OPPOSITION No B 3 005 538

Positec Group Limited, Level 54, Hopewell Centre, 183, Queen's Road East, null, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Boult Wade Tennant LLP, Salisbury Square House, 8, Salisbury Square, EC4Y 8AP London, United Kingdom (professional representative)

a g a i n s t

HongKong Sun Rise Trading Limited, Room 805, Wai Wah Commercial Centre, No.6 Wilmer Street, Sheung Wan, 201108 Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt, Germany (professional representative).

On 19/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 005 538 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 and services of European Union trade mark application No 17 163 817 for the word mark ‘GREENWORKS’. The opposition is based on European Union trade mark registrations No 14 228 209 and No 4 224 127 as well as on European Union application No 15 729 833 (subject to an opposition proceeding still pending), all of them for the word mark ‘WORX’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in respect of all the earlier rights.

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.

The opposition is based on more than one earlier trade mark. For reasons that will become apparent from the circumstances set out below (see ‘Global assessment’) and bearing in mind the principle of procedural economy, the Opposition Division finds it appropriate to examine the likelihood of confusion in relation to the opponent’s European Union trade mark registration No 4 224 127.

a) The goods and services

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

Class 7: Agriculture machines; lawnmowers; woodworking machines; planning machines; saws (machines); engraving machines; electric kitchen appliances, namely, mixers, electric food blenders, electric food grinders for commercial, industrial or domestic uses, electric food slicers, electric food choppers, electric egg beaters, electric can openers, electric fruit peelers, electric juice extractors, electric juicers, electric knife sharpeners, electric pasta makers for domestic use, electric vegetable peelers, electric food processors; elevating apparatus; cutting machines; apparatus for dressing; metalworking machines; drilling machines; electric machines and apparatus for polishing (electric); portable power tools; hand-held power tools, other than hand-operated; electric grinders; electric drills, electric hedge trimmers; electric tackers; electric shears; electric spray guns; electric plastics welders; electric wrenches; electric hammers; electric screwdrivers; electric sanders; electric breakers; grass shears; electric garden tools; starters for motors and engines; pumps; vacuum cleaners; high pressure cleaners; electric welding machines; sweeping machines; machines and apparatus for cleaning (electric); electric shoe polishers; electric disintegrators; hydraulic door openers and closers (parts of machines).

Class 8: Non electric tools not included in other classes; hand tools and implements (hand-operated); abrading instruments (hand instruments); agricultural implements (hand-operated); garden tools (hand-operated); edge trimmers; pruning shears; screwdrivers; drills; hand-operated guns for the extrusion of adhesives; hand-operated lifting jacks; lawn clippers (hand instruments); pruning knives; tableware (knives, forks and spoons).

The contested goods and services are the following:

Class 7: Air compressors; power operated blowers, including axial flow blowers; chain saws, including electric chain saws; lumbering saws [machines]; power operated cultivators and tillers, including power-operated lawn and garden tillers; schredders; power-operated dethatchers; scarifiers; electricity generators; power operated hedge trimmers and electric hedge shears; yard chippers; machines for cleaning surfaces using high pressure water, including pressure washers and high pressure washers; spray guns; lawn mowers, including robotic lawnmowers, walkbehind lawn mowers and riding lawn mowers, both electric- and gas-powered lawn mowers; electronic controller for governing the electrical output of a battery during mowing operation, sold as an integral component of lawn mowers; engines and motors for the generation of electricity; snow blowers; snow throwers; power-operated sprayers; power-operated brushcutters; power-operated grass/weed trimmers, including electric lawn trimmers; chippers [power lawn and garden tools]; powered gardening machines; trolling motors for boats; vacuum cleaners, including robotic vacuum cleaners, electric vacuum cleaners and cordless vacuum cleaners; vacuum cleaners for outdoor use wherein all of the aforementioned goods being battery-operated, electric, manually-operated, or otherwise ecologically-friendly; vacuum cleaners for outdoor use; power operated tools, namely, lawn and garden edgers; power-operated lawn edgers and electric lawn edgers; power-operated tools including power tools, ice augers, drillingmachines, screwdrivers impact wrenches, impact drivers, hammer drillingmachines, rotary hammer, saws, multifunction saws, angle grinders, jig saws, reciprocating saws, screw drivers, circular saws, sanders.

Class 9: Batteries, including electric batteries, rechargeable batteries and lithium ion batteries; battery charge devices, including battery chargers; inverters [electricity]; controller for governing the electrical output of a battery; computer programs and software, including application software and mobile apps for power tools, pressure washers, generators, batteries, battery chargers and outdoor power equipment including lawn mowers, robotic lawn mowers, brush cutters, string trimmers, hedge trimmers, chain saws, leaf blowers, vacuum cleaners (outdoor use), cultivators and shredders; protective work clothing [for protection against accident or injury]; eye protection; gloves for protection against injury or accident; protective headgear; protective footwear for the prevention of accident or injury.

Class 11: Air purifiers, including electronic air cleaners; flashlights; LED light bulbs for indoor and outdoor use.

Class 12: Garden tractors; lawn carts; scooters [vehicles]; bicycles.

Class 17: Garden hoses.

Class 21: Nozzles for watering hose; watering devices; lawn sprinklers.

Class 35: Online retail services, product management services and fleet management services relating to power tools, pressure washers, generators, batteries, battery chargers and outdoor power equipment including lawn mowers, robotic lawn mowers, brush cutters, string trimmers, hedge trimmers, chain saws, leaf blowers, vacuum cleaners (outdoor use), cultivators and shredders.

Some of the contested goods and services are identical or similar (e.g. vacuum cleaners and garden tractors, respectively) to goods on which the opposition is based and some others are dissimilar (e.g. software). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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.

The goods and services that are assumed to be identical target both, the general public and a professional public. Mainly consumers keen on DIY, agriculture and gardening as well as professionals working in these fields. The degree of attention may vary from average to higher than average. For instance, if the goods covered by a trade mark have an impact on safety (e.g. in the case of the contested eye protection), this may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

c) The signs

WORX	GREENWORKS
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 earlier mark ‘WORX’ lacks any meaning in itself, but it is obvious that, at least for the part of the relevant public who understands English, it will appear as a fanciful misspelling or a play on the English word ‘WORKS’, which is, inter alia, the plural form of the noun ‘WORK’ or the third person, singular, present indicative of the verb ‘WORK’. Given the goods covered by the earlier mark, all of which can have some relation to DIY, construction, gardening and agricultural machines/tools, and therefore to assisting in the activity of working/perform tasks and/or that it may also be perceived as transmitting a laudatory message about the proper functioning of the goods (‘it works’), this element has a low level of distinctiveness for this part of the public, who will rather be attracted by the fanciful misspelling, ‘X’, at its end.

However, the earlier mark will be seen as meaningless for the non-English part of the public, which means that there is no question about its distinctiveness.

As regards the contested sign ‘GREENWORKS’, it will be easily dissected by the English speaking public into the English words ‘green’ and ‘works’. The word ‘GREEN’ may be perceived as ‘environmentally friendly’ or, at least for the gardening tools, as an allusion to a ‘place with grass, plants, etc.’, that is, a reference to the intended purpose/use of the goods. The word ‘WORKS’, will be associated with the meaning explained above (plural or third person of the noun/verb ‘work’) and the previous explanations concerning its distinctive character apply accordingly. As both elements, ‘GREEN’ and ‘WORKS’, allude to possible or desirable characteristics of the relevant goods (and retail services of those goods), they have a low distinctive character.

However, mental dissection of a sign has to be applied restrictively (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57) and the Opposition Division is of the opinion that the other part of the public (i.e. consumers without a sufficient command of English) will register the contested sign as a single word with no meaning. This is because, although the word ‘green’ is a relatively basic English word, it is unlikely that this part of the public will mentally single it out since the remaining element does not suggest any specific meaning that could help to split these elements. For this part of the public, the contested sign ‘GREENWORKS’ will be perceived as a meaningless fanciful term. Consequently, its distinctiveness is average.

In short, for part of the public the compared signs are meaningful and the elements ‘WORX/WORKS’, from which the commonalities arise (but also the additional word ‘GREEN’ of the contested sign) have a low distinctive character, and for other part of the public the signs ‘WORX’ and ‘GREENWORKS’ are meaningless and, thus, distinctive to an average degree.

It is also important to note that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the differences in the beginnings of the signs play an important role when assessing the likelihood of confusion in the present case.

Visually, from the elements ‘WORX/WORKS’, which in the case of the contested sign, is placed at the end, the signs coincide in the string of letters ‘WOR’. However, they differ in their respective endings, the letter ‘X’ in the earlier mark versus the letters ‘KS’ in the contested sign. While it is true that the letters ‘X’ and ‘K’ have similar shapes, as the opponent states, the latter is accompanied by the additional letter ‘S’, which creates a noticeable difference. Moreover, the signs differ in the element ‘GREEN’, placed at the beginning of the contested sign.

The signs clearly differ in number of letters (four vs. ten). The difference in length is also an important differentiating factor, particularly considering that the coinciding words placed at the end of this long word and that, where meaningless, the word ‘WORKS’ will not be singled out.

Therefore, regardless of the scenario (and the degree of distinctiveness of the coinciding element), taking into account the position of the differences (the beginning), the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs under comparison coincides in the sound of the terms ‘WORX’ and ‘WORKS’, which will be pronounced identically since the last consonant ‘X’ (earlier mark) and the group of consonants ‘KS’ (contested sign) have the same sound. However, the pronunciation differs in the sound of the first element of the contested sign ‘GREEN’, which has no counterpart in the earlier mark and results in a different length (one syllable versus two) and intonation.

Therefore, and taking into account the particularities of the case (and different degrees of distinctiveness), the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the part of the public that understands the semantic content of the signs, taking into account the low degree of distinctiveness of the coinciding element, ‘WORX’ and ‘WORKS’, as well as the concept conveyed by the additional element of the contested sign ‘GREEN’ (despite being also weak), with which forms a conceptual unit (having the effect of conveying a varying concept), the signs are conceptually similar only to a low degree.

For that part of the public that does not recognize any semantic meaning or association within the two signs, it will not split them into two elements. This public will perceive both marks as meaningless words. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

According to the opponent, the earlier trade mark has reputation and enhanced distinctiveness in the European Union in connection with the goods for which it is registered, and in particular to power tools, garden power tools, lawnmowers and robotic lawnmowers. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In order to show enhanced distinctiveness (and reputation), the opponent submitted the following evidence:

 Annex 3: selection of printouts, links to website and references from gardening/DIY magazines and blogs (e.g. ‘Heimwerker praxis’) where ‘WORX’ branded products (e.g. land mower, electronic saws) are mentioned, recommended, ranked and/or, in some of them, awarded by specialists. There are almost 25 references, dated from 2009 to 2016, and whereas some of them come from the relevant territory others refer to articles from the United States of America.

 Annex 4: extracts from the opponent’s website www.positecgroup.com where there only article in relation to the earlier mark reads ‘WORX breaks the product of the year 2011 awards’; prize given by the UK magazine/website ‘DIY Week’s’.

 Annex 5: variety of product brochures for WORX branded goods (e.g. DIY tools, gardening machines) in different languages such as English, German and Spanish, from the period 2013 to 2017. The earlier mark is shown in relation to the pictured goods and information is given about their characteristics.

 Annex 6: printouts showing links to advertising for ‘WORX’ products on YouTube and on the websites for suppliers (e.g. OBI) of power tools, DIY tools, gardening tools and lawnmowers, based in the UK and Germany (mostly dated from 2012 to 2018). The feedback with the public does not seem particularly high, for instance, the number of subscribers (at the time of the screenshot) is around 4.000 and the views of the videos vary from 58 to a maximum of 11.072. Bearing in mind that, as can be deduced from the rest of the evidence and according to the opponent, its company has an important trade volume in USA and China and part of the viewers can be from these countries, these numbers are rather low. The same goes for the number of client’s opinions expressed on the products (offered in supplier’s online stores), which range from 2 to 50.

 Annex 7: selection of few press articles and reviews of ‘WORX’ products taken from publications in the UK, according to the opponent. They are dated in 2006, 2009 and the last one (from ‘TechRadar’ online magazine) in 2014.

 Annex 8: undated images showing in-store displays of ‘WORX’ products, according to the opponent, belonging to stores across the European Union. The date and place of the stores are not shown.

 Annex 9: undated pictures of ‘WORX’ stands in trade shows. The place and time are not indicated.

 Annex 10: three undated pictures of a car race exhibition where ‘WORX’ seems to be a sponsor of one of the teams. However, the time and the place cannot be inferred from the images.

 Annex 11: witness statement, signed by Mr. C.D., former UK Managing Director for Positec Power Tools (Europe) Limited and associated evidence. This piece of evidence is from 2011 and, as the opponent states, was previously submitted in respect of opposition No 1 698 177. The document provides a table showing the EU countries where the marks were used along with the exact year (per country) in which the marks were first used. It also states that the market share enjoyed by ‘WORX’ goods is 5% of the DIY market and 4% of the garden market (United Kingdom) and 3% of the DIY market (Germany). The total sales of DIY products to the German ‘OBI’ store (one of the biggest DIY retailers in Germany) in 2010 rise to approximately EUR 260 million while, from this amount, the sales of ‘WORX’ DIY products to OBI in Germany in 2010 are approximately EUR 6.5 million (i.e. a 2,5%). This evidence is accompanied by many exhibits aimed at demonstrating the intensity of use of the mark, its market share, the promotional activities, the nature and some of the awards won by that time. For instance, it submitted a spread sheet for the total turnovers for 2005-2010 (e.g. USD 49.074,050 in UK and USD 22,080,743 in Germany), sample invoices in several countries, the amount of money spent on advertising and some invoices to support it. It is important to know that all the documents included in this statement are obviously dated before 2011, when it was signed, and therefore, long before the relevant point in time to assess the reputation of the trade mark in the present case.

 Annex 14: witness statement, signed by Mr. S. F., current UK Managing Director for Positec Power Tools (Europe) Limited, dated on 15/06/2018. The total turnovers of ‘WORX’ products between the years 2012 to 2017 in the Benelux, France, Germany, Nordic countries (that include countries out of the European Union), are declared, amounting to over EUR 530 million. From this figure, it is specified that 50% correspond to the sales in Germany and UK and include a table of the turnovers for UK (total amount of EUR 73.5 million in the period 2012 - 2017). To support this, a large amount of invoices are included from this period including ‘WORX’ products, targeting customers in United Kingdom. The statement also refers to the marketing expenditure made by the company across Europe in that period. For instance in 2015 and 2016 it was EUR 4.1 and 5 million, respectively. These figures are not backed up by any objective evidence.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness (or reputation) through its use. In order to establish that, not only must use of the mark be shown, but also a certain threshold, in terms of the relevant public’s knowledge of the mark, must be reached.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings, the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys enhanced distinctiveness or reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponents. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 437/2014‑1, SALSA / SALSA (FIG MARK) et al.).

In the present case, it is clear from the evidence that the earlier trade mark has been subject to use in the European Union, at least in UK and Germany, and that the opponent has undertaken activities with the intention of promoting its brand. However, the Opposition Division is unable to extract any indication as regards the degree of recognition of the trade mark among the relevant public and its general position in the market. Even though the sales turnover/figures provided in the affidavits (annex 13 and 14) suggest a significant business volume, these have not been supported by evidence of an independent nature. Moreover, the amounts invoiced cannot be compared (and put in context) with any information about competitors and the size of the market. The only reference to this extent, is the statement by the opponent (annex 13) that the market share enjoyed by the ‘WORX’ goods (in 2010) was 5% of the DIY market and 4% of the garden market (United Kingdom) and 3% of the DIY market (Germany). This statement was already assessed in the previous opposition proceeding (B 1 698 177 of 24/08/2011) and even then did not contribute to proving recognition, therefore, clearly after such a long period of time, its value is further diminished. Consequently, the market share enjoyed by the goods sold and the position that it occupies cannot be inferred from the documents submitted. Other sorts of evidence would assist here. For example, the opponent could have filed third party documents such as independent surveys or statements from chambers of commerce and industry or other trade and professional associations.

Some of the documents submitted by the opponent (e.g. excerpts from magazines, articles, awards or printouts) could be given a certain credit as indirectly showing some knowledge of the earlier mark and awareness by the public. However, there is no conclusive information to assess the actual impact of this information on the recognition of the mark. In other words, it cannot be inferred from their existence alone that they were spread among a substantial part of the relevant public. Also, their content does not show any recognition of the mark. For instance, the fact that an article mentions that the opponent’s product has been awarded by experts connected to the magazine (annex 3), is not sufficient to prove its well-known character since it is rather linked to the value/quality of a given product and the promotional activities carried out by the company for gaining presence in the market. Lastly, it is also important to mention that most of this evidence come from the affidavit from 2011 or to documents dated long before the relevant point in time (i.e. the filing date of the contested mark) since the evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. It must be noted that the finding of enhanced distinctiveness or reputation of a mark, just as genuine use cannot be based on probabilities or suppositions but must be demonstrated by solid and objective evidence (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22, 12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47), by analogy the same criteria must apply with respect to evidence of purported reputation for which the threshold of proof is higher.

Finally, in the Opposition Division’s view, the presence of the earlier mark on YouTube and the retail of products on online websites (annex 6), is not a valuable indicator of recognition but rather a normal activity for any company in the market. This is even more the case here, because the feedback from the public/users, as seen above (when listing the evidence), is quite low. As regards the few pictures showing sports events where ‘WORX’ appears as sponsor of one of the teams, these documents are not dated and neither show where these events took place, who attended and so forth.

As a result, the evidence is insufficient to show the degree of recognition of the earlier trade mark by the relevant public. There is insufficient documentation/information from third parties to reflect clearly and objectively the degree of recognition of the earlier trade mark or its precise position in the market. Since there are no neutral statements or third-party information beyond some press articles and awards, the documents can only be evaluated to a limited extent as material that is meaningful in itself. Other documents that could prove enhanced distinctiveness or reputation from neutral sources and outside of material produced by the opponent, such as opinion polls, contributions from professional associations, marketing surveys or excerpts from tax and/or trade balances, have not been presented.

Under these circumstances and in the absence of any further independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, it is concluded that the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public. Even bearing in mind that the evidence must be looked at in its entirety, avoiding a piecemeal approach, the Opposition Division concludes that the opponent failed to prove that its trade mark has acquired an enhanced distinctive character or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, considering what has been stated above in section c), the distinctiveness of the earlier mark must be seen as rather low for all the goods it covers, for the part of the public that understands its word element. In fact, its distinctiveness results essentially from its allusive/laudatory character (and the fanciful misspelling at the end of this word ‘WORX’.

In contrast, 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 for which the earlier mark is perceived as meaningless. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to weak or non-distinctive elements.

The goods and services assumed to be identical target both, the general public and the professional public. The degree of attention may vary from average to high. The distinctiveness of the earlier mark ranges from low to average depending on whether it is understood or not.

For the part of the relevant public which perceives the meaning of the terms ‘WORX/WORKS’, the signs are visually, aurally and conceptually similar to a low degree since the similarities arise from an element with low distinctive character. Moreover, this element, in addition to not being identical in the signs (due to its different ending ‘X’ vs. ‘KS’), is arranged in a different manner, namely as a unique element in the earlier mark and as the second (and non-independent) element of the contested sign, ‘GREENWORKS’.

As regards the part of the public for which the signs are meaningless and, therefore, distinctive, the signs are visually and aurally similar to a low degree and the conceptual aspect remains neutral. This is justified by the fact that, although there are no distinctiveness issues in this scenario, the letter sequence in which the signs coincide ‘WOR’ will not be singled out by the relevant consumer in the contested sign, ‘GREENWORKS’, which will be perceived as a fanciful single word. Therefore, even if the words ‘WORX’ and ‘WORKS’, separately, present obvious similarities, in the present case this element does not play an independent role and it is not likely that it will be recognized and/or mentally split.

Therefore, regardless of the scenario, the differences between the signs such as the misspelling of ‘WORX’, the additional word ‘GREEN at the beginning (on which consumers focus their attention) and significantly different length/structure, are sufficient to exclude any likelihood of confusion between the signs, even in the context of identical goods and services.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as based on this ground.

The opponent has also based its opposition on the following earlier rights:

1) European Union trade mark registration No 14 228 209 (word mark ‘WORX’), for the following goods:

Class 8: Non-metal clamps; non-metal tool stands; workbench accessories, namely, non-metal clamps; vices; combined vice and workbenches; hand tools, namely, vices, metal vice jaws, and clamps; workbench accessories, namely, workbench attachments in the nature of tool holders; clamps, jaws and vices for holding logs and timber for sawing, carving, and cutting; workbench accessories, namely, workbench attachments in the nature of tool holders for holding chainsaw blades for sharpening; workbench accessories, namely, workbench attachments in the nature of tool holders, particularly, clamps, jaws, and vices for clamping of work pieces; workbench accessories, namely, metal attachable tool holders in the nature of clamps, jaws, and vices for holding items to be welded; workbench accessories, namely, workbench attachments in the nature of clamps, jaws, and vices for clamping of work pieces; parts, fittings and accessories for the aforesaid goods.

Class 12: Multipurpose wheeled carriers for use in gardening, landscaping and horticulture; multipurpose wheeled carriers in the nature of garden carts, wheelbarrows, trolleys, carts, hand trucks, and dollies; accessories for multipurpose wheeled carriers in the nature of garden carts, wheelbarrows, trolleys, carts, hand trucks, and dollies including bag holders, cylinder holders, plant mover straps, rock mover mesh, water bags, garden cart seats, wheelbarrow and garden cart tub organizers; conversion kits for converting a wheelbarrow to a hay wagon or garden cart; attachments for converting a wheelbarrow to a firewood carrier; attachments for converting a wheelbarrow to a wheeled snow plow; parts, fittings and accessories for all the aforesaid.

Class 20: Multipurpose saw horses and non-metal clamps, sold as a unit; workbenches; workstations having multi-use work surfaces; portable work tables, namely, saw tables for clamping and holding saws; workbench accessories, namely, attachable work tables; saw horses; parts, fittings and accessories for the aforesaid goods.

2) European Union trade mark application No 15 729 833 (word mark ‘WORX’), for the following goods:

Class 9: Telephones; television; camcorders; digital cameras; batteries; battery chargers; battery packs; digital copiers, multi-function devices incorporating copiers and facsimile functions; multi-function devices incorporating copiers, facsimile, scanner and/or printer functions; printing devices, hard copy output devices and computer output devices particularly printers, photocopiers, facsimile machines and printing hardware components; scanners; electric dictionary; measuring apparatus all for use with machines tools; range finders; optical lenses; relays; facsimile machines; cameras (photography); video cameras; projectors; smoke detecting apparatus; spirit levels; commutators; electric door bells; microphones; radios; remote control apparatus; camera; optical lenses; tripods for cameras; photographic instruments; bags for photographic equipment, camera and photographic apparatus and instruments and carrying cases therefor; centering apparatus for photographic transparency, drawing apparatus for photographic prints; electro-photographic exposure apparatus, electro-photographic copying machines; photographic cameras; exposure meters for photographic devices; frames for photographic transparencies; apparatus for photographic prints; photographic filters; photographic flash lighting apparatus; photographic flash units for cameras; photographic flash bulbs; photographic projectors; photographic slide transparencies; photographic view finders; photographic racks; stands for photographic apparatus; umbrellas for photographic use; photographic lenses; photographic cameras and their parts and accessories; cinematographic cameras and their parts and accessories; photographic printers; enlargers; protective knee pads; electrically heated clothing for protective or safety purposes, namely, electrically heated coats, jackets, waistcoats, vests, and gloves; software in the field of construction and DIY; software relating to tools, power tools and gardening equipment; mobile apps in the field of construction and DIY; mobile apps relating to tools, power tools and gardening equipment; mobile apps relating to the operation and control of tools, power tools and gardening equipment; parts, fittings and accessories for all the aforesaid.

Class 11: Apparatus for lighting, drying and ventilating; electric lights; electric light bulbs; lighting apparatus; electric pocket torches; refrigerators; air conditioners; clothes dryers; water heaters; hair dryers; electric coffee machines; electric egg boilers; roasters; electric cooking machines; hair dryers; water heater; sterilizers; electric laundry dryers; microwave ovens; parts, fittings and accessories for all the aforesaid.

Class 18: Bags; wallets; tool bags sold separately; tool pouches sold empty; sport bags; traveling bags; haversacks; rucksacks; backpacks; holdalls; tool carriers in the nature of holdalls, bags and cases; luggage; belts; suitcases; umbrellas; walking sticks; parts, fittings and accessories for all the aforesaid.

Class 20: Tool boxes; plastic tool boxes; workboxes; packaging containers made principally of plastics; containers made of synthetic material [other than for household or kitchen use]; portable water carriers [containers] made of plastics; plastic boxes; furniture; signboards; tool handles, not of metal; sleeping bags for camping; chests; plastic inserts [trays] for tool boxes; parts, fittings and accessories for all the aforesaid.

The Opposition Division notes that the outcome cannot be different with respect the earlier mark for which the opposition has already been rejected.

This is because, on the one hand, part of the goods of these earlier rights have nothing relevant in common with the contested goods and services (i.e. mostly related to DIY, construction, gardening and agricultural machines/tools), which could render them similar in terms of the ‘Canon’ criteria. For instance, as regards some of the opponent’s goods in Classes 18 (mainly related to luggage, bags and belts) and 20 (such as plastic containers/packages and furniture). These goods and the contested ones clearly have a different nature and purpose and are neither complementary to nor in competition with each other. Furthermore, they do not originate from the same undertakings and have normally different distribution channels. Therefore, as part of these goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and likelihood of confusion cannot exists in relation to them.

On the other hand, for the goods for which there is some extent of similarity, the element ‘WORX’ -on which these earlier marks also consists on- is either allusive and/or laudatory (from the perspective of the public for which it is understood), for similar considerations to the above comparison in section c). For instance, for workbench accessories in Class 8, software in the field of construction and DIY; software relating to tools, power tools and gardening equipment in Class 9, multipurpose wheeled carriers for use in gardening, landscaping and horticulture in Class 12, portable work tables in Class 20. Thus, the findings about the impact of low distinctive elements are equally applicable to these earlier rights and the goods covered by them. Finally, as regards the scenario where the signs are meaningless the conclusion remains also the same as in the present case. Consequently, in both scenarios the differences between the signs are sufficient to exclude any likelihood of confusion between them.

Given the foregoing, no likelihood of confusion exists with respect to those earlier rights.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the mark ‘WORX’, the evidence provides no information on the degree of recognition of the trade mark by the relevant public and its general position in the market. There are no opinions polls/surveys or solid information to put in context with others competitors and the market sector. Although the opponent’s mark is mentioned favourably in some press articles, the evidence does not show the degree of recognition of the trade mark, the impact they had on consumers or that the trade mark is known by a significant part of the relevant public. Moreover, most of the evidence is dated long before the relevant point in time (before 2011). Under these circumstances, even bearing in mind that the evidence must be looked at in its entirety, avoiding a piecemeal approach, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) 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

Vanessa PAGE

Birgit FILTENBORG

Valeria ANCHINI

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.