OPPOSITION No B 2 924 051

Acsys Lasertechnik GmbH, Leibnizstrasse 9, 70806 Kornwestheim Germany (opponent), represented by PKL Legal Rechtsanwaltsgesellschaft mbH, Glashütter Str. 104, 01277 Dresden, Germany (professional representative)

a g a i n s t

Кармет България" Еоод, ул. "Стоян Михайловски", № 16, 4000 Пловдив, Bulgaria (applicant), represented by Lusia Kesova, bul. ”Koprivshtica”, № 36A, 4002 Plovdiv, Bulgaria (professional representative).

On 30/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 924 051 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 252 322 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 252 322 for the figurative mark . The opposition is based on German trade mark registration No 30 719 022 for the word mark ‘Orca’. 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: Machine tools, machines and plants composed of machine tools and machines for material treatment by means of laser technology, in particular laser marking, laser engraving, 3D-laser engraving, laser deep engraving, laser lettering, laser micro treatment, laser digitizing, laser structuring, their parts and accessories (included in class 7).

Class 40: Material processing by means of laser technology, in particular laser marking, laser engraving, 3D-laser engraving, laser deep engraving, laser lettering, laser micro treatment, laser digitizing, laser structuring.

Class 42: Services of technicians and engineers, in particular building design planning, construction planning and technical project planning as well as technical consultancy exclusively in the area of of laser technology; scientific and technological services and research in the area of machine tools, machines and plants composed of machine tools and machines for material treatment by means of laser technology.

The contested goods and services are the following:

Class 7: Guillotine machines, other than for office use; Cutting machines; Metal cutting centres [machines]; Cutting machines; Gear cutting machines; Laser cutting torches; Metal cutting machines; Plate shearing machines; Rotary cutting installations [machines]; Sheet metal working machines; Stencil cutters [machines] other than for office use; Hydraulic tools.

Class 37: Maintenance and repair of metal cutting machines; Maintenance and repair of hydraulic guillotines.

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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested guillotine machines, other than for office use; cutting machines; metal cutting centres [machines]; cutting machines; gear cutting machines; laser cutting torches; metal cutting machines; plate shearing machines; rotary cutting installations [machines]; sheet metal working machines; stencil cutters [machines] other than for office use; hydraulic tools are included in the broad category of, or overlap with, the opponent’s machines and plants composed of machine tools and machines for material treatment. Therefore, they are identical.

Contested services in Class 37

The contested maintenance and repair of metal cutting machines; maintenance and repair of hydraulic guillotines are similar the opponent’s machines and plants composed of machine tools and machines for material treatment. It is common in the relevant market sector for the manufacturer of the opponent’s goods to also provide maintenance and repair services for those goods. These services are also provided independently of the purchase of the goods. Therefore, these goods and services are complementary, they are provided by the same undertakings, they target the same relevant public and coincide in distribution channels.

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 the public at large and at a professional public with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Orca
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 verbal element ‘orca’ in both marks and the figurative element in the contested sign will all be perceived as ‘a large black and white killer whale’. These elements have a normal degree of distinctiveness in relation to the relevant goods and services.

The marks have no elements that are more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal elements ‘ORCA’. As the earlier mark is a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case letters, or in a combination thereof. In the contested sign, which is figurative, this element is represented in standard black upper case letters. However, the marks differ in the figurative element in the contested sign representing an orca. 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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛ORCA’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As all elements of the signs will be perceived as referring to the concept of ‘orca’, 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

The earlier mark has a normal degree of distinctiveness. The relevant pubic is the public at large and a professional public, the level of attention will vary from average to high.

The conflicting goods and services are partly identical and partly similar.

The signs are visually similar to an average degree, they are aurally and conceptually identical.

Taking into account all relevant factors, and especially the striking similarities between the signs, it is considered that the relevant public might be led to believe that the identical and similar goods and services come from the same or economically linked undertakings, this even taking into account a higher degree of attention.

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 German trade mark registration No 30 719 022. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Carlos MATEO PÉREZ

Saida CRABBE

Vita VORONECKAITE

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.