OPPOSITION No B 2 899 162

Biodom 27 D.O.O., Proizvodnja, Trgovina in Storitve, OIC — Hrpelje 14A, 6240 Kozina, Slovenia (opponent), represented by Bogdan Alecu, Brasov, strada Paducelului 18, 600012 Brasov, Romania (professional representative)

a g a i n s t

Stilmetal Int D.O.O., Arja vas 12, 3301 Petrovče, Slovenia (applicant), represented by Tadej Černivec, Regentova cesta 40, 1000 Ljubljana, Slovenia (professional representative).

On 23/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 899 162 is upheld for all the contested goods.

2. European Union trade mark application No 16 706 004 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 should 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 of European Union trade mark application No 16 706 004 for the word mark ‘STILMETAL’. The opposition is based on European Union trade mark registration No 15 772 635 for the word mark ‘STILMETAL’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods

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

Class 11: Flues and installations for conveying exhaust gases; Burners, boilers and heaters; Fireplaces; Central heating apparatus; Space heating apparatus; Automatic temperature regulators for central heating radiators; Installations for central heating; Installations for controlling the flow of gases; Heating apparatus and installations; Burner control apparatus; Loading apparatus for furnaces; Heat generating apparatus; Heating apparatus for solid, liquid or gaseous fuels; Heating apparatus for furnaces; Central heating boilers; Control units [thermostatic valves] for heating installations; Boilers; Boilers for central heating installations; Boilers for hot water supply installations; Furnace boilers; Boilers for use in heating systems; Valves (temperature sensitive controls for automatically operating -) [parts of heating installations]; Feeding apparatus for heating boilers; Heating apparatus for use in the home; Pavement heating apparatus; Fittings, shaped, for ovens; Stoves; All the aforesaid goods included in this class being intended for the field of heating.

The contested goods are the following:

Class 11: Flues and installations for conveying exhaust gases; Burners, boilers and heaters; Fireplaces; Central heating apparatus; Space heating apparatus; Automatic temperature regulators for central heating radiators; Installations for central heating; Installations for controlling the flow of gases; Heating apparatus and installations; Burner control apparatus; Loading apparatus for furnaces; Heat generating apparatus; Heating apparatus for solid, liquid or gaseous fuels; Heating apparatus for furnaces; Central heating boilers; Control units [thermostatic valves] for heating installations; Boilers; Boilers for central heating installations; Boilers for hot water supply installations; Furnace boilers; Boilers for use in heating systems; Valves (temperature sensitive controls for automatically operating -) [parts of heating installations]; Feeding apparatus for heating boilers; Heating apparatus for use in the home; Pavement heating apparatus; Fittings, shaped, for furnaces; Stoves [heating apparatus].

The opponent’s fittings, shaped, for ovens are considered synonymous with the contested fittings, shaped, for furnaces, as it can be seen that, in the lists of goods in the first language (Slovenian in both cases), these goods are identical, both appearing as oblikovana oprema za peči.

The opponent’s goods are limited to goods for use in heating, as can be seen from the specification at the end of the list, namely all the aforesaid goods included in this class being intended for the field of heating.

The contested flues and installations for conveying exhaust gases; burners, boilers and heaters; fireplaces; central heating apparatus; space heating apparatus; automatic temperature regulators for central heating radiators; Installations for central heating; installations for controlling the flow of gases; heating apparatus and installations; burner control apparatus; loading apparatus for furnaces; heat generating apparatus; heating apparatus for solid, liquid or gaseous fuels; heating apparatus for furnaces; central heating boilers; control units [thermostatic valves] for heating installations; boilers; boilers for central heating installations; boilers for hot water supply installations; furnace boilers; boilers for use in heating systems; valves (temperature sensitive controls for automatically operating -) [parts of heating installations]; feeding apparatus for heating boilers; heating apparatus for use in the home; pavement heating apparatus; fittings, shaped, for furnaces; stoves [heating apparatus] are identical to the corresponding goods in the opponent’s list, because:

(i) either they include as broader categories the opponent’s corresponding goods, as the latter are specifically for use in heating (e.g. the contested flues and installations for conveying exhaust gases include the opponent’s flues and installations for conveying exhaust gases; all the aforesaid goods included in this class being intended for the field of heating), in which case the Opposition Division cannot dissect ex officio the broad categories of the contested goods, and they are considered identical to the opponent’s corresponding goods;

(ii) or the contested goods are synonymous with the opponent’s corresponding goods (e.g. the contested stoves [heating apparatus] and the opponent’s stoves; all the aforesaid goods included in this class being intended for the field of heating), in which case the goods are also identical.

2. The signs

STILMETAL	STILMETAL
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

All the contested goods are identical to the opponent’s goods. Given that the signs are also identical, the opposition must be upheld under Article 8(1)(a) EUTMR.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 772 635 and the contested trade mark must be rejected for all the contested goods.

As the opposition is fully successful on the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.

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

Alicia BLAYA ALGARRA

Maria SLAVOVA

Irina SOTIROVA

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.