OPPOSITION No B 2 509 928

Kuka Aktiengesellschaft, Zugspitzstr. 140, 86165 Augsburg, Germany (opponent), represented by Birgit Maneth, Brienner Straße 29, 80333 München, Germany (professional representative)

a g a i n s t

Francesc Busquets Febrer, C/ Rector Ubach, 12-3º-2ª, 08021 Barcelona, Spain, Hans Bäbler Font, C/ Rosari, 55-4º- A, 08017 Barcelona, Spain, Ingenieria Magnética Aplicada S.L.U., Avda. Rafael Casanova 114, 08100 Mollet Del Valles, Spain (applicants), represented by R. Volart Pons Y Cia. S.L., Pau Claris 77 2º1ª, 08010 Barcelona, Spain (professional representative).

On 25/08/2015, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 509 928 is partially upheld, namely for the following contested goods and services:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; digital tablets, electronic tablets; electromagnetic coils.

Class 12:        Parts and fittings for vehicles; parts and fittings for land vehicles.

Class 35:        Retailing in shops and via global telematic networks of vehicle parts, land vehicle parts.

2.        European Union trade mark application No 13 532 353 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 13 532 353 ‘KUKACLIP’, namely against some of the goods and services in Classes 9, 12 and 35. The opposition is based on German trade mark registration No 302 013 019 170 ‘KUKA’. 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.

1. The goods and services

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

Class 6:        Ironmongery and small items of metal hardware; metal pipes; transportable buildings of metal, particularly scaffoldings for construction; products building materials made of metal (included in class 6), pipe fittings of metal; foundry molds; clamps and clamp body (of metal); forming molds.

Class 7:        Machine tools, machinery for gripping, moving and positioning of machine parts and/or tools; machines for machining operations of machine and engine parts, in particular crankshafts, crankcases, cylinder heads; shaping machines, in particular forming machines and machines for molding by differential pressure; machines for joining sheet metal, plastics and other materials, in particular welding presses, riveting machines, assembling machines, folding machines, screwing machines, press-in machines, machines for applying and filling of adhesive, sealant or coating materials, welding machines, in particular, resistance welding machines, projection welding machines, spot welding machines, arc welding machines, friction welding machines, inert gas welding machine, welding machine according to the principle of magnetically impelled arc, laser welding machines, laser cutting machines, machinery for transportation and promotion, particularly conveyor belts, slat conveyors, roller conveyors, chain, pushing and vibrating conveyors, pneumatic and hydraulic conveying devices; machinery for editing or processing of synthetic fibers or carbon fibers, machinery for processing and manufacturing of solar panels; robots [machines] for separating, joining and comissioning, palletising, cutting, assembling, painting, coating, bonding, welding, milling, deburring, grinding and polishing; robots [machines] for fairground rides and amusement parks; service robots [machines], in particular for cleaning and monitoring tasks; robots [machines] for use for medical purposes, in particular for positioning and guiding medical measurement and diagnostic equipment, for positioning and guiding individuals with diagnosis and treatment, for positioning and guiding medical treatment instruments such as surgical instruments, as well as positioning and guiding of body limbs In the context of rehabilitation measures; mobile platforms (machine parts), particularly for the movement of industrial and service robots; machinery parts, especially engines (except for land vehicles), couplings (for land vehicles), work piece carriers for the aforementioned conveyor equipment and systems, tool changers, automatic devices for rotation, turning, lifting and transfer and machine-driven devices for holding, clamping and gripping of work pieces, hydraulic power units, machines and apparatus for connecting and coupling the machines, operation facilities for the aforesaid machines; accessory items for the aforesaid machines, especially welding cylinders, welding presses, welding electrodes, holders for welding electrodes, mechanical rotary tables and rotary drums, machine welding wire feeders, cable assemblies, welding torches; welding guns, electric motor-driven welding guns; mechanically operated tapping machines; facilities, primarily consisting of the aforementioned machines and/or robots; facilities for metal and plastic processing, in particular for the production and assembly of body, chassis, drivetrain, engines, transmissions and parts thereof; welding systems, mainly consisting of the aforementioned welding machines, transportation and clamping devices as well as industrial or welding robots for performing welding operations, especially on vehicle parts, home appliances and high-volume products; riveting systems; work piece simulation devices as parts or accessories of the aforesaid machines; electric welding devices.

Class 8:        Hand-operated tools for the construction of machinery, apparatus and vehicles; assembly tools, hand-operated assembly devices and hand-operated devices for holding, clamping and gripping of work pieces, as far as included in class 8.

Class 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating, controlling and distributing electricity, particularly for the control and regulation of machines, especially of manufacturing systems, robots, mobile platforms and tools; apparatus and instruments for testing, in particular test benches compiled thereof: computer, particularly for controlling, regulating and simulation of industrial facilities, robots, mobile platforms and tools; computer programs (stored), in particular for controlling, regulating and simulation of machines and tools, computer programs [downloadable], in particular for controlling, regulating and simulation of industrial facilities, robots, mobile platforms and tools; measuring instruments; electrical/electronic control units for machines and tools; machines for measuring and/or checking; welding transformers, welding rectifiers.

Class 12:        Vehicles and parts for vehicles, especially body panels, doors, flaps; apparatus for locomotion by land, air or water; transport vehicles and transport equipment included in Class 12, namely, floating conveyors, floor conveyors, material handling equipment, included in class 12; automatic guided vehicles, particularly for the movement of industrial and service robots; mobile platforms (dolly), particularly for the movement of industrial and service robots.

Class 20:        Plastic storage shelves; storage racks of metal for the automobile, automotive and aerospace industry.

Class 37:        Service, maintenance and repair services, namely maintenance and repair of the aforementioned goods (excluding software); repair information, in particular remote diagnosis for robots; installation work, including assembly, installation and initiation of machinery, machinery parts and industrial facilities; rental of robots.

Class 40:        Material processing.

Class 41:        Operation of a training center for robotics and automation technology; education in robotics and automation technology through classroom training, online training (web-based training) and/or virtual classroom (Campus) for different target groups through which people technically qualify in robotics and automation technology, in particular plant designers, programmers, machine operators, service technicians; measuring, documentation and confirmation of acquired expertise through the aforementioned training on behalf of the robot manufacturer or the machine manufacturer or plant engineering by theoretical and/or practical expert examinations and awarding of certificates.

Class 42:        Design of customized computer hardware and software; installation and maintenance of computer software; calibration and function testing of measuring instruments, technical advice, engineering services, particularly in the planning, design, development and construction of automated production systems, planning and development of assembly lines and assembly plants and implementing technical function tests including test runs for the proper commissioning of these assembly plants; materials and material testing; construction planning, technical project planning.

The contested goods and services are the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Data processing equipment and computers; Digital tablets, electronic tablets; Electromagnetic coils.

Class 12:        Parts and fittings for vehicles; Parts and fittings for land vehicles.

Class 35:        Retailing in shops and via global telematic networks of vehicle parts and accessories, land vehicle parts and accessories; Import and export services; trade; Commercial or industrial management assistance; Business organisation and management consultancy, in particular in relation to franchises.

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

The term ‘in particular’, used in the applicant’s and the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 9

The contested measuring, checking (supervision) apparatus and instruments overlap with the opponent’s machines for measuring and/or checking. Therefore, they are identical.

Electromagnetic coils are electrical conductors such as wires in the shape of a coil, spiral or helix and therefore they are included in the opponent’s broad category of apparatus and instruments for conducting, switching, transforming, accumulating, regulating, controlling and distributing electricity. These goods are identical. 

The contested scientific, nautical, surveying, optical, weighing, signalling apparatus and instruments have some relevant points in common with the opponent’s apparatus and instruments for testing, in particular test benches. These goods may serve the same purpose which is checking/testing. They can have the same distribution channels and relevant public. Therefore, they are similar. 

The contested photographic, cinematographic apparatus and instruments contain nowadays software and, therefore, these goods have some points of contact with the opponent’s computer programs (stored). They can coincide in producer, end user and distribution channels. Consequently, they are similar. 

The contested apparatus for recording, transmission or reproduction of sound or image; data processing equipment and computers; digital tablets, electronic tablets are similar to the opponent’s computer programs (stored). The goods are all related to the IT field and can be considered to have a similar purpose in that they are used to transfer data in the form of text, images, sounds or other media via computer. The goods under comparison can coincide in distribution channels and end users. Furthermore, they are complementary.

The contested magnetic data carriers, recording discs are similar to a low degree to the opponent’s computer programs (stored) as these goods may be produced by the same manufacturer. Furthermore, they may be complementary.

The remaining contested life-saving and teaching apparatus and instruments have different nature, purpose and methods of use compared to all the opponent’s goods in Classes 6, 7, 8, 9, 12 and 20. They have different purpose, methods of use, consumers, producers and distribution channels. Therefore, these goods are dissimilar.

A fortiori, these goods are also dissimilar to the opponent’s services in Classes 37, 40, 41 and 42. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent’s services refer to maintenance and repair services, material processing services, education and IT services. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Contested goods in Class 12

The contested parts and fittings for vehicles; parts and fittings for land vehicles are identical to the opponent’s parts for vehicles.

Contested services in Class 35

The contested retailing in shops and via global telematic networks of vehicle parts, land vehicle parts are similar to a low degree to the opponent’s parts for vehicles.

The remaining contested services in Class 35 are dissimilar to all the opponent’s goods and services.

The contested retailing in shops and via global telematic networks of vehicle accessories, land vehicle accessories and the opponent’s goods in Classes 6, 7, 8, 9, 12 and 20 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. They are also dissimilar to the opponent’s services in Classes 37, 40, 41 and 42 which refer to maintenance and repair services, material processing services, education and IT services. They differ in their nature and purpose. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

The contested import and export services are not considered to be a sales service and thus cannot be subject to the same arguments as the comparison of goods with retail services. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. When comparing these contested services with the opponent’s services in Classes 37, 40, 41 and 42, the Opposition Division finds them dissimilar. The opponent’s services refer to maintenance and repair services, material processing services, education and IT services. They differ in their nature and purpose. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

Furthermore, these services also have nothing relevant in common with the opponent’s goods in Classes 6, 7, 8, 9, 12 and 20. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

The contested trade or commerce, involves the transfer of goods or services from one person or entity to another, often in exchange for money. When comparing these contested services with the opponent’s services in Classes 37, 40, 41 and 42, the Opposition Division finds them dissimilar. The opponent’s services refer to maintenance and repair services, material processing services, education and IT services. They differ in their nature and purpose. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

These services also have nothing relevant in common with the opponent’s goods in Classes 6, 7, 8, 9, 12 and 20. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

The remaining contested commercial or industrial management assistance; business organisation and management consultancy, in particular in relation to franchises fall under the category of business services. These services are performed to organise and run a business. When comparing these contested services with the opponent’s services in Classes 37, 40, 41 and 42, the Opposition Division finds them dissimilar. The opponent’s services refer to maintenance and repair services, material processing services, education and IT services. They differ in their nature and purpose. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

A fortiori, these services also have nothing relevant in common with the opponent’s goods in Classes 6, 7, 8, 9, 12 and 20. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

2. 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 and services found to be identical or similar to various 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 and services, the frequency of purchase and their price.

3. The signs

KUKA	KUKACLIP
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs are word marks.

It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The word ‘KUKACLIP’ of the contested sign, considered as such, has no clear meaning for the relevant public, however, it is likely that the relevant public will perceive the English term ‘CLIP’ in its second part as an equivalent word of its German version ‘Klipp’, inter alia, as ‘a device with two parallel sides, that is specially shaped for holding things together’ (consulted on 16/08/2017 at http://www.duden.de/suchen/dudenonline/Clip).

The word ‘KUKA’ is meaningless in the relevant territory and is, therefore, normally distinctive in relation to the goods and services in question.

The marks have no element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘KUKA’, which constitutes the earlier mark and plays an independent and distinctive role at the beginning of the contested sign. The signs differ in the additional word ‘CLIP’ of the contested sign.

As mentioned above, the beginning of the contested sign ‘KUKA’ coincides with the earlier mark. In this context, it is important to notice that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, since the signs coincide in the normally distinctive element ‘KUKA’ and, as mentioned above, the differentiating element ‘CLIP’ is placed at the end of the contested sign the signs are visually similar to an average degree.

Aurally, the contested sign will be pronounced in three syllables (‘KU-KA-KLIP’). The first two syllables (‘KU-KA’) are aurally identical to the earlier mark. The signs differ phonetically in the sound of the last syllable of the contested sign.

Therefore, there is an average degree of aural similarity between the marks, considering that the most conspicuous part of the contested sign, KU-KA, reproduces the earlier mark entirely.

Conceptually, the public in the relevant territory will be aware of the semantic content of the element ‘CLIP’ of the contested sign, whereas the earlier mark has no meaning.

Consequently, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
The goods and services target the general public and a professional public and the degree of attention varies from average to high. In this regard, it must be remembered, however, that 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).

In the present case, the contested goods and services at issue are identical, similar (including similar to a low degree) and dissimilar to the ones covered by the earlier mark.

The signs are visually and aurally similar to an average degree. It should be noted that the coinciding element ‘KUKA’ is considered distinctive to a normal degree in relation to the goods and services in question. Moreover, this element will be clearly perceived in the beginning of the contested sign, as it forms its initial two syllables and is followed by a meaningful term. The differentiating element ‘CLIP present in the contested sign introduces a certain difference between the marks, but this is not enough to dispel the likelihood of confusion, as explained below.

The public will pay more attention to the initial element ‘KUKA’ of the contested sign, as the beginning of the word marks is their most conspicuous part and the one which will first catch the attention of the consumers.

Furthermore, Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested trade mark, ‘KUKACLIP’, is a new brand line, a new model or a recent development under the opponent’s mark, considering that it will be applied to goods and services which are identical or similar to those marketed under the ‘KUKA’ brand.

Considering all the above, the Opposition Division finds that the difference between the signs is not sufficient to counteract the similarity resulting from the coinciding distinctive element ‘KUKA’ and that there is a likelihood of confusion, in the form of a likelihood of association, on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 013 019 170. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical and similar (including similar to a low degree) to the ones covered by the earlier mark  

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and 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 will 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

Francesca CANGERI SERRANO

Monika CISZEWSKA

Gueorgui IVANOV

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.