OPPOSITION No B 2 724 394

Sumec Hardware & Tools Co., Ltd., 15/F, No. 198, Changjiang Road, Nanjing City, Jiangsu Province, People’s Republic of China (opponent), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative)

a g a i n s t

Task Force Tips, Inc., 3701 Innovation Way, Valparaiso, Indiana 46383, United States of America (applicant), represented by Uexküll & Stolberg Partnerschaft Von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 394 is partially upheld, namely for the following contested goods:

Class 8:        Hydrant and spanner wrenches; spanners; rollers for removing air or water from fire hoses.

2.        European Union trade mark application No 14 873 152 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 14 873 152, namely against all the goods in Class 8. The opposition is based on, inter alia, European Union trade mark registration No 11 731 296. The opponent invoked Article 8(1)(a) and (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 11 731 296.

1. The goods

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

Class 7:        Knives for mowing machines; Lawnmowers [machines]; Raking machines; Engines, other than for land vehicles; Chain saws; Generators of electricity; Pumps[machines]; Compressed air machines; Snow ploughs; High pressure washers; Disintegrators; Woodworking machines; Electric hammers; Hand-held tools, other than hand-operated.

The contested goods, after a limitation filed by the applicant on 30/01/2017, are the following:

Class 8:        Fire tending implements; hydrant and spanner wrenches; spanners; rollers for removing air or water from fire hoses.

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.

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 applicant’s hydrant and spanner wrenches; spanners are tools that are used for gripping and turning nuts or bolts, while rollers for removing air or water from fire hoses are cylinder-shaped tools used in machines and devices to move, flatten or spread something, that is, in the present case, to remove air or water from fire hoses. These tools can be produced by the same manufacturers that produce the opponent’s hand-held tools, other than hand-operated in Class 7, as spanners, wrenches and rollers can be either hand-operated or powered by electricity or other energy. They have the same distribution channels, are found in the same or nearby sections in hardware or DIY outlets, and target the same consumers. Therefore, these goods are similar.

The contested fire tending implements are tools commonly used to tend a small fire, such as in an indoor fireplace. Fire tending implements include, but are not limited to, fireplace pokers, fire tongs, fire rakes and fire shovels. These are accessories for fireplaces and would be produced by the same manufacturers that make fireplaces, rather than manufacturers producing hand-held tools or various types of machines used in gardening or for DIY purposes. The purpose of the contested goods is different from those of the opponent’s goods: the contested goods are intended for a specific purpose – tending a fire – while the opponent’s goods are various tools used in DIY and gardening, or for pumping water or ploughing snow. Even though the contested goods and the opponent’s goods can all be found in large DIY outlets, they would be in completely different sections and they target different groups of consumers. Therefore, these goods 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 found to be similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

	G-Force
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark consisting of a verbal element, ‘G-FORCE’, written in grey stylised letters, with the letter ‘G’ in black inside a grey border and slightly larger in size than the other letters. All the letters are outlined in black.

The contested mark is a word mark, ‘G-Force’.

In English, the coinciding element ‘G-force’ means ‘a form of acceleration that causes the accelerating object to experience a force acting in the opposite direction to the acceleration’ (information extracted from Oxford Dictionaries on 25/09/2017 at https://en.oxforddictionaries.com/definition/g-force). Although this expression has a meaning in English, there is no descriptive or even allusive link to the goods in question and, therefore, this element has a normal degree of distinctiveness for these goods.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark has no 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).

It follows from the above that the verbal element ‘G-FORCE’ is the most distinctive element of the earlier mark.

Visually, the signs coincide in the verbal element ‘G-Force’. However, they differ in the stylisation of the letters of the earlier mark. As the signs coincide entirely in their verbal elements and there are no other elements besides the mere stylisation of the letters in the earlier mark that would catch the attention of the relevant public, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘G-FORCE’, which form the only verbal element in the earlier mark and comprise the entire contested mark.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by the English-speaking public as referring to a form of acceleration, they are conceptually identical.

As the signs have been found visually similar and aurally and conceptually identical, 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 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

As follows from the analysis in section a) above, the goods are partly similar and partly dissimilar.

The inherent distinctiveness of the earlier mark is average.

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).

Therefore, taking into account the principle of imperfect recollection and also the fact that the signs are aurally and conceptually identical and visually similar to a high degree, and in the absence of any relevant differentiating elements in the signs, it is concluded that there is a likelihood of confusion on the part of the English-speaking public for the goods found to be similar.

Considering all the above, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 731 296. 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 for goods found to be similar.

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. 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 cannot be successful.

The opponent has also based its opposition on earlier Swedish trade mark registration No 509 204 for the figurative mark  and earlier German trade mark registration No 302 012 007 060 for the figurative mark .

Since these marks are identical to the one which has been compared and cover the same or 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the dissimilar goods because the signs and the goods are obviously not identical.

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

Gueorgui IVANOV

Ieva SMILGAINE

Sandra KASPERIŪNAITÉ

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.