OPPOSITION No B 3 092 269

Zhangjiagang Guangda Special Material Co., Ltd., Zhangjiagang City, Langanqiao Development Zone, Fenghuang Town, 215614 Zhangjiagang City, People’s Republic of China (opponent), represented by Riechelmann & Carlsohn Patentanwälte PartG mbB, Wiener Str. 91, 01219 Dresden, Germany (professional representative)

a g a i n s t

Shenzhen wan guang da trading Co. Ltd., Room 201, Building A, no.1 Qianwan First Road, Qianhai Shenzhen-Hong Kong Cooperation Zone, Shenzhen, People’s Republic of China (applicant), represented by AL & Partners s.r.l., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 13/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 269 is upheld for all the contested goods.

2. European Union trade mark application No 18 090 017 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 18 090 017 for the figurative mark . The opposition is based on the European Union trade mark No 10 329 381 for the word mark ‘Guangda’. 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; wind generators, windmills for power generation; wind turbines.

Class 12: Vehicles and vehicle parts, included in Class 12; apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 7: Earth moving machines; power-operated jacks; packaging machines; pumps; bulldozers; mixing machines; whitewashing machines; stone working machines; mixers [machines]; handling apparatus for loading and unloading; conveyors [machines]; trimming machines; metalworking machines; handling machines, automatic [manipulators]; agricultural machines; spinning frames; food preparation machines, electromechanical; bottle washing machines; engraving machines; stitching machines; washing machines [laundry]; knives, electric; dynamos; condensing installations; waste disposals; filtering machines.

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 dynamos are, generally speaking, machines for generating electricity and they include, as a broad category, or at least overlap with, the opponent’s wind generators. 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 agricultural machines are highly similar to the opponent’s agricultural implements other than hand-operated. Companies specialised in producing agricultural machines also usually produce agricultural implements. These goods have a similar purpose, target the same relevant public and will be distributed through the same distribution channels: stores offering for sale agricultural equipment. In addition, they are complementary since there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that they have the same producer.

The contested pumps are highly similar to the opponent’s vehicle parts in Class 12, since they usually coincide in producer (companies specialised in producing machine pumps also often produce vehicle pumps and other vehicle parts), relevant public and distribution channels. Furthermore, they are complementary.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the category machines in Class 7 lacks the clarity and precision to specify the scope of protection given as it does not provide a clear indication of what machines are covered. Machines can have different characteristics or different purposes: they may require very different levels of technical capabilities and know-how to be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

The dictionary definition of ‘machines’ defines a machine as ‘a piece of equipment which uses electricity or an engine in order to do a particular kind of work’ (information extracted from Collins English Dictionary on 01/07/2020 at https://www.collinsdictionary.com/dictionary/english/machine).

When comparing the contested earth moving machines; power-operated jacks; packaging machines; bulldozers; mixing machines; whitewashing machines; stone working machines; mixers [machines]; handling apparatus for loading and unloading; conveyors [machines]; trimming machines; metalworking machines; handling machines, automatic [manipulators]; spinning frames; food preparation machines, electromechanical; bottle washing machines; engraving machines; stitching machines; washing machines [laundry]; knives, electric; condensing installations; waste disposals; filtering machines to the opponent’s machines, their nature can be considered the same (machines). Their purpose is also the same in the very broadest sense of the word, that is to say, that they ‘do a particular kind of work’, and to that extent these goods are considered similar to a low degree. In the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use coincide, that they share the same distribution channels or that they are in competition or complementary.

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.

In the present case, the goods found to be identical and similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Guangda
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). 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 of the signs are meaningless in certain territories, for example in those countries where Dutch and French are spoken. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch- and French-speaking parts of the public.

The earlier mark is a word ‘Guangda’, which has no meaning for the relevant public and is, therefore, distinctive.

The contested sign contains the verbal elements ‘wan guang da’ depicted in standard grey lower-case letters, which have no meaning for the relevant public and play an independent distinctive role. Above these verbal elements is a black figurative device that appears to be characters of an Asian language (e.g. Chinese, Japanese or another language where such logograms are used). Above it, there is a figurative device of four curved red lines, which has an essentially ornamental nature and does not convey any obvious concept. Therefore, it has a lesser impact than the verbal elements ‘wan guang da’.

The vast majority of the Dutch- and French-speaking public are unable to read and interpret characters of any Asian languages. Since these scripts as a whole are illegible for the relevant public and consumers cannot read or pronounce them, or link them to any specific meaning, they are likely to be perceived as abstract figurative elements. Indeed, the relevant public will not be able to verbalise these characters of the contested sign, nor will they be easily memorised because they are graphically complex and the relevant public as a whole is not accustomed to Asian scripts. Therefore, it is likely that the relevant public will assume that the Asian characters at issue refer to the transliteration of the expression below them, which is written in Latin characters. Consequently, those elements, being unreadable and unmemorable per se, possess a lower-than-average distinctive character and have a lower impact for the consumer than the verbal elements, ‘wan guang da’.

In addition, 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). Consequently, and despite being fairly large in size, the abstract figurative device of the contested sign will also be afforded less trade mark significance by consumers than the verbal elements, ‘wan guang da’, which they will use to refer to the sign and to the respective goods.

The contested sign has no element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the last two verbal elements, ‘guang’ and ‘da’, of the contested sign, which are reproduced in the earlier mark as one verbal element, ‘Guangda’. They differ in the verbal element ‘wan’, placed at the beginning of the contested sign, which has no counterpart in the earlier mark. In addition, they differ in the red figurative device and the Asian characters of the contested sign. However, these elements have less trade mark significance and impact than the verbal elements depicted in Latin characters, due to their ornamental nature (the figurative device) or because they consist of characters that the public will probably interpret as a transliteration of the sign’s verbal elements into an unknown alphabet.

Therefore, despite their differing lengths and taking into account the abovementioned differences and similarities between the conflicting signs, they are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GUANGDA’ present identically in both signs. The pronunciation differs in the sound of the letters ‛WAN’ of the contested mark, which has no counterpart in the earlier mark. The figurative elements of the contested sign are not subject to a phonetic assessment.

Therefore, the signs are similar to an above-average degree.

Conceptually, as specified above, neither of the signs has a meaning for the public in the relevant territory taken into consideration. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. The opponent claimed that the distinctiveness of the earlier mark is at least average as it has no elements that are descriptive for the registered goods. However, it should be recalled that a mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

The opponent did not submit any evidence of enhanced distinctiveness of the earlier mark. 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.

e) Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the trade mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and similar to varying degrees. The signs are visually similar to a below-average degree and aurally similar to an above-average degree. The conceptual aspect does not influence the assessment of similarity between the signs. The attention of the public (the public at large and business customers) varies from average to high, and the earlier mark enjoys a normal degree of distinctiveness.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

All the letters of the earlier mark ‘Guangda’ are incorporated in the contested sign’s verbal elements ‘wan guan da’. Although the public may perceive certain differences between the marks, in particular the contested sign’s additional word ‘wan’ and its figurative elements, likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings. Therefore, even if the marks were not directly confused with one another, there is a likelihood of confusion, for the purposes of Article 8(1)(b) EUTMR, when average consumers, although aware of the differences between the signs, nevertheless assume, owing to the common verbal elements ‘guang’ and ‘da’, that they are derived from the same undertaking or economically linked undertakings.

The relevant goods in Class 7 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional verbal and figurative elements. This may be to differentiate between various types and/or intended purpose of the machines, machine tools and the other related goods. Indeed, due to the use of the identical elements ‘guang’ and ‘da’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, or a new version of the earlier mark, configured in a different way according to the type of goods that it designates and/or stylised with a new ornamental figurative element.

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). In the present case, the low degree of similarity of some goods is offset by the fact that the signs are aurally similar to an above-average degree and the earlier mark is entirely reproduced as the second and third verbal elements of the contested sign. In addition, there are no concepts conveyed by either sign that might assist consumers in distinguishing between them.

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association, on the part of the French- and Dutch-speaking public. 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 and, consequently, it is not necessary to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 329 381. 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, 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

Patricia LOPEZ FERNANDEZ DE CORRES

Jakub MROZOWSKI

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.