OPPOSITION No B 2 745 068

Dekra e.V., Handwerkstraße 15, 70565 Stuttgart, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Guangzhou Dumor Automation System Co.,Ltd., Room 603, Area B1, Chuangyi Building,  No.162 Kexue Road, Kexuecheng High Tech Development Zones, Guangzhou City, Guangdong, People’s Republic of China (applicant), represented by Albright IP Limited, County House Bayshill Road, Cheltenham Gloucestershire GL50 3BA, United Kingdom (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 745 068 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 360 415 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 15 360 415 for ‘DEKIA’. The opposition is based on, inter alia, international trade mark registration No 1 280 073 for ‘DEKRA’ designating the European Union. The opponent invoked Articles 8(1)(b) and 8(5) 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 international trade mark registration No 1 280 073 designating the European Union.

1. The goods and services

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

Class 7:         Machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines, steam boilers for steam generation [machine parts]; elevators; cranes; car washing installations; lifting ramps; pumps, compressors and fans; robots; moving and handling equipment; generators of electricity; sweeping, cleaning, washing and laundering machines; parts and fittings for all aforementioned goods included in this class.

Class 16:         Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; filtering materials of paper; bags and articles of paper, cardboard or plastics for packaging, wrapping and storage; parts and fittings for all aforesaid goods included in this class.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design, and development of computer hardware and software; engineering testing; conducting inspections (technical appraisals); preparation of technical expert opinions for accident, damage and traffic courses of events; technical advisory services relating to environment protection; technical security consultancy; technical controlling and analysis regarding security, health protection, and prevention at work; setting safety and quality standards; technical repeating examinations for the documentation of the achieved standards and grant or confirmation of a seal of approval on the basis of past examinations; quality audits, technical testing, monitoring, and certifying (quality control), IT-Services, namely IT-consultancy and advisory and information services, IT security services in the nature of protection and recovery of computer data, research with regard to and development and implementation of computers and computer systems, computer project management services, technological services with regard to computers, computer network services, updating memory banks of computer systems, updating of websites, for others, monitoring services of computer systems via remote access; engineering services, design of computer software; technical expert opinions, product testing and product safety testing, authentication and quality control, especially conformity evaluations, conformity surveys, consultancy with regard to quality control, consultancy with regard to quality assurance services, consultancy services regarding product and material testing; conducting scientific experiments, conducting scientific tests, process monitoring for quality assurance, quality control, quality testing, technical safety inspection services, and consultancy; technical supervision and inspection, pharmaceutical and medical research services; architectural and urban planning services; building and construction planning; awarding of test seals and test marks, in the context of technical tests, especially for vehicles; providing of expertise and technical consultancy in the fields, namely, vehicles, automotive sector, fleet management, mechanical engineering, building and real estate, rail, aviation and shipping, chemical and pharmaceutical industry, power plants, services and retail, power supply and waste disposial, health care, food and animal feed, public sector, manufacturing industries, banking and insurance sector, transport and logistics, sports grounds; material testing, services of a physicist, architectural services; measuring and assessment of pollutants; execution of samplings, laboratory analysis and physical inspections, development of technical construction concepts and remediation concepts; expert assessment of current construction and remediation measures; assessment of planning documents, soil investigation, investigation on building conditions, and indoor air, scientific services, design services, damage management for insurance companies, insurance brokers and industrial companies, namely technical consultancy, technical plausibility check of damage cases, further investigations, research in databases and on the Internet, for scientific and research purposes; consultancy and information with regard to the aforesaid services included in, this class.

The contested goods and services are the following:

Class 7:         Paper feeders (printing); bookbinding apparatus and machines for industrial purposes; satinizing machines; collating machines; paper cutting machines; sheaf-binding machines; wrapping machines; packing machines; packaging machines; labellers (machines).

Class 16:         Sealing machines for offices; office perforators; punches (office requisites); paper shredders for office use; paper cutters; paper knives (cutters) (office requisites); paper knives (office requisites); bookbinding apparatus and machines (office equipment); document laminators for office use.

Class 42:         Technical project studies; mechanical research; quality control; research and development of new products for others; technical research; quality testing; quality assessment; industrial design; packaging design; styling (industrial design).

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 ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 7

When comparing the contested paper feeders (printing); satinizing machines; bookbinding apparatus and machines for industrial purposes; collating machines; paper cutting machines; sheaf-binding machines; labellers (machines) with the opponent’s bookbinding material in Class 16, these are similar, as they are all used in the printing and bookbinding fields. They have the same distribution channels, target the same relevant public, are complementary (at least bookbinding apparatus and machines for industrial purposes and bookbinding material) and may be produced by the same kinds of undertakings.

When comparing the contested packing machines; packaging machines with the opponent’s articles of paper, cardboard or plastics for packaging in Class 16, these goods are similar, as they have the same purpose of packaging, may target the same relevant public and be manufactured by the same kinds of companies in the packaging industry.

When comparing the contested wrapping machines with the opponent’s articles of paper, cardboard or plastics for wrapping in Class 16, these goods are similar, as they have the same purpose of wrapping, may target the same relevant public and may be manufactured by the same kind of companies in the packaging industry.

Contested goods in Class 16

The contested sealing machines for offices; office perforators; punches (office requisites); paper shredders for office use; paper cutters; paper knives (cutters) (office requisites); paper knives (office requisites); bookbinding apparatus and machines (office equipment); document laminators for office use are included in the broad category of the opponent’s office requisites (except furniture) in Class 16. Therefore, they are identical.

Contested services in Class 42

The contested technical project studies in Class 42 are included in the broad category of the opponent’s technological services and research relating thereto in Class 42. Therefore, they are identical.

The contested quality control; research; quality testing in Class 42 are identically contained in both lists of services (including synonyms).

The contested mechanical research; technical research are included in the broad category of the opponent’s research services in Class 42. These are identical.

The contested quality assessment in Class 42 is included in the broad category of the opponent’s quality control in Class 42. Therefore, these services are identical.

The contested development of new products for others; industrial design; packaging design; styling (industrial design) are included in, or overlap with, the broad category of the opponent’s scientific and technological services and design relating thereto in Class 42. These services are identical.

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 are directed at the public at large and at customers with specific professional knowledge or expertise, for example in the packaging, bookbinding, technology and other technical fields. The degree of attention is rather high, because of the high price, (specialised) nature and the (technical) conditions of the purchased/provided goods and services.

3. The signs

DEKRA	DEKIA
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 word ‘DEKRA’ of the earlier mark and ‘DEKIA’ of the contested sign are both meaningless terms and are normally distinctive for the goods and services at stake.

Visually, the signs coincide in the sequence of letters ‘D-E-K-*-A’ and both consist of five letters. On the other hand, they differ in the fourth letter ‘R’ of the earlier mark versus ‘I’ of the contested sign. Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /D-E-K-*-A/, present identically in both signs. The pronunciation differs in the sound of the fourth letters, namely ‛R’ of the earlier mark versus ‘I’ in the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found identical or similar and the level of attention is rather high. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, also in case of the goods and services where the attention of the relevant public may be higher than average, given the high visual and aural similarities between the signs, likelihood of confusion cannot safely be excluded in respect of the goods and services that have been found to be identical or similar.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 280 073 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration No 1 280 073 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Chantal VAN RIEL

Saida CRABBE

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.