OPPOSITION DIVISION
OPPOSITION No B 2 836 560
Rotork PLC, Rotork House, Brassmill Lane, Lower Weston, Bath BA1 3JQ, United
Kingdom (opponent), represented by Wynne-Jones, Laine & James LLP, Essex
Place, 22 Rodney Road, Cheltenham, Gloucestershire GL50 1JJ, United Kingdom
(professional representative)
a g a i n s t
Foshan Nanhai Lei Te Automotive Parts Co. Ltd., Zhennan Road, Xizi Industrial
Zone, He Cun, Lishui Town, Nanhai Dist., Foshan, Guangdong, People’s Republic of
China (applicant), represented by Guy Delhaye, 2, rue Gustave de Clausade, 81800
Rabastens, France (professional representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 836 560 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 703 564 for the figurative mark . The opposition is based
on European Union trade mark registration No 13 756 002 for the figurative mark
. 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
Decision on Opposition No B 2 836 560 page: 2 of 5
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 and services
The goods and services on which the opposition is based are the following:
Class 7: Actuators; servo-valves; control and regulating valves; hydraulic valves;
pressure valves; power operated valves; mechanical valves; pneumatic
valves; slide, stop and shutter valves; industrial process controllers
(pneumatic); dampers (parts of machines); actuators for dampers; anti-
vibrating mountings for machines; gears other than for vehicles; gear
assemblies, gear boxes, gear couplings, gear transmissions and gear
cases, other than for land vehicles; clutches; pressure reducers; spindles;
bearing to shaft locking devices; locking devices for actuators and
mechanical valves; mechanical regulators; pressure regulators; pneumatic
regulators; vacuum regulators; flow controllers and regulators; boosters;
volume boosters; pressure boosters; pneumatic air volume booster; filters;
oil filters; lubricant filters; drum filters; manifolds.
Class 9: Measuring, detecting, signalling and monitoring instruments, indicators and
controllers; electric and electronically controlled valves; electric control and
regulating valves; solenoid valves; gauges; sensors and detectors;
monitoring sensors; modulating sensors; switches, binary switches for
pressure, delta pressure, temperature, humidity, gases, mists, vapour and
dust; electric switch boxes; regulators (electronic); safety and releasable
locking devices (electric); relays; pneumatic relays; transducers; parts of
the mentioned above appliances, devices and instruments; electric data
processing equipment, in particular apparatus for the input, transmission,
storage and output of data; data processing programs and software;
integrated circuits and semiconductors.
Class 37: Maintenance and service of control and fail safe apparatus and
installations, including valves, motorised valves and light mechanisms for
use in pipelines and channels, particularly in the chemical, petrochemical,
water and waste and power generating industries; maintenance and
service of control and fail safe apparatus and installations for industrial
processes; maintenance and service of electronic assemblies and
industrial processes; maintenance and service of control apparatus and
installations including electrical/electronic means for controlling the
operating of moveable equipment and mechanisms, including valves,
motorised valves and light mechanisms for use in pipelines and channels,
and parts and fittings for the aforesaid goods.
The contested goods, after the limitation dated 5/06/2017, are the following:
Class 7: Pumps (parts of machines, engines or motors); valves (parts of machines);
compressed air machines.
Some of the contested goods are identical to goods on which the opposition is
based. For reasons of procedural economy, the Opposition Division will not
undertake a full comparison of the goods and services listed above. The examination
Decision on Opposition No B 2 836 560 page: 3 of 5
of the opposition will proceed as if all the contested goods 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.
In the present case, the goods assumed to be identical to the earlier mark’s goods
are directed at business customers with specific professional knowledge or expertise
in the field of mechanics. 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
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).
Neither of the two signs has a meaning, at least for a significant part of the public in
the relevant territory. Consequently, the element ‘YTC’ of the earlier mark and ‘LTC’ of
the contested sign are considered distinctive. The marks have no elements which
could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘TC’, whereas differ in their first letters, i.e.
‘Y’ of the earlier mark vs ‘L’ of the contested sign. Moreover, the marks differ in the
colours of the earlier mark, as well as in the additional figurative devices placed on
the top of the letter ‘Y’ of the earlier mark and at the bottom of the contested sign,
respectively. Regarding the typeface in which the verbal elements of the marks under
comparison are written, their stylisation is fairly standard and will not lead the
consumer’s attention away from the elements they seem to embellish.
It should be pointed out that the length of the signs may influence the effect of the
differences between them. The shorter a sign, the more easily the public is able to
perceive all of its single elements. Therefore, in short words small differences may
frequently lead to a different overall impression.
Decision on Opposition No B 2 836 560 page: 4 of 5
Therefore, 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 coincides in the sound of the letters
‛TC’, present identically in both signs, whereas differ in the sound of first letters ‘Y’ vs
‘L’, respectively.
In light of the above said, the signs are aurally similar to a low degree.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. 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 to a low degree 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 mentions that its company is the market leader in the manufacture of
valves and actuators controlling the flow of gases and liquids, that one of its
subsidiaries is known by the acronym of its company name ‘YTC’ and that this
company has over twenty years’ experience of manufacturing the above-mentioned
valves. Despite these general comments concerning the activities of the opponent’s
company and its subsidiary, the opponent did not clearly and 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.
e) Global assessment, other arguments and conclusion
The contested goods were assumed to be identical to the earlier mark’s goods, and
the relevant public’s level of attention varies from average to high, meaning that
consumers will be more informed and observant for some of the goods at stake. The
earlier mark has a normal degree of distinctiveness. The signs are visually and
aurally similar to a low degree, with no conceptual meaning in either case.
The signs in dispute both have three letters; both are, consequently, short marks and
the fact that they differ in one letter is a relevant factor to consider when evaluating
the likelihood of confusion between the conflicting signs. The differing letters are
placed at the beginnings of the signs and they are not phonetically or visually similar.
Consequently, the fact that the signs coincide in the last two letters does not, by itself,
lead to a finding of likelihood of confusion and the Opposition Division considers that
the relevant public, displaying an average to high degree of attention, will be able to
safely distinguish the signs (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).
Moreover, the marks differ in the additional graphic representation, which makes the
signs visually even less similar.
Decision on Opposition No B 2 836 560 page: 5 of 5
Considering all the above, even assuming that the goods are identical, there is no
likelihood of confusion on the part of the public. Therefore, 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
Eva Inés PÉREZ
SANTONJA
Klaudia MISZTAL Vít MAHELKA
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.