OPPOSITION No B 3 050 953

Kurt Manufacturing Company, Inc., 5280 Main Street N.E., 55421 Fridley, United States (opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 München, Germany (professional representative)

a g a i n s t

MPR GmbH & Co. KG, Adam-Krafft-Straße 8, 95615 Marktredwitz, Germany (applicant), represented by Augspurger Tesch Friderichs Patent- und Rechtsanwälte PartG mbB, Kaiserstrasse 39, 55116 Mainz, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 953 is upheld for all the contested goods.

2. European Union trade mark application No 17 551 912 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 17 551 912 for the word mark ‘KINETIC’. The opposition is based on international trade mark registration No 1 112 402 designating the European Union for the word mark ‘KINETIC’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK – PROCEDURAL ISSUE

The applicant claimed, in its observations in reply of 22/01/2019, that a violation of the right to be heard had occurred, as the fax transmission of the Notification to the applicant of facts, evidence and arguments presented in support of the opposition in accordance with Article 7(1) EUTMDR, dated 26/09/2018, was incomplete.

The Office informed the parties of this issue on 04/09/2019 and retransmitted by e-communication to the applicant the facts, evidence and arguments presented in support of the opposition. The applicant was set a time limit of two months, until 09/11/2019, to submit observations in reply. The applicant did not reply within the prescribed time limit.

Therefore, the Office will now take a decision on the merits on the basis of the evidence before it.

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 12: Structural parts for bicycles, namely, bicycle axle skewers and bicycle tires.

The contested goods are the following:

Class 12: Cycle saddles; bicycle seat posts; covers for handgrips of cycles; handle bars for bicycles, cycles; stems for bicycles.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods 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 contested goods are all parts, components or fittings of bicycles. They have some points in common with the opponent’s bicycle tires, in the sense that they are intended and used in relation to bicycles. They target the same end user (if including the Do-It-Yourself (DIY) market, which is relevant when it comes to bicycles) and it is not unusual for a manufacturer of bicycle tires to make and distribute other components and accessories for cycles and bicycles. Therefore, the goods at issue are similar, as they might have the same producers, relevant public and distribution channels.

2. The signs

KINETIC	KINETIC
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

In the present case, the signs under comparison are identical and the contested goods were found to be similar to those covered by the earlier mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 112 402 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

Justyna GBYL

Valeria ANCHINI

Meglena BENOVA

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.