MSR engines | Decision 2612052 – MSR Technologies GmbH v. Martin Šula

OPPOSITION No B 2 612 052

MSR Technologies GmbH, Lindenmaierstr. 20, 88471 Laupheim, Germany (opponent), represented by Durm & Partner, Moltkestr. 45, 76133 Karlsruhe, Germany (professional representative)

a g a i n s t

Martin Šula, Masárova 5, 62800 Brno, Czech Republic (applicant), represented by Inpartners Group, Koliště 13a, 602 00 Brno, Czech Republic (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 612 052 is partially upheld, namely for the following contested goods and services:

Class 7: Motors, other than for land vehicles; Compressors; Parts of machines, motors or engines; Accessories for engines, including fuel systems, carburetters, injectors, injection nozzles; Fuel economisers for motors and engines; Fuel pumps and pumps for liquids and gases; Taps being parts of machines; Cocks [valves] of metal parts of machines; Slide valves; Speed governors for machines, engines and motors; Starter devices; Liquid and gas filters; Engine filling devices; Fans and compressors; Parts and accessories for motors, engines and generic machine parts; Engine clutches and transmissions, including components thereof, other than for land vehicles; Electric generators and alternators; Electric motors; Stators [parts of machines]; Machines for use in assembly; Automated assembly machines; Assembly presses; Machine tools

Class 9: Electronic, scientific and optical apparatus, used in particular in the automotive industry; Electronic equipment for machines with mechanical propulsion; Body-building apparatus; Instrumentation simulators; Checking, measuring and diagnostic equipment for motor vehicles; Steering apparatus, automatic, for vehicles; Measuring instruments; Quantity indicators; Quantity indicators; Speed meters; Speed meters; Tachometers; Distance measuring apparatus; Speed checking apparatus for vehicles; Revolution counters; Battery chargers; Chargers for electric batteries; Navigation apparatus for vehicles (on-board computers); Pressure measuring apparatus; Pressure measuring apparatus; Pressure regulators; Batteries, electric; Transformer; Electric couplings; Electric installations for the remote control of industrial operations; Electro-dynamic apparatus for the remote control of signals; Software relating to electrical, electronic and optical apparatus.

Class 12: Apparatus for locomotion by land, in particular land vehicles, land motor vehicles; Equipment for land transport; Single-tracked vehicles; Motorcycles and towing vehicles; Transport trolleys and spare parts and components and accessories therefor; Gearboxes; Apparatus for locomotion by air, in particular aircraft, balloons, hang gliders and spare parts and components and accessories therefor, in particular aircraft components, propellers, airframes; Apparatus for locomotion by water, especially boats, surfboards, yachts, inflatable boats, water scooters and spare parts and components and accessories therefor; Engines for motorised apparatus for locomotion and spare parts, structural components and accessories therefor, couplings, transmissions and tyres.

Class 40: custom production of means of transport and components therefor; custom production and installation of engines, parts and accessories therefor, apparatus for locomotion by land, air or water.

2. European Union trade mark application No 14 231 849 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 231 849, namely against all the goods and services in Classes 7, 9, 12 and 40. The opposition is based on European Union trade mark registration No 9 619 751. 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.

The goods and services

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

Class 7: Components for motors and engines, in particular turbocharger components, mass balancing systems, rotationally symmetric components, cubic components, precision turned parts, Shafts, Toothed wheels; Drive components, namely components for rear wheel drive, components for front wheel drive, components for transfer cases, rotationally symmetric components, cubic components, Valves, Precision turned parts, Flanges, Shafts, Differential gear housings, Toothed wheels; Vehicle parts, namely complex precision components for chassis and injection systems, namely diesel injection systems and petrol injection systems; Cubic components and rotationally symmetrical components for injection systems, including diesel injection systems and petrol injection systems; Modules and assemblies made from the aforesaid parts; None of the aforesaid goods for motorcycles.

Class 9: Safety components, namely harness system products, valves and control blocks being control components in motors, engines and drive trains; Roof system controls; Soft top controls; Electric regulating and control apparatus and instruments for security systems in vehicles; Electronic checking (supervision) and control apparatus in vehicles; Complex electric and electronic precision components for vehicle safety systems.

Class 12: Vehicle parts, namely gears, brakes, motors and engines; Chassis components, namely hydraulic control blocks for brakes and chassis, cubic components, rotationally symmetrical components; None of the aforesaid goods for motorcycles.

The contested goods and services are the following:

Class 40: Mechanical processing and maintenance of metals and plastics; Metalworking; Tool making; Machine metalworking; Joinery; Finishing and welding of metals; Custom metalworking; laser treatment of metal; Metal treating and sheet metal forming, machining, cutting, refining, bending; Galvanisation; Enamelling; Custom production of means of transport and components therefor; Custom production and installation of engines, parts and accessories therefor, electronic, scientific and optical apparatus, apparatus for locomotion by land, air or water; Custom assembling of materials for others; Custom assembling of materials; Processing and treatment of materials for engines, parts and accessories therefor, for electronic, scientific and optical apparatus, for apparatus for locomotion by land, air or water.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 compressors; parts of motors or engines; accessories for engines, including fuel systems, carburetters, injectors, injection nozzles; fuel economisers for motors and engines; fuel pumps and pumps for liquids and gases; engines and motors; starter devices; liquid and gas filters; engine filling devices; fans and compressors; parts and accessories for motors, engines; engine clutches and transmissions, including components thereof, other than for land vehicles are included in the broad category of, or overlap with, the opponent’s components for motors and engines, in particular turbocharger components, mass balancing systems, rotationally symmetric components, cubic components, precision turned parts, shafts, toothed wheels; none of the aforesaid goods for motorcycles. Therefore, they are identical.

The contested slide valves are included in the broad category of the opponent’s valves; none of the aforesaid goods for motorcycles. Therefore, they are identical.

The opponent’s drive components namely flanges, shafts, valves are machine parts used in various fields. Therefore, the contested parts of machines; generic machine parts include, as a broader category, or overlap with the opponent’s flanges, shafts, valves; none of the aforesaid goods for motorcycles. 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 motors, other than for land vehicles are similar to the opponent’s components for motors and engines, in particular turbocharger components, mass balancing systems, rotationally symmetric components, cubic components, precision turned parts, shafts, toothed wheels; none of the aforesaid goods for motorcycles, as they can have the same producer and relevant public. Furthermore, they are complementary.

The contested taps being parts of machines; cocks [valves] of metal parts of machines; stators [parts of machines]; speed governors for machines are similar to the opponent’s valves; none of the aforesaid goods for motorcycles, as they are all machine parts and can have the same producer, distribution channels and relevant public.

The contested electric generators and alternators; electric motors are similar to the opponent’s components for motors and engines, in particular turbocharger components, mass balancing systems, rotationally symmetric components, cubic components, precision turned parts, shafts, toothed wheels; none of the aforesaid goods for motorcycles. They are commonly distributed through the same trade channels and have the same commercial origin, since the manufacturer of components for motors and engines can also supply the contested goods. Finally, these goods target the same public. As a result, they are considered similar.

The contested machines for use in assembly; automated assembly machines; assembly presses; machine tools are similar to the opponent’s valves; none of the aforesaid goods for motorcycles, as they can have the same producer and relevant public. Furthermore, they are complementary.

Contested goods in Class 9

As a preliminary remark, with regard to some contested goods in Class 9, the English wording body-building apparatus requires some clarifications. Since the original wording in Czech reads ‘trenažéry’, the Opposition Division holds that there was a mistranslation and that it is clear, also considering the context in which the goods are mentioned, that the word ‘trenažéry’ in the applicant’s list of goods refers not to ‘body-building apparatus’ but to ‘simulators’.

The contested electronic, scientific and optical apparatus, used in particular in the automotive industry include, as broader categories, or overlap with the opponent’s electric regulating and control apparatus and instruments for security systems in vehicles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested checking, measuring and diagnostic equipment for motor vehicles; measuring instruments; quantity indicators; quantity indicators; speed meters; speed meters; tachometers; distance measuring apparatus; speed checking apparatus for vehicles; revolution counters; pressure measuring apparatus; pressure regulators overlap with the opponent’s electronic checking (supervision) and control apparatus in vehicles. Therefore, they are identical.

The contested steering apparatus, automatic, for vehicles is similar to the opponent’s vehicle parts, namely gears, brakes, motors and engines in Class 12, as they are all vehicle components and can have the same producer, distribution channels and relevant public.

The contested battery chargers; chargers for electric batteries; batteries, electric; transformer; electric couplings are similar to a low degree to the opponent’s electronic checking (supervision) and control apparatus in vehicles, as they can coincide in producer, relevant public and distribution channels.

The contested software relating to electrical, electronic and optical apparatus is similar to the opponent’s electronic checking (supervision) and control apparatus in vehicles. In fact, these goods are normally used in combination and in some cases the contested goods are indispensable for the operation of the opponent’s goods. They can have the same distribution channels and relevant public. Therefore, they are similar.

The contested electronic equipment for machines with mechanical propulsion are similar to a low degree to electronic checking (supervision) and control apparatus in vehicles, as they can have the same producer, relevant public and distribution channels.

The contested simulators; instrumentation simulators are devices designed to provide a realistic imitation of the controls and operation of a vehicle. They are similar to a certain extent to the opponent’s control apparatus in vehicles, as they can have the same producer and relevant public. Therefore, they are similar to a low degree.

The contested navigation apparatus for vehicles (on-board computers) are systems that help in navigation by communicating with a vehicle using radio or other signals and providing suggested directions, information on nearby vehicles or information on traffic conditions and alternative directions. They have some points in common with the opponent’s electric regulating and control apparatus and instruments for security systems in vehicles, as they support drivers in charge of vehicles with safe and comfortable navigation, and they can have the same producer and relevant public. Therefore, they are similar to a low degree.

The contested electric installations for the remote control of industrial operations; electro-dynamic apparatus for the remote control of signals have some points in common with the opponent’s electronic checking (supervision) and control apparatus in vehicles, as both have the purpose of control, albeit in different fields, and can have the same relevant public. Therefore they are similar to a low degree.

Contested goods in Class 12

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested apparatus for locomotion by land, in particular land vehicles, land motor vehicles; single-tracked vehicles; towing vehicles; apparatus for locomotion by air, in particular aircraft, balloons, hang gliders; apparatus for locomotion by water, especially boats, surfboards, yachts, inflatable boats, water scooters are similar to the opponent’s vehicle parts, namely gears, brakes, motors and engines, none of the aforesaid goods for motorcycles, as they can have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested equipment for land transport; transport trolleys and spare parts and components and accessories therefor; gearboxes; spare parts and components and accessories therefor [apparatus for locomotion by air, in particular aircraft, balloons, hang gliders], in particular aircraft components, propellers, airframes; spare parts and components and accessories therefor [apparatus for locomotion by water, especially boats, surfboards, yachts, inflatable boats, water scooters]; engines for motorised apparatus for locomotion and spare parts, structural components and accessories therefor, couplings, transmissions and tyres are identical or similar to the opponent’s vehicle parts, namely gears, brakes, motors and engines; none of the aforesaid goods for motorcycles, as some of these contested goods include, are included in or overlap with the opponent’s goods and others can have the same producers, relevant public and distribution channels as the opponent’s goods.

The contested motorcycles are similar to a low degree to the contested vehicle parts, namely gears, brakes, motors and engines, even if the aforesaid goods are not for motorcycles, as the goods can still have the same relevant public and distribution channels.

Contested services in Class 40

The contested custom production of means of transport and components therefor; custom production and installation of engines, parts and accessories therefor, apparatus for locomotion by land, air or water are similar to a low degree with the opponent’s vehicle parts, namely gears, brakes, motors and engines; none of the aforesaid goods for motorcycles in Class 12, as they can have the same relevant public and distribution channels.

The contested mechanical processing and maintenance of metals and plastics; metalworking; tool making; machine metalworking; joinery; finishing and welding of metals; custom metalworking; laser treatment of metal; metal treating and sheet metal forming, machining, cutting, refining, bending; galvanisation; enamelling; custom production and installation of electronic, scientific and optical apparatus, custom assembling of materials for others; custom assembling of materials; processing and treatment of materials for engines, parts and accessories therefor, for electronic, scientific and optical apparatus, for apparatus for locomotion by land, air or water are different from all the opponent’s goods in Classes 7, 9 and 12, since they have different natures, purposes and methods of use. Moreover, these services and goods are not in competition, nor are they complementary. Therefore, they are considered dissimilar.

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 relevant goods and services 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 (e.g. in relation to some kinds of battery charges) to high, given the significant financial impact of some of the goods (e.g. apparatus for locomotion by land; motorcycles; apparatus for locomotion by air).

The signs

MSR

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 is the word mark ‘MSR’. As a word mark, it has no dominant elements.

The contested sign is a figurative mark consisting of the verbal element ‘MSR’, written in slightly slanted bold upper case letters against an oval background of a purely decorative nature. Under the word ‘MSR’ are three rhombus-shaped elements and the word ‘engines’ in stylised black lower case letters. Due to their extremely small size, these verbal and figurative elements are overshadowed by the other verbal and figurative elements of the mark, to the extent that a relevant part of the public will not consider them relevant and will disregard them. The following comparison will focus on this part of the public.

The coinciding word element, ‘MSR’, has no meaning for the relevant public and, therefore, is considered distinctive in relation to the relevant goods and services.

Visually, the signs are similar to the extent that the earlier mark coincides entirely with the element ‘MSR’ of the contested sign. On the other hand, they differ in the figurative elements of the contested sign. As explained above, the oval background is merely decorative, so its impact on consumers is limited. The stylisation of the word elements of the contested sign is not elaborate or striking enough to prevent consumers from perceiving the words as such. Moreover, as consumers are well accustomed to the stylisation of verbal elements in marks, they will perceive such stylisation as merely a decorative depiction of the word elements.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘MSR’, present identically in both signs, and, thus, the marks are aurally identical.

Conceptually, the element ‘MSR’ has no meaning. 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.

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.

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.

Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s goods. The degree of attention may vary from average to high.

The signs are visually similar to a high degree and aurally identical, and the conceptual aspect does not influence the assessment of the similarity of the signs.

The figurative elements (i.e. the oval background and the stylisation of the letters of the contested sign) have a minor impact, as explained above in section c). This makes the commonality in the letters ‘MSR’ of the two marks particularly relevant.

In the light of the above, the Opposition Division finds that the dissimilarity caused by the additional figurative elements in the contested sign is outweighed by the similarity arising from the fact that the earlier sign is solely constituted by the letters ‘MSR’, which are fully reproduced in the contested sign. The high degree of visual similarity and the aural identity between the signs will induce the relevant public, even with a high degree of attention, to believe that the relevant goods and services, even those found to be similar to a low degree, come from the same undertaking, or at least from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 619 751.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to the goods of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Belén

IBARRA DE DIEGO

Angela DI BLASIO

Michele M.

BENEDETTI-ALOISI

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.

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