OPPOSITION No B 2 754 748

SATA GmbH & Co. KG, Domertalstr. 20, 70806 Kornwestheim, Germany (opponent), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany, (professional representative)

a g a i n s t

New Jet s.r.l. unipersonale, Via Della Tecnica 5, 42015 Correggio, Italy (applicant).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 748 is partially upheld, namely for the following contested goods:

Class 7:         Pumps, compressors (listed twice); pump-motor assemblies; pumping apparatus [machines]; shafts for pumps; compressors [machines]; reciprocating compressors; axial flow compressors; centrifugal compressors; compressors as parts of machines, motors and engines; air compressors; screw air compressors; rotary air compressors; electric compressors; compressed air machines; electrical motor pump units; pump impellers; jets being parts of machines; ejectors [pumps]; diffusion pumps; diaphragm pumps; pumps [machines]; pistons for compressors; pump starters; engines for compressors; pressure multipliers for liquids; pressure intensifiers [machines]; pump diaphragms; axial pumps; rotary gear pumps; gear pumps; high pressure pumps; air pumps; screw pumps; vertical turbine pumps; self-regulating pumps [other than for the delivery of fuel at filling stations]; pressure pumps; diaphragm pumps for pumping semi-liquid material; rotary lobe pumps; diaphragm pumps for pumping liquid material; sludge pumps; distribution pumps; feed pumps; suction pumps; pumps for aerosols; pumps [parts of machines, engines or motors]; controlled volume pumps; electrical pumps; hydraulic pumps; servo-controlled hydraulic pumps; fluid pumping installations; volumetric rotating gear pumps; positive displacement pumps; drives for vacuum pumps; pneumatic pumps; vacuum pumps [machines]; rotary pumps; robotic compressed air pumps; valves for pumps; automatic inlet control valves for reciprocating air compressors; unloading check valves for the outlets of air compressors; filtering machines, separators and centrifuges; dispensing machines; coating machines; automatic dispensing machines; dispensing machines [other than vending machines]; line marking machines; road marking machines; road marking vehicles [machines].

2.        European Union trade mark application No 15 470 636 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 470 636, namely against all the goods in Class 7. The opposition is based on, inter alia, European Union trade mark registration No 7 243 801. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 7 243 801.

1. The goods

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

Class 7:        Paint spray guns and parts therefor, in particular nozzles and nozzle sets and paint reservoirs for paint spray guns.

The contested goods are the following:

Class 7:        Current generators; moving and handling equipment; sweeping, cleaning, washing and laundering machines; machines and machine tools for treatment of materials and for manufacturing; dispensing machines; engines, powertrains, and generic machine parts; pumps, compressors and fans; compressors; rams [machines]; pump-motor assemblies; hydraulic rams; pumping apparatus [machines]; piston rings for heat pumps; shafts for pumps; feeding apparatus for engine boilers; compressors [compactors] for waste collection vehicles; compressors [machines]; reciprocating compressors; axial flow compressors; compressors [compactors] for waste collection containers; centrifugal compressors; compressors as parts of machines, motors and engines; air compressors; screw air compressors; air compressors for vehicle compressed air systems; air compressors for vehicles; rotary air compressors; electric compressors; compressors for air conditioning apparatus; compressors for refrigerators; compressors for gases; compressors for recovering and recycling refrigerant gases; suction machines for scavenging purposes; compressed air machines; shaving exhaust installations; vacuum pump installations; water supply machines [pumps]; pump installations; basement draining installations; pumping station assemblies; electrical motor pump units; pump impellers; jets being parts of machines; gas generators [compressors] for undersea lifting; gas generators [compressors] for inflating rigid structures; gas generators [compressors] for inflating flexible structures; ejectors [pumps]; air condensers [compressors]; compressors for dehumidifying machines; compressors for supercharging internal combustion engines; diffusion pumps; diaphragm pumps; pumps [machines]; pistons for compressors; gas actuated rams; pump starters; engines for compressors; pressure multipliers for liquids; pressure intensifiers [machines]; pump diaphragms; forge bellows; air blowing machines; water extracting machines; fiber blowing machines; oil-well pumping machines; centrifugal pumps for condensing units; self-priming centrifugal pumps; centrifugal pumps; pumps being parts of washing machines; electric water pumps; axial pumps; reverse osmosis pumps; rotary gear pumps; gear pumps; high temperature pumps; air pumps [garage installations]; compressed air pumps; high pressure pumps; high-pressure pumps for washing appliances and installations; air pumps; screw pumps; vertical turbine pumps; self-regulating pumps [other than for the delivery of fuel at filling stations]; pressure pumps; diaphragm pumps for pumping semi-liquid material; rotary lobe pumps; diaphragm pumps for pumping liquid material; jet pumps for vacuum generation; sludge pumps; distribution pumps; circulating pumps; feed pumps; aerating pumps; aeration pumps for bodies of water; water pumps for land vehicles; water pumps for vehicles; water pumps for spa baths; water pumps for water filtering units; water pumps for swimming pools; water pumps for use in motors and engines; water pumps for showers; water pumps for baths; centrifugal water pumps for domestic purposes; water pumps for aerating aquaria; suction pumps; fuel pumps for land vehicle engines; aerating pumps for aquaria; electric water pumps for swimming pools; electric water pumps for spa baths; electric water pumps for baths; water pumps; pumps for heating installations; pumps for cooling engines; shower pumps; engine driven water pumps; pumps for aerating indoor aquariums; pumps for aerosols; aquarium pumps; multi-phase screw pumps; marine pumps; pumps for concrete; lubricating pumps; pumps [parts of machines, engines or motors]; bilge pumps; refrigerant recovery pumps; controlled volume pumps; electrical pumps; metered gasoline pumps; electric pumps for swimming pools; electrical pumps for ponds; submersible electric pumps; hydraulic pumps; servo-controlled hydraulic pumps; fluid pumping installations; volumetric rotating gear pumps; positive displacement pumps; submersible pumps; centrifugal blowers; rotary blowers; blowing machines for the compression, exhaustion and transport of gases; blowing machines or fans for the compression, sucking and carrying of grain; drives for vacuum pumps; industrial blowers; pneumatic pumps for the supply of liquefied gases; pneumatic pumps; vacuum pumps [machines]; rotary pumps; robotic compressed air pumps; compressing fans; axial flow blowers; valves for pumps; automatic inlet control valves for reciprocating air compressors; unloading check valves for the outlets of air compressors; waste management and recycling machines; filtering machines, separators and centrifuges; material production and processing machines; printing and bookbinding machines; coating machines; shaping and moulding machines; air screwdrivers; power-driven wrenches; precision screwdrivers (electric -); miniature screwdrivers (electric -); power-operated ratchet wrenches; nailing machines; staplers (electric -), other than for office use; tap ratchets [machines]; riveting hammers [powered tools]; screwing-in tools (electric -); tools (machine -) for use in binding hoses; gas-operated blow torches; screwing-in tools [machines]; crimping tools [machines or parts of machines]; riveting machines; power staplers; screwdriver bits for electric screwdrivers; screwdriver bits for machines; riveters [powered tools]; thermal binding machines [other than for office use]; nut splitters [machines]; power-operated rivet guns; needle pistols [machines]; pneumatic nail guns; setting presses [machines]; automatic dispensing machines; sprinkling devices [machines]; powder applying apparatus for printing machines; electronic feeders for animals; fuel dispensing pumps for service stations; machine operated glue dispensers; power-operated lubricant dispensers for machines; adhesive tape dispensers [machines]; single point grease dispensers (electric -); gumball machines; dispensing machines [other than vending machines]; lubrication machines; dry ice machines; artificial mist generating machines; glue guns, electric; artificial smoke generating machines; opening and closing mechanisms; conveyors and conveyors belts; packing machines; reciprocating feeders [machines]; envelope feeders; robotic apparatus for handling materials; robotic handling apparatus; handling apparatus for loading and unloading; feeding machines for presses; cargo handling machines; case loading machines; machines for loading; pallet stabilisation machines; tray handling machines; feeding machines; installations for the bulk handling of pulverulent materials; installations for the bulk handling of granular materials; dividing machines; air cushion devices for moving loads; depalletisers [machines]; sheeting grippers [machines]; self-propelled working baskets; stacking machines; robotic loaders for diffusion furnaces; loaders for packing goods; construction equipment; attachments for excavators; mining drill sharpeners; attachments for bulldozers; multiple shell grippers [machines]; loader buckets for excavators; tarring machines; road rolling [vehicles] machines; concrete mixers [machines]; asphalt paving machines; compacting machines; concrete construction machines; fixed machines for pressing asphalt; bitumen making machines; construction machines; road making machines; railroad constructing machines; concrete finishing machines; line marking machines; concrete paving machines; kerb making machines; pipe laying machines; tunnelling machines; road marking machines; tunnel boring machines; road marking vehicles [machines]; electric concrete vibrators; concrete vibrators; screeders [machines]; machines for mixing asphalt; pavement machines; roadway paving machines; satinizing machines; pavement profilers [machines]; pavement cutting power grinders; boring robots for repairing the interiors of pipes; boring robots for repairing the interiors of canalization pipes; pavement cutting power groovers; pavement cutting power saws; alternators; power supply apparatus [generators]; electrical generator stations; hydrodynamic screws; dynamos; bicycle dynamos; generators; solar power generators; portable electric power generators; high-voltage generators; direct current generators; wind-powered electricity generators; emergency power supply generators; gas operated power generators; electric power generators for emergency use; electrical generators using solar cells; diesel electric generators; electrostatic generators; mobile electrical power generators; generators for wind turbines; generators for land vehicles; uninterruptible power supplies [machines] for the generation of electrical energy; stators [parts of machines]; wind turbines; direct current generator brushes [parts of machines]; dynamo brushes; carbon brushes for alternators; carbon brushes [electricity]; brushes being parts of generators; brushes being parts of dynamos; engines for the generation of electricity; uninterruptible power supply generating machines; hydroelectric installations for generating electricity; power installations [generators]; electrical generator groups; emergency power generators; generating plant; agricultural, earthmoving, construction, oil and gas extraction and mining equipment; connecting rods for machines, motors and engines; connecting rods for machines; cam chains; roller chains being parts of machines; power transmission chains; chains, being engine timing components; automotive intake manifolds; intake manifolds for motors; intake manifolds for internal combustion engines; scale collectors for machine boilers; intake manifolds [vehicle parts]; driving belts, other than for land vehicles; drive belts for water vehicles; drive belts for driving aircraft; hydraulic circuits for machines.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 opponent’s paint spray guns are ‘apparatuses resembling a gun for applying a substance (such as paint or insecticide) in the form of a spray’ (information extracted from Merriam Webster Dictionary on 14/06/2017 at www.merriam-webster.com/dictionary/spray%20gun). Spray guns can be either automated or hand-held and have interchangeable heads to allow different spray patterns. They are composed of several specialised elements such as nozzles, paint reservoirs, various types of pumps and compressors. There are also numerous accessories used together with paint spray guns, for instance cleaning brushes and hoses.

The contested goods cover a very wide range of products in the field of construction works. These are either general terms such as pumps and current generators or terms specifying their purpose more precisely such as pneumatic nail guns, artificial mist generating machines and railroad constructing machines. Some of the contested goods can serve as independent products (e.g. roadway paving machines and concrete construction machines) or be components of larger items, for instance compressors as parts of machines, motors and engines, brushes being parts of dynamos or jets being parts of machines.

The mere fact that a certain product can be composed of several components does not establish an automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, are fulfilled.

Such an exception would require that parts and fittings be produced and/or sold, as they often are, by the same undertaking that manufactures the final product and that they target the same purchasing public as the final product, as in the case of spare or replacement parts. Depending on the product concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar. In general, a variety of factors may be significant in each particular case. For instance, if the component is also sold independently, or if it is particularly important for the functioning of the machine, this will weigh in favour of similarity.

It should be explained that pumps are parts of various goods, such as machines, engines or motors, and the comparison of the goods in question, with regard to pumps, concerns whether or not these pumps can be used as parts of paint spray guns. The same applies to compressors being parts of paint spray guns.

The contested dispensing machines; coating machines; automatic dispensing machines; dispensing machines [other than vending machines] include, as broader categories, or overlap with, the opponent’s paint spray guns and parts therefor, in particular nozzles and nozzle sets and paint reservoirs for paint spray guns. 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 pumps, compressors (listed twice); pump-motor assemblies; pumping apparatus [machines]; shafts for pumps; compressors [machines]; reciprocating compressors; axial flow compressors; centrifugal compressors; compressors as parts of machines, motors and engines; air compressors; screw air compressors; rotary air compressors; electric compressors; compressed air machines; electrical motor pump units; pump impellers; jets being parts of machines; ejectors [pumps]; diffusion pumps; diaphgram pumps; pumps [machines]; pistons for compressors; pump starters; engines for compressors; pressure multipliers for liquids; pressure intensifiers [machines]; pump diaphragms; axial pumps; rotary gear pumps; gear pumps; high pressure pumps; air pumps; screw pumps; vertical turbine pumps; self-regulating pumps [other than for the delivery of fuel at filling stations]; pressure pumps; diaphragm pumps for pumping semi-liquid material; rotary lobe pumps; diaphragm pumps for pumping liquid material; sludge pumps; distribution pumps; feed pumps; suction pumps; pumps for aerosols; pumps [parts of machines, engines or motors]; controlled volume pumps; electrical pumps; hydraulic pumps; servo-controlled hydraulic pumps; fluid pumping installations; volumetric rotating gear pumps; positive displacement pumps; drives for vacuum pumps; pneumatic pumps; vacuum pumps [machines]; rotary pumps; robotic compressed air pumps; valves for pumps; automatic inlet control valves for reciprocating air compressors; unloading check valves for the outlets of air compressors; filtering machines, separators and centrifuges are parts of paint spray guns. These goods are included in, or overlap with, the opponent’s goods. Therefore, they are identical.

The contested line marking machines; road marking machines; road marking vehicles [machines] are similar to the opponent’s paint spray guns. The purpose, distribution channels, end users and producers of these goods can coincide. They can also be complementary to each other.

The contested current generators; moving and handling equipment; sweeping, cleaning, washing and laundering machines; machines and machine tools for treatment of materials and for manufacturing; engines, powertrains, and generic machine parts; fans; rams [machines]; hydraulic rams; piston rings for heat pumps; feeding apparatus for engine boilers; compressors [compactors] for waste collection vehicles; compressors [compactors] for waste collection containers; air compressors for vehicle compressed air systems; air compressors for vehicles; compressors for air conditioning apparatus; compressors for refrigerators; compressors for gases; compressors for recovering and recycling refrigerant gases; suction machines for scavenging purposes; shaving exhaust installations; vacuum pump installations; water supply machines [pumps]; pump installations; basement draining installations; pumping station assemblies; gas generators [compressors] for undersea lifting; gas generators [compressors] for inflating rigid structures; gas generators [compressors] for inflating flexible structures; air condensers [compressors]; compressors for dehumidifying machines; compressors for supercharging internal combustion engines; gas actuated rams; forge bellows; air blowing machines; water extracting machines; fiber blowing machines; oil-well pumping machines; centrifugal pumps for condensing units; self-priming centrifugal pumps; centrifugal pumps; pumps being parts of washing machines; electric water pumps; reverse osmosis pumps; high temperature pumps; air pumps [garage installations]; compressed air pumps; high-pressure pumps for washing appliances and installations; jet pumps for vacuum generation; circulating pumps; aerating pumps; aeration pumps for bodies of water; water pumps for land vehicles; water pumps for vehicles; water pumps for spa baths; water pumps for water filtering units; water pumps for swimming pools; water pumps for use in motors and engines; water pumps for showers; water pumps for baths; centrifugal water pumps for domestic purposes; water pumps for aerating aquaria; fuel pumps for land vehicle engines; aerating pumps for aquaria; electric water pumps for swimming pools; electric water pumps for spa baths; electric water pumps for baths; water pumps; pumps for heating installations; pumps for cooling engines; shower pumps; engine driven water pumps; pumps for aerating indoor aquariums; aquarium pumps; multi-phase screw pumps; marine pumps; pumps for concrete; lubricating pumps; bilge pumps; refrigerant recovery pumps; metered gasoline pumps; electric pumps for swimming pools; electrical pumps for ponds; submersible electric pumps; submersible pumps; centrifugal blowers; rotary blowers; blowing machines for the compression, exhaustion and transport of gases; blowing machines or fans for the compression, sucking and carrying of grain; industrial blowers; pneumatic pumps for the supply of liquefied gases; compressing fans; axial flow blowers; waste management and recycling machines; material production and processing machines; printing and bookbinding machines; shaping and moulding machines; air screwdrivers; power-driven wrenches; precision screwdrivers (electric); miniature screwdrivers (electric -); power-operated ratchet wrenches; nailing machines; staplers (electric -), other than for office use; tap ratchets [machines]; riveting hammers [powered tools]; screwing-in tools (electric -); tools (machine -) for use in binding hoses; gas-operated blow torches; screwing-in tools [machines]; crimping tools [machines or parts of machines]; riveting machines; power staplers; screwdriver bits for electric screwdrivers; screwdriver bits for machines; riveters [powered tools]; thermal binding machines [other than for office use]; nut splitters [machines]; power-operated rivet guns; needle pistols [machines]; pneumatic nail guns; setting presses [machines];sprinkling devices [machines]; powder applying apparatus for printing machines; electronic feeders for animals; fuel dispensing pumps for service stations; machine operated glue dispensers; power-operated lubricant dispensers for machines; adhesive tape dispensers [machines]; single point grease dispensers (electric -); gumball machines; lubrication machines; dry ice machines; artificial mist generating machines; glue guns, electric; artificial smoke generating machines; opening and closing mechanisms; conveyors and conveyors belts; packing machines; reciprocating feeders [machines]; envelope feeders; robotic apparatus for handling materials; robotic handling apparatus; handling apparatus for loading and unloading; feeding machines for presses; cargo handling machines; case loading machines; machines for loading; pallet stabilisation machines; tray handling machines; feeding machines; installations for the bulk handling of pulverulent materials; installations for the bulk handling of granular materials; dividing machines; air cushion devices for moving loads; depalletisers [machines]; sheeting grippers [machines]; self-propelled working baskets; stacking machines; robotic loaders for diffusion furnaces; loaders for packing goods; construction equipment; attachments for excavators; mining drill sharpeners; attachments for bulldozers; multiple shell grippers [machines]; loader buckets for excavators; tarring machines; road rolling [vehicles] machines; concrete mixers [machines]; asphalt paving machines; compacting machines; concrete construction machines; fixed machines for pressing asphalt; bitumen making machines; construction machines; road making machines; railroad constructing machines; concrete finishing machines; concrete paving machines; kerb making machines; pipe laying machines; tunnelling machines; tunnel boring machines; electric concrete vibrators; concrete vibrators; screeders [machines]; machines for mixing asphalt; pavement machines; roadway paving machines; satinizing machines; pavement profilers [machines]; pavement cutting power grinders; boring robots for repairing the interiors of pipes; boring robots for repairing the interiors of canalization pipes; pavement cutting power groovers; pavement cutting power saws; alternators; power supply apparatus [generators]; electrical generator stations; hydrodynamic screws; dynamos; bicycle dynamos; generators; solar power generators; portable electric power generators; high-voltage generators; direct current generators; wind-powered electricity generators; emergency power supply generators; gas operated power generators; electric power generators for emergency use; electrical generators using solar cells; diesel electric generators; electrostatic generators; mobile electrical power generators; generators for wind turbines; generators for land vehicles; uninterruptible power supplies [machines] for the generation of electrical energy; stators [parts of machines]; wind turbines; direct current generator brushes [parts of machines]; dynamo brushes; carbon brushes for alternators; carbon brushes [electricity]; brushes being parts of generators; brushes being parts of dynamos; engines for the generation of electricity; uninterruptible power supply generating machines; hydroelectric installations for generating electricity; power installations [generators]; electrical generator groups; emergency power generators; generating plant; agricultural, earthmoving, oil and gas extraction and mining equipment; connecting rods for machines, motors and engines; connecting rods for machines; cam chains; roller chains being parts of machines; power transmission chains; chains, being engine timing components; automotive intake manifolds; intake manifolds for motors; intake manifolds for internal combustion engines; scale collectors for machine boilers; intake manifolds [vehicle parts]; driving belts, other than for land vehicles; drive belts for water vehicles; drive belts for driving aircraft; hydraulic circuits for machines are dissimilar to the opponent’s goods, namely paint spray guns and parts therefor, in particular nozzles and nozzle sets and paint reservoirs for paint spray guns. Their natures, purposes, producers and methods of use are different. Some of these goods also have different distribution channels and sales outlets. In addition, they are neither in competition with nor complementary to each other.

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 found to be identical and similar are specialised goods directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, as the goods in question are rather highly specialised goods that are purchased infrequently.

3. The signs

jet 20
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 a two-element word sign, ‘jet 20’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The contested sign is a figurative sign containing the verbal element ‘JET’, written in slightly stylised italic letters, all in upper case. In addition, it is composed of an arrow pointing upwards. The word ‘JET’ is placed on the arrowhead, and the arrow’s shaft is split into curved lines in its lower part.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘JET’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

The coinciding verbal element ‘JET’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive.

The numerical element ‘20’ of the earlier mark could be allusive, as it may inform the relevant consumers about the paint spray guns’ capacity. They could presume that the paint reservoir is 20 litres. This numerical element is therefore weak.

The figurative element of the contested sign depicting the arrow has no meaning for the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Neither of the signs under comparison has any elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the verbal element ‘JET’, which is distinctive. However, they differ in the numerical element ‘20’ of the earlier mark and the figurative element (i.e. the arrow) of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‛JET’, present identically in both marks. As explained above, this element is distinctive. The pronunciation differs in the sound of the number ‛20’ of the earlier sign, if pronounced, which has no counterpart in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, although part of the public in the relevant territory will perceive the meaning of the element of the earlier mark (i.e. ‘20’), as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As has been concluded above, some of the goods are identical or similar and the rest are dissimilar, and the signs are visually similar to an average degree and aurally highly similar. The signs are not conceptually similar. Furthermore, the earlier mark as a whole is of normal distinctiveness in relation to the relevant goods, and the relevant public’s attention can vary from average to high.

In addition, 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Even if the attention of the relevant public is high, the Opposition Division finds that the differing elements of the opposing mark, as explained above, cannot outweigh the similarities between the signs.

The first element, ‘jet’, of the earlier mark is identically included in the contested sign.

Consequently, the Opposition Division finds that the dissimilarities between the signs are insufficient to counteract the visual and aural similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking 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 7 243 801. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade mark. The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

– European Union trade mark No 6 339 915 for the word mark ‘jet 100’,

– European Union trade mark No 8 375 057 for the word mark ‘jet 100 B P’,

– European Union trade mark No 4 702 155 for the word mark ‘jet 1000’,

– European Union trade mark No 4 433 918 for the word mark ‘jet 3000’,

– European Union trade mark No 4 702 131 for the word mark ‘jet 4000’,

– European Union trade mark No 13 965 629 for the word mark ‘jet 4600’,

– European Union trade mark No 15 151 319 for the word mark ‘jet 4800’,

– European Union trade mark No 4 702 163 for the word mark ‘jet 5000’.

Since these marks are very similar (as they consist, inter alia, of the verbal element ‘jet’) to the one that has been compared and cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Michal KRUK

Jessica LEWIS

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.