OPPOSITION No B 2 769 746

Abakus Spółka z ograniczoną odpowiedzialnością, Aksamitna 2, 02-287 Warsaw, Poland (opponent), represented by Ewa Grenda, ul. Kosiarzy 37/95 Warszawa, 02-953 Warsaw, Poland (professional representative)

a g a i n s t

Loro Spółka z ograniczoną odpowiedzialnością Sp.k, ul. Julianowska 37A, 05-500 Paseczno, Poland (applicant), represented by Dennemeyer & Associates Sp. z o.o., ul. Swarzewska 57/1, 01-821 Warsaw, Poland (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 769 746 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 941 587 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 941 587. The opposition is based on Polish trade mark registration No 263 314. The opponent invoked Article 8(1) (a) and (b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLES 8(1)(a) and (b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 11: Air-conditioning dryers, air-conditioning evaporators, elements of air-conditioning systems in  cars (sensors, valves, pipes), air-conditioning compressors, reflectors, rear-view mirrors for cars, fog lamps for cars, lamps, directional signals for cars and other elements of lighting systems of cars.

Class 12: Rear-view mirrors for cars; mirror inserts for cars; liquid coolers; air coolers for engines; oil coolers; air-condition coolers and condensers; fans for coolers; fan engines; fan propellers; fan clutches; water pumps; thermostats; water pumps for cars; heaters for cars; oil pans for engines; gas springs; engine covers; trunk lids and other elements of car body.

Class 35: Running shops and wholesale stores, showrooms and internet shops in relation to car industry, parts, accessories and equipment; sales promotion services and selling of parts and accessories for motor vehicles.

The contested goods and services are the following:

Class 7: Coolers for vehicles; air coolers for engines; oil coolers; fans for coolers; fan engines; fan propellers; fan clutches; water pumps; water pumps for vehicles; oil pans for engines.

Class 11: Devices for lighting; devices for lighting vehicles; lights for vehicles; lighting devices for vehicles; elements for lighting cars; lamps; lighting lamps; lamps for cars; fog lamps for cars; reflectors; headlights for vehicles; headlights for cars; lamp cases; lamp covers; tubes for lamps; lamp glass; devices for illumination of license plates on vehicles; light bulbs for blinkers in vehicles; electric bulbs; lighting bulbs; liquid coolers; apparatus and cooling systems; cold rooms; cooling systems and devices; recuperator blower; air filters for air conditioning; air-conditioning coolers and condensers; heaters for cars.

Class 12: Parts for vehicles; parts for apparatuses for locomotion by land; rear-view mirrors for cars; mirror inserts for cars; gas springs; engine covers for land vehicles; trunk lids and other elements of car body; car blinkers; anti-glare devices for vehicles.

Class 35: Retail and wholesale of vehicle parts and accessories, including online stores.

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 7

The contested coolers for vehicles; air coolers for engines; oil coolers; fans for coolers; fan engines; fan propellers; fan clutches are similar to a high degree to the opponent´s air coolers for engines; oil coolers; fans for coolers; fan engines; fan propellers; fan clutches in Class 12 as they share the same nature, relevant public, method of use, purpose, producers and distribution channels.

The contested water pumps; water pumps for vehicles are similar to a high degree to the opponent´s water pumps; water pumps for vehicles in Class 12 as they share the same nature, relevant public, method of use, purpose, producers and distribution channels.

The contested oil pans for engines are similar to a high degree to the opponent´s oil pans for engines in Class 12 as they share the same nature, relevant public, purpose, producers and distribution channels.

Contested goods in Class 11

The contested fog lamps for cars; reflectors are identically contained in both lists of goods.

The contested apparatus and cooling systems; cooling systems and devices; recuperator blower; air filters for air conditioning include, as a broader category, or overlap with, the opponent’s air-conditioning dryers. 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 devices for lighting; devices for lighting vehicles; lights for vehicles; lighting devices for vehicles; elements for lighting cars; lamps; lighting lamps; lamps for cars; headlights for vehicles; headlights for cars; lamp cases; lamp covers; tubes for lamps; lamp glass; devices for illumination of license plates on vehicles; light bulbs for blinkers in vehicles; electric bulbs; lighting bulbs include, are included in or overlap with the opponent´s broader category of lamps, directional signals for cars and other elements of lighting systems of cars. Therefore, they are identical.

The contested cold rooms are highly similar to the opponent´s elements of air-conditioning systems in air-conditioning dryers as they share the same nature, relevant public, purpose, producers and distribution channels.

The contested liquid coolers are similar to a high degree to the opponent´s liquid coolers in Class 12 as they share the same nature, purpose, method of use, producers and distribution channels.

The contested air-conditioning coolers and condensers are similar to a high degree to the opponent´s air-condition coolers and condensers in Class 12 as they share the same nature, purpose, method of use,  producers and distribution channels.

The contested heaters for cars are similar to a high degree to the opponent´s heaters for cars in Class 12 as they share the same nature, purpose, producers and distribution channels.

Contested goods in Class 12

The contested rear-view mirrors for cars; mirror inserts for cars; gas springs; trunk lids and other elements of car body are identically contained in both lists of goods.

The contested engine covers for land vehicles are included in the opponent´s broader category of engine covers. Therefore, they are identical.

The contested parts for vehicles; parts for apparatuses for locomotion by land include, as a broader category, the opponent’s rear-view mirrors for cars. 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 car blinkers and anti-glare devices for vehicles. overlap with the opponent´s broader category of other elements of car body. Therefore, they are identical.

Contested services in Class 35

The contested retail and wholesale of vehicle parts and accessories, including online stores are identically contained in both lists of services (Including synonyms)

2. The signs

Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical. The following goods and services are identical to the goods and services covered by the earlier mark:

Class 11: Devices for lighting; devices for lighting vehicles; lights for vehicles; lighting devices for vehicles; elements for lighting cars; lamps; lighting lamps; lamps for cars; fog lamps for cars; reflectors; headlights for vehicles; headlights for cars; lamp cases; lamp covers; tubes for lamps; lamp glass; devices for illumination of license plates on vehicles; light bulbs for blinkers in vehicles; electric bulbs; lighting bulbs; apparatus and cooling systems; cooling systems and devices; recuperator blower; air filters for air conditioning.

Class 12: Parts for vehicles; parts for apparatuses for locomotion by land; rear-view mirrors for cars; mirror inserts for cars; gas springs; engine covers for land vehicles; trunk lids and other elements of car body; car blinkers; anti-glare devices for vehicles.

Class 35: Retail and wholesale of vehicle parts and accessories, including online stores.

Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

The following contested goods are similar to a high degree to the goods covered by the earlier mark:

Class 7: Coolers for vehicles; air coolers for engines; oil coolers; fans for coolers; fan engines; fan propellers; fan clutches; water pumps; water pumps for vehicles; oil pans for engines.

Class 11: Cold rooms; liquid coolers; air-conditioning coolers and condensers; heaters for cars.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

Considering all the above, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 263 314 as far as Articles 8(1)(a) and (b) EUTMR are concerned. It follows from the above that the contested sign must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Alexandra APOSTOLAKIS

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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