shared verbal element ‘WORKLINE’. Therefore, they are aurally identical.

Conceptually, as was referred above, the signs share the verbal element ‘WORKLINE’. Although this element will be dissected by the relevant public into the separate elements ‘WORK’ and ‘LINE’, this does not affect its overall distinctiveness, deemed to be average.

Furthermore, the previously described different stylizations of this element and the additional figurative element in the earlier right do not generate the necessary distance needed to create any clear conceptual differences between the signs, given the above indication regarding the stronger impact of the verbal components in signs that consist of both figurative and verbal elements. To that extent, the signs are conceptually identical.

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 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

The contested goods are identical and the signs are visually highly similar and aurally and conceptually identical.

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).

In the present case, the signs under comparison share the distinctive verbal element ‘WORKLINE’. As was concluded above in section c) of this decision, the Opposition Division considers the distinctiveness of this verbal element to be average. Additionally, as previously mentioned, the different stylizations of this verbal element and the additional figurative element of the earlier right do not create the necessary distance to safely exclude any likelihood of confusion between the marks.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 536 041. It follows that the contested trade mark must be rejected for all the contested goods.

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

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Patricia LÓPEZ FZ. DE CORRES

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.