OPPOSITION No B 2 748 245

Fujifilm Dimatix, Inc., 109 Etna Road, Lebanon, New Hampshire 03766, United States of America (opponent), represented by CMS Cameron McKenna Nabarro Olswang, Cannon Place, 78 Cannon St., London  EC4N 6AF, United Kingdom  (professional representative)

a g a i n s t

Aetna Group S.p.A., Strada Provinciale Marecchia 59, 47826 Villa Verucchio (RN), Italy (applicant), represented by Accapi S.r.l., Via Garibaldi 3, 40124 Bologna, Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 245 is upheld for all the contested goods.

2.        European Union trade mark application No 15 380 306 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 of European Union trade mark application No 15 380 306 ‘DIMATIC‘. The opposition is based on European Union trade mark registration No 5 258 595 ‘DIMATIX‘. The opponent invoked Article 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.

1. The goods

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

Class 7:        Printing machines; printing apparatus; micropumps; machines and micropumps for extruding, ejecting or dispensing of decorations, edible decorations and foodstuffs; machines and micropumps for extruding, ejecting or dispensing of clothing accessories and components; machines and micropumps for extruding, ejecting or dispensing of pharmaceutical preparations, medical preparations and biological substances; machines and micropumps for extruding, ejecting or dispensing of adhesives, coatings and office supplies; machines and micropumps for extruding, ejecting or dispensing of wall covering materials and floor covering materials; machines and micropumps to be used for packaging and in the manufacture of electronic equipment, computers, computer monitors, flat panel displays, computer displays, televisions, and handheld devices; machines for shaping materials into desired form; parts and fittings for all of the aforesaid.

The contested goods are the following:

Class 7:        Packing machines; packing installations; bundling machines; canning machines; winding machines; lacing machines; stretch-wrapping machines for applying plastics film to palletised loads; industrial robots; machines for manufacturing packaging materials; bottling machines; cartoning machines.

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.

The contested packing machines are synonymous to the opponent’s machines […] to be used for packaging and are, therefore, identical.

The contested packing installations overlap with the opponent’s machines […] to be used for packaging. Therefore, they are identical.

The contested industrial robots overlap with the opponent’s machines […] to be used […] in the manufacture of electronic equipment because these machines can in fact be industrial robots. Therefore, they are considered identical.

The contested bundling machines; canning machines; stretch-wrapping machines for applying plastics film to palletised loads; bottling machines; cartoning machines are all machines for various specific methods of packaging of goods (bundling, canning etc.). Compared to the opponent’s machines […] to be used for packaging, they have the same nature (machines) and the same purpose of use (enclosing objects/materials in order to store, transport of offer them for sale). The goods can also coincide in the relevant public and can be manufactured by the same type of undertakings. Consequently, these goods are similar.

The contested machines for manufacturing packaging materials are similar to the opponent’s micropumps to be used for packaging because these micropumps can extrude, eject or dispense packaging material. The goods compared coincide in their nature and purpose of use. They can also coincide in the relevant public and can be manufactured by the same type of undertakings.

The contested winding machines and lacing machines are, broadly speaking, used in packaging as well. Winding machines are machines for wrapping tape, string, cord, rope etc. onto a spool or reel. This enables the tape, string etc. to be easily stored or transported. Lacing machines are machines which join materials together by feeding thread through holes. These machines can be used to create packaging for goods. Compared to the opponent’s machines […] to be used for packaging, they have the same nature (being machines) and a similar purpose of use. They can also coincide in the relevant public. Therefore, they are, at least, similar to a low degree.

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 or similar (to various degrees) are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention will be high because these goods are of a technological nature, are purchased only rarely and are likely to be quite expensive.

3. The signs

DIMATIX	DIMATIC
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 words ‘DIMATIX’ and ‘DIMATIC’ of which the marks consist have no meaning in relation to the relevant goods and are, therefore, normally distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘DIMATI*’ and differ only in the last letter ‘X’/’C’. The coinciding letters are placed in the prominent position at the beginning of the sign. The marks also have the same structure (one word) and the same length (seven letters).

Therefore, the signs are visually highly similar.

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 ‘DIMATI*’ present identically in both signs. The pronunciation differs only in the sound of the last letter ‘X’/’C’. In addition, the marks have the same length (three syllables) and coincide in their rhythm and intonation.

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 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

The goods have been found partially identical, partially similar and partially similar to a low degree. The earlier trade mark’s degree of distinctiveness per se is average. The degree of attention of the relevant public will be high.

The marks are highly similar visually and aurally on account of the common string of letters ‘DIMATI*’.  In addition, the coinciding string of letters is placed in the prominent position at the beginning of the marks that first catches the attention of the reader, as mentioned above in part c). The marks only differ in their last letter ‘X’/’C’. On the whole, it is clear that the overall impression created by the marks is highly similar.

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). This is particularly important in the present case where the degree of attention of the relevant public is high.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the coincidences between the marks, together with the identity and similarity (to different degrees) of the goods compared in section a) are enough to counteract their dissimilarities. Regarding the low similarity of some of the goods, this is outweighed by the high degree of similarity of the marks

Considering all the above, there is a likelihood of confusion on the part of the public, even taking into account a higher degree of attention.

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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

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.