OPPOSITION No B 2 553 041

Electrodomesticos Taurus S.L., Avenida Barcelona s/n, 25790 Oliana (Lleida), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Colombo Giovanni S.r.l., Via Cesare Battisti, 77, 21020 Daverio (VA), Italy (applicant), represented by GLP S.r.l., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 553 041 is upheld for all the contested goods, namely:

Class 7:        Machines for processing bitumen; Shear balers; Machines and installations for treating industrial and urban waste; Machines and installations for processing scrap metal; Presses [machines for industrial purposes]; Mills [machines]; Hammers [parts of machines]; Centrifugal mills; Waste compactors; Compressors [machines]; Foundry machines; Chisels for machines; Crushing machines; Crushing machines; Blade sharpening machines; Blade holders [parts of machines]; Basket presses; Shredders [machines] for industrial use; Shredders; Installations for treatment of ferrous and non-ferrous scrap metal waste.

2.        European Union trade mark application No 13 773 999 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 773 999, namely against all the goods in Class 7. The opposition is based on European Union trade mark registration No 3 786 662. The opponent invoked Article 8(1)(a) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (b) 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.

Pursuant to 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.

Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least a similarity between the signs and the goods/services and likelihood of confusion. Similarity covers situations where both the marks and the goods/services are similar and also situations where the marks are identical and the goods/services are similar, or vice versa.

1. The goods

The goods on which the opposition is based are 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; incubators for eggs.

The contested goods are the following:

Class 7:        Machines for processing bitumen; Shear balers; Machines and installations for treating industrial and urban waste; Machines and installations for processing scrap metal; Presses [machines for industrial purposes]; Mills [machines]; Hammers [parts of machines]; Centrifugal mills; Waste compactors; Compressors [machines]; Foundry machines; Chisels for machines; Crushing machines; Crushing machines; Blade sharpening machines; Blade holders [parts of machines]; Basket presses; Shredders [machines] for industrial use; Shredders; Installations for treatment of ferrous and non-ferrous scrap metal waste.

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 hammers [parts of machines]; chisels for machines; blade holders [parts of machines] are included in the broad category of the opponent’s machine tools. Therefore, they are identical.

An engine is ‘a machine with moving parts that converts power into motion’ (information extracted from English Oxford Living Dictionaries on 08/03/2017 at https://en.oxforddictionaries.com/definition/engine). A motor is ‘a machine, especially one powered by electricity or internal combustion, that supplies motive power for a vehicle or for another device with moving parts’ (information extracted from English Oxford Living Dictionaries on 08/03/2017 at https://en.oxforddictionaries.com/definition/motor). An installation refers to ‘a place that contains equipment and machinery which are being used for a particular purpose’ (information extracted from Collins Dictionary on 08/03/2017 at https://www.collinsdictionary.com/dictionary/english/installation). The contested machines for processing bitumen; shear balers; machines and installations for treating industrial and urban waste; machines and installations for processing scrap metal; presses [machines for industrial purposes]; mills [machines]; centrifugal mills; waste compactors; compressors [machines]; foundry machines; crushing machines (listed twice); blade sharpening machines; shredders [machines] for industrial use; shredders; installations for treatment of ferrous and non-ferrous scrap metal waste are all specific machines whose equipment uses an engine to do a particular kind of work. Therefore, they are similar to the opponent’s motors and engines (except for land vehicles), as they can have the same distribution channels and end users. The public may also expect them to be produced by, or under the control of, the same manufacturer. Furthermore, they are complementary.

The contested basket presses are used to extract juice or wine from grape skins. The opponent’s agricultural implements other than hand-operated are tools, utensils or other pieces of equipment that are used in the field of agriculture. These goods are complementary and target the same relevant public. Moreover, they may have the same distribution channels and the public may expect them to be produced by, or under the control of, the same manufacturer. Therefore, they are similar.

2. The signs

TAURUS	TAURUS
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The applicant argues that, in line with the judgment of 19/06/2012, C-307/10, ‘IP Translator’, the opponent’s machines and machine tools are contrary to the principles of ‘clarity’ and ‘precision’. While the Opposition Division agrees that the term machines is currently considered vague, it points out that the opponent’s machine tools is not considered vague, as is evident from the Common Communication on the Common Practice on the General Indications of the Nice Class Headings, 28/10/2015. Contrary to the applicant’s view and in accordance with the Office’s Guidelines (Part B: Examination, Section 3: Classification), the term machine tools complies with the requisites of clarity and precision and is therefore acceptable for classification purposes. Furthermore, machine tools are included in the harmonised database TMclass and in the alphabetical list of goods in the 11th edition of the Nice Classification (Basic No 070243). Moreover, the opponent’s goods have been compared applying the natural and usual meaning of the terms, without expanding the definitions to attributes that are not specifically mentioned. Therefore, the applicant’s argument shall be rejected.

In addition, the applicant argues that its EUTM application has reputation and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant also affirms that the opponent’s goods are related to household electrical appliances, such as blenders, mixers, electric juicers, etc., and are not linked to the applicant’s goods, which are related to, inter alia, metallurgy or scrap. Several documents have been submitted to support this interpretation. In this respect, it should be noted that the goods that are actually produced by the opponent are not relevant for the comparison of the goods. The comparison of the goods must be based on the wording indicated in the lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The signs are identical and some of the contested goods, namely hammers [parts of machines]; chisels for machines; blade holders [parts of machines], are identical to the opponent’s goods. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods, namely machines for processing bitumen; shear balers; machines and installations for treating industrial and urban waste; machines and installations for processing scrap metal; presses [machines for industrial purposes]; mills [machines]; centrifugal mills; waste compactors; compressors [machines]; foundry machines; crushing machines (listed twice); blade sharpening machines; basket presses; shredders [machines] for industrial use; shredders; installations for treatment of ferrous and non-ferrous scrap metal waste, are similar to those covered by the earlier trade 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 also for these goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Anna MAKOWSKA

Carlos MATEO PÉREZ

Denitza STOYANOVA-VALCHANOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.