OPPOSITION No B 2 780 644

Guangzhou Aimente Electronic Technology Co., Ltd, Room 328, Building 3, No 9, Xinyong West Street, Chepo Road, Huangpu Avenue, Tian He, Guangzhou, People’s Republic Of China (opponent), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative)

a g a i n s t

buyself, Marderweg 2, 59071 Hamm, Germany and Matthäus Mrugalla, Marderweg 2, 59071 Hamm, Germany (applicants)

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 780 644 is partially upheld, namely for the following contested goods:

Class 7:        Machine tools; Machines for making tools; Tools for machine tools; Power operated tools; Motor driven tools; Tools [parts of machines]; Broaches [machine tool]; Modular tools for machines; Machine tools for woodworking machines; Rotary tools [machines]; Mechanical tools; Rotary tool bits [machines]; Tool bits for metalworking machines; Tool bits for machines; Rotary tool bits [parts of machines]; Boring machines; Drilling machines; Clamping devices being parts of machine tools; Drill bits for rotary power tools; Handles being parts of machine tools; Drill aligning instruments for use with machines; Tool bits for use in power operated hand tools; Power-operated ratchet wrenches; Socket spanners [machines].

Class 8:        Spanners; Rotary tool bits [hand-operated tools]; Ratchet handles [hand-operated tools]; Screw extractors [hand operated tools]; Impact drills [hand-operated tools]; Boring tools [hand-operated tools]; Socket sets [hand-operated tools]; Socket wrenches [hand operated tools]; Tap ratchets (hand operated -); Monkey wrenches [hand-operated tools]; Borers; Rotary drills [hand-operated tools]; Hand tools and implements (hand operated); Hand-operated tools for repair of vehicles; Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Ratchet handles; Socket spanners; Sets of socket spanners; Nut drivers [hand tools].

2.        European Union trade mark application No 15 497 001 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 all the goods of European Union trade mark application No 15 497 001. The opposition is based on European Union trade mark registration No 5 074 347. 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

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

Class 6:        Sleeves [metal hardware]; Elbows of metal for pipes; Tubbing of metal; Drain pipes of metal; Junctions of metal for pipes; Pipework of metal; Pipe muffs of metal; Props of metal; Box fasteners of metal; Bolts of metal; Nuts of metal; Screws of metal; Rivets of metal; Bungs of metal; Stops of metal; Pegs of metal; Stop collars of metal; Pins (Cotter); Cotter pins; Bolts; Screw rings; Tacks [nails]; Buckles of common metal; Eye bolts; Ironmongery; Box fasteners of metal; Windows (Fittings of metal for); Fittings of metal for furniture.

Class 21:        Containers for household or kitchen use; kitchen utensils; Brushes; Cleaning instruments [hand-operated]; Steel wool for cleaning; Works of art, of porcelain, terra-cotta or glass; Cosmetic utensils; holders for flowers and plants [flower arranging]; Shaving brushes; syringes for watering flowers and plants or sprinklers for watering flowers and plants; Electric hair combs; Hair and nail and tooth brushes; powder puffs; Moulds [kitchen utensils]; Coffee grinders (hand-operated); Shoe horns; Eyebrow brushes; Vacuum bottles; Gloves for household purposes; Mouse traps; Combs; Toilet utensils; Clothes racks [for drying]; Stands (Flat iron); Scrubbing brushes; brush shoe ware; Carpet sweepers; Insect traps; Cages for household pets; Bath sponges.

Class 28:        Games (Apparatus for); Toys; Teddy bears; Dolls; Dolls clothes; Dolls houses; Exercise bicycles (Stationary); Dumb-bells; Physical exercises (Machines for); Games (Balls for); Tackle (Fishing); Swimming pools [play articles]; chess; Board games; Cards (Playing); Archery implements; Elbow guards [sports articles]; Knee guards [sports articles]; Protective paddings [parts of sports suits]; Christmas trees (Ornaments for) [except illumination articles and confectionery].

The contested goods are the following:

Class 7:        Machine tools; Machines for making tools; Tools for machine tools; Power operated tools; Motor driven tools; Tools [parts of machines]; Agricultural machine tools; Chisel heads [machine tools]; Milling cutters [machine tool]; Broaches [machine tool]; Thread milling cutters [machine tool]; Modular tools for machines; Machine tools for woodworking machines; Rotary tools [machines]; Mechanical tools; Rotary tool bits [machines]; Machine tool holders; Tool bits for metalworking machines; Tool bits for machines; Rotary tool bits [parts of machines]; Magnetic holders for machine tools; Boring machines; Drilling machines; Clamping devices being parts of machine tools; Adapters for machine tools; Extensions for power tools; Drill bits for rotary power tools; Handles being parts of machine tools; Drill aligning instruments for use with machines; Tool bits for use in power operated hand tools; Keys for securing bits [machine]; Keys for releasing machining bits; Power-operated ratchet wrenches; Socket spanners [machines].

Class 8:        Tool belts [holders]; Tool holders; Tool aprons; Pestles for pounding; Spanners; Diggers [hand tools]; Expanders [hand tools]; Ladles [hand tools]; Rotary tool bits [hand-operated tools]; Routers [hand-operated tools]; Ratchet handles [hand-operated tools]; Bevels [hand-operated tools]; Screw extractors [hand operated tools]; Impact drills [hand-operated tools]; Nibblers [hand operated tools]; Spiked rollers [hand operated tools]; Boring tools [hand-operated tools]; Bow saws [hand-operated tools]; Socket sets [hand-operated tools]; Socket wrenches [hand operated tools]; Cutters [hand operated tools]; Squeegees [hand-operated tools]; Tap ratchets (Hand operated -); Wire pulling grips [hand-operated tools]; Shears [hand operated tools]; Snips [hand operated tools]; Keyhole saws [hand operated tools]; Pipe bending apparatus [hand-operated tool]; Monkey wrenches [hand-operated tools]; Nippers [hand operated tools]; Borers; Rotary drills [hand-operated tools]; Dies for use with hand operated tools; Hand tools and implements (hand operated); Hand-operated tools for repair of vehicles; Pearl catchers [hand-operated tools]; Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Agricultural, gardening and landscaping tools; Ratchet handles; Socket spanners; Sets of socket spanners; Nut drivers [hand tools].

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 machine tools; machines for making tools; tools for machine tools; power operated tools; motor driven tools; tools [parts of machines]; broaches [machine tool]; modular tools for machines; machine tools for woodworking machines; rotary tools [machines]; mechanical tools; rotary tool bits [machines]; tool bits for metalworking machines; tool bits for machines; rotary tool bits [parts of machines]; boring machines; drilling machines; clamping devices being parts of machine tools; drill bits for rotary power tools; handles being parts of machine tools; drill aligning instruments for use with machines; tool bits for use in power operated hand tools; power-operated ratchet wrenches and socket spanners [machines] include apparatus and instruments as well as parts thereof which are used in the field of joining technology. These goods have the same purpose and are usually offered together with the earlier mark’s bolts of metal, nuts of metal, screws of metal, rivets of metal, bungs of metal, stops of metal or pegs of metal through the same distribution channels and to the same end users. Moreover, they can be complementary. Therefore, it is considered that these goods are similar.

The contested agricultural machine tools; chisel heads [machine tools]; milling cutters [machine tool]; thread milling cutters [machine tool]; machine tool holders; magnetic holders for machine tools; adapters for machine tools; extensions for power tools; keys for securing bits [machine] and keys for releasing machining bits, on the other hand, are machine tools used for agricultural purposes (for instance for harvesting and sowing), as well as for cutting and shaping, and very general accessories for use with machines and machine tools. They have a different nature and purpose from the opponent’s goods in Class 6, which are building and construction elements and fittings of metal and metal fasteners. These goods do not usually have the same commercial origin, and they are neither complementary to nor in competition with each other. Although they may all be sold in the same outlets, consumers would find them in different sections. These differences are even more apparent when comparing the goods to the opponent’s goods in Classes 21 and 28, which cover household, kitchen and cosmetic containers and utensils, games, toys, sporting articles and Christmas decorations. Therefore, it is concluded that the remaining contested goods in Class 7 are dissimilar to all of the opponent’s goods.        

Contested goods in Class 8

The contested spanners; rotary tool bits [hand-operated tools]; ratchet handles [hand-operated tools]; screw extractors [hand operated tools]; impact drills [hand-operated tools]; boring tools [hand-operated tools]; socket sets [hand-operated tools]; socket wrenches [hand operated tools]; tap ratchets (hand operated -); monkey wrenches [hand-operated tools]; borers; rotary drills [hand-operated tools]; hand tools and implements (hand operated); hand-operated tools for repair of vehicles; hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; ratchet handles; socket spanners; sets of socket spanners; nut drivers [hand tools] are or include fastening and joining tools and parts thereof which are indispensable for the use of the opponent’s bolts of metal, nuts of metal, screws of metal, rivets of metal, bungs of metal, stops of metal or pegs of metal. It follows that the goods have the same purpose and are complementary. Moreover, they are directed at the same end users and offered through the same distribution channels, for instance, DIY-shops. Therefore, they are considered similar.  

The remaining contested goods in this class, namely pestles for pounding; diggers [hand tools]; expanders [hand tools]; ladles [hand tools]; routers [hand-operated tools]; bevels [hand-operated tools]; nibblers [hand operated tools]; spiked rollers [hand operated tools]; bow saws [hand-operated tools]; cutters [hand operated tools]; squeegees [hand-operated tools]; wire pulling grips [hand-operated tools]; shears [hand operated tools]; snips [hand operated tools]; keyhole saws [hand operated tools]; pipe bending apparatus [hand-operated tool]; nippers [hand operated tools]; dies for use with hand operated tools; pearl catchers [hand-operated tools]; agricultural, gardening and landscaping tools as well as tool belts [holders]; tool holders and tool aprons are not used for fastening and joining. They are very general accessories for crafting and tools used for agricultural or gardening purposes (such as digging, ploughing, etc.), for cutting, bending and shaping, as well as to hold small items and to pull wires. They have a different nature and purpose from the opponent’s goods in Class 6, which are building and construction elements and fittings of metal and metal fasteners. The mere fact that the contested pipe bending apparatus can be used to bend the opponent’s pipework of metal is not sufficient for a finding of similarity. These goods do not have the same usual origin, and they are neither complementary to nor in competition with each other. Although they may all be sold in in DYI-shops, consumers would find them in different sections. These differences are even more apparent when comparing the goods to the opponent’s goods in Classes 21 and 28, which cover household, kitchen and cosmetic containers and utensils, games, toys, sporting articles and Christmas decorations. Therefore, it is concluded that the remaining contested goods in Class 8 are dissimilar to all of the opponent’s goods.  

2. The signs

	Gator Grip
Earlier trade mark	Contested sign

According to the Court of Justice, an EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

An insignificant difference between two marks is a difference that a reasonably
observant consumer will perceive only upon examining the marks side by side. ‘Insignificant’ is not an objective term, and its interpretation depends on the level of
complexity of the trade marks being compared. Insignificant differences are those that, because they concern elements that are very small or are lost within a complex mark, cannot be readily detected by the human eye upon observing the trade mark
concerned, bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety.

The earlier mark is a figurative mark composed of the verbal element ‘GATOR GRIP’ in uppercase letters in a standard typeface, without any noticeable stylisation.

Since the contested sign is a word mark, whose protection covers the word as such and not its written form, the use of upper and lower case letters is immaterial.

Taking into account the aforesaid, it is concluded that any differences between the signs are insignificant and, therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

Considering that the signs are identical, the Opposition Division finds that there is a likelihood of confusion on the part of the public with regard to similar goods and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar to the goods of the earlier mark. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

André BOSSE

Natascha GALPERIN

Judit NÉMETH

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.