OPPOSITION No B 2 323 718

MAN SE, Ungererstr. 69, 80805 München, Germany (opponent), represented by Röhl – Dehm & Partner, Moritzplatz 6, 86150 Augsburg, Germany (professional representative)

a g a i n s t

Farman, Zone Industrielle n° 2, 17 rue Nicolas Appert, 37300 Joue Les Tours, France (applicant), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative).

On 20/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 323 718 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 238 986 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 238 986. The opposition is based on, inter alia, international trade mark registration No 914 360 designating the European Union and Germany. The opponent invoked Article 8(1)(b) and Article 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 914 360 designating the European Union and Germany.

1. The goods and services

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

Class 7:         Engines (except those for land-based vehicles), internal combustion engines, clutches and devices for transmitting power (except those for land-based vehicles) and their parts and spare parts; printing machines, in particular for web-fed offset for newspaper and illustration printing, for sheet-fed offset, for digital printing, and their parts, machines for plastics processing, in particular for varnishing and for print finishing, folding machines, feed and delivery machines for the printing material, transport and storage machines for printed products, plate bending machines; engines for ships, for on-board power generation and for stationary power plants, in particular two-cycle and four-cycle diesel engines, four-cycle diesel-gas and gas Otto engines and their parts, in particular mixed-fuel devices (machines), shafts, gear mechanisms, clutches; ships’ machines; power generators; handheld tools (not hand-operated) for the maintenance of engines; exhaust turbochargers and turbines (except those for land-based vehicles) and their parts; transmissions for vehicles (except for land-based vehicles); land-based and floating power plants comprising diesel and diesel-gas engines; compressors and turbines, included in this class, in particular axial compressors, radial compressors, process-gas turbines, radial expanders; machine sets assembled from the aforementioned turbines and compressors; process-gas screw compressors, included in this class, screw expanders, included in this class, industrial steam turbines, industrial gas turbines, except turbines for land-based vehicles; power production machines, assembled from the aforementioned compressors and turbines; gear mechanisms (except for land-based vehicles), in particular industrial gear mechanisms for cement and petrochemical plants, for the plastics and steel industry, for wind energy; spur and planetary gear mechanisms for turbo machines; ships’ gear mechanisms with diesel engine and/or turbine drive; sliding bearings (machine parts), in particular for electric machines, blowers, compressors, pumps, ships; machines for the chemical industry, in particular reactors for catalytic gas-phase reactions; hydrotreaters (machines for pre-treating liquid media), machines for the physical sector, namely exothermic and endothermic processes, in particular gas-phase processes; cranes; tower cranes, in particular with trolley or tilting jibs, bottom-slewing quick-erection cranes; machine tools; conveying machines, in particular for piece goods; gear mechanisms for electronic machines; excavators, bucket-wheel and bucket-chain excavators; drive machines (except those for land-based vehicles); appropriate apparatus and structures, included in this class for industrial machines; machines and structures, included in this class, for space travel centres; (controllable) clutches for industrial machines and ships; sliding bearings and torque converters for industrial machines; packaging machines for printed products.

Class 12:         Heavy goods vehicles and their parts; omnibuses with diesel, gas, hydrogen or electric drive and their parts; special vehicles, in particular platform trucks, tippers or saddle tractors and their parts; drive machines, namely all-wheel-drive for land-based vehicles; engines for land-based vehicles, in particular gas/diesel engines; chassis, also suitable for off-road use, for vehicles; bodywork and frame parts for motor vehicles; gear mechanisms for land-based vehicles, in particular chain-driven vehicle mechanisms; (controllable) clutches for rail-bound vehicles, gear wheels (except engine parts), (controllable) clutches, sliding bearings, and torque converters for land-based vehicles, water-borne craft; structures for space vehicles; high-speed diesel engines for land-based vehicles, in particular for locomotives; ships’ propellers; transport caterpillars.

Class 37:         Repair, maintenance, servicing, in particular of engines, turbochargers and engine plants; renting tools; installation, maintenance and repair of machines, in particular commercial vehicles, printing machines, diesel engines, turbo machines; maintenance and repair of investment goods, in particular commercial vehicles, printing machines, diesel engines, turbo machines; renting diesel engines and turbo machines for industrial plants; structural and engineering construction, steel construction, bridge building, industrial and plant construction, marine construction; services of a building contractor, namely carrying out construction projects for turnkey print shops; construction of exhibition stands and booths, in each case including installation, repair and maintenance; erection, mounting, servicing and overhaul of plants for industry, mining and construction machines; renting machines for mining and construction machines.

The contested goods and services are 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; agricultural machines; suction machines for industrial purposes; woodworking machines; industrial handling machines; packaging and wrapping machines; pumps (machines); drills (electric hand -); shearing machines; earth moving machines; grinding machines; centrifuges (machines); elevators [lifts]; sewing and knitting machines; ironing machines; washing machines; kitchen machines, electric; sorting machines for industry; saws; robots (machines); printing machines; drilling machines; elevators [lifts]; electric knives; robotic production lines and tools for robotic cells; accumulation conveyors.

Class 12:         Vehicles; apparatus for locomotion by land, air or water; motors for land vehicles; suspension shock absorbers for vehicles; bodies for vehicles; anti-skid chains; chassis or bumpers for vehicles; sun-blinds adapted for automobiles; security harness for vehicle seats; electric vehicles; caravans; tractors; mopeds; bicycles; frames, stands, brakes, handlebars, rims, pedals, pneumatic tyres, wheels or saddles for bicycles; baby carriages; handling carts.

Class 37:         Construction of permanent buildings, roads, bridges; construction consultation; supervision (management) of building works; masonry; plastering and plumbing; roofing services; sealing (building- ); demolition of buildings; rental of construction equipment; cleaning of homes, buildings (outer surfaces) and windows; vehicle cleaning and maintenance; vehicle repair; disinfecting; rat exterminating; fabric laundry; renovation of clothing; maintenance, cleaning and repair of leather or furs; pressing of clothing; repair of shoes; retreading or vulcanisation of tyres (repair); office machines and equipment installation, maintenance and repair; machinery installation, maintenance and repair; computer hardware (installation, maintenance and repair of -); maintenance and repair of clocks and watches; repair of security locks; furniture restoration; shipbuilding; Installation and maintenance of robotic installations for production lines and tools for robotic cells.

An interpretation of the wording of the opponent’s list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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

Machine tools; motors and engines (except for land vehicles); packaging and wrapping machines; printing machines are identically contained in both lists of goods (albeit using slightly different wordings or including synonyms).

The contested agricultural implements other than hand-operated are included in the broad category of the opponent’s machine tools. Therefore, they are identical.

The contested agricultural machines include conveyors for agricultural machinery. It follows that the contested agricultural machines overlap with the opponent’s conveying machines, in particular for piece goods. Similarly, the contested accumulation conveyors overlap with the opponent’s conveying machines, in particular for piece goods. Therefore, they are identical.

The contested drills (electric hand -) are included in the broad category of the opponent’s handheld tools (not hand-operated). Therefore, they are identical.

The contested tools for robotic cells overlap with the opponent’s machine tools. Therefore, they are identical.

The contested machine coupling and transmission components (except for land vehicles) comprise parts and fittings of machines. Therefore, they are similar to the opponent’s sliding bearings (machine parts), as they can have the same producers, distribution channels and end users. Furthermore, they are complementary.

The contested woodworking machines; shearing machines; grinding machines; robots (machines); drilling machines are used for, among other functions, cutting, grinding and other forms of deformation. As such, they can be included in the broad category of the opponent’s machine tools. Similarly, the contested sewing and knitting machines can also be included in the opponent’s machine tools, as they cut and shape textile materials. Therefore, they are considered identical.

An engine is a machine for converting any of various forms of energy into mechanical force and motion. The contested incubators for eggs; suction machines for industrial purposes; industrial handling machines; pumps (machines); earth moving machines; centrifuges (machines); elevators [lifts]; ironing machines; washing machines; kitchen machines, electric; sorting machines for industry; elevators [lifts]; robotic production lines are all machines that include any type of engine or device for transmitting power. Therefore, they are similar to the opponent’s engines (except those for land-based vehicles) and devices for transmitting power (except those for land-based vehicles), as they can have the same producers and end users. Furthermore, they are complementary.

The contested saws can be parts of machines in the form of saw blades. Similarly, the contested electric knives can be parts of machines. Therefore, they are all similar to the opponent’s machine tools, as they can have the same producers and end users. Furthermore, they are complementary.

Contested goods in Class 12

The contested motors for land vehicles are synonymous with the opponent’s engines for land-based vehicles, the contested bodies for vehicles are synonymous with the opponent’s bodywork and frame parts for motor vehicles, and the contested chassis for vehicles are identically contained in both lists of goods. Therefore, they are identical.

The contested vehicles; apparatus for locomotion by land, air or water include, as broader categories, the opponent’s heavy goods vehicles and their parts. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested suspension shock absorbers for vehicles; anti-skid chains; bumpers for vehicles; sun-blinds adapted for automobiles; security harness for vehicle seats are components for vehicles. As such, they overlap with the opponent’s special vehicles, in particular platform trucks, tippers or saddle tractors and their parts, since the abovementioned contested goods can be adapted for special vehicles. Therefore, they are identical.

The contested electric vehicles; caravans; tractors; mopeds; bicycles; handling carts are various types of vehicles and the contested frames, stands, brakes, handlebars, rims, pedals, pneumatic tyres, wheels or saddles for bicycles are various parts for bicycles. These contested goods and the opponent’s gear mechanisms for land-based vehicles, in particular chain-driven vehicle mechanisms are likely to have the same producers and they may target the same purchasing public. Moreover, the goods under comparison are complementary and may be distributed through the same channels. Therefore, these goods are considered similar.

The chassis is the base frame of a car, carriage or other wheeled vehicle. Therefore, the contested baby carriages are similar to the opponent’s chassis, also suitable for off-road use, for vehicles, as they can have the same producers and distribution channels.

Contested services in Class 37

Machinery installation, maintenance and repair are identically contained in both lists of services (albeit using slightly different wordings).

The contested construction of permanent buildings, roads, bridges; shipbuilding are included in the broad categories of the opponent’s structural and engineering construction, steel construction, bridge building, industrial and plant construction, marine construction. Therefore, they are identical.

The contested construction consultation; supervision (management) of building works are services that are rendered by a building contractor. As such, they are included in the broad category of the opponent’s services of a building contractor, namely carrying out construction projects for turnkey print shops. Therefore, they are identical.

The contested masonry; plastering and plumbing; roofing services; sealing (building -); demolition of buildings; disinfecting; rat exterminating are building improvement and maintenance services that affect buildings and homes in their capacity as investment goods. As such, these contested services are included in the broad category of the opponent’s maintenance and repair of investment goods from the same class. Therefore, they are identical.

The contested rental of construction equipment includes, as a broader category, the opponent’s renting machines for mining and construction machines. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested cleaning of homes, buildings (outer surfaces) and windows; vehicle cleaning and maintenance; vehicle repair; fabric laundry; renovation of clothing; maintenance, cleaning and repair of leather or furs; pressing of clothing; repair of shoes; retreading or vulcanisation of tyres (repair); computer hardware (maintenance and repair of -); maintenance and repair of clocks and watches; repair of security locks; furniture restoration; maintenance of robotic installations for production lines and tools for robotic cells refer to various activities relating to the maintenance and repair of investments such as homes, vehicles, clothing, computer hardware and furniture. These contested goods are included in the broad category of the opponent’s maintenance and repair of investment goods, in particular commercial vehicles, printing machines, diesel engines, turbo machines. Therefore, they are identical.

The contested office machines and equipment installation, maintenance and repair are included in the broad category of the opponent’s installation, maintenance and repair of machines. Therefore, they are identical.

The contested computer hardware (installation of -); installation of robotic installations for production lines and tools for robotic cells include, as broader categories, the opponent’s installations of machines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

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 business customers with specific professional knowledge or expertise. The degree of attention ranges from average to higher than average, given the significant financial impact of some of the services (such as construction services) and the important security factors (safety of buildings and so forth).

3. The signs

MAN	FARMAN
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 earlier mark is the word mark ‘MAN’. The element ‘MAN’ may, taken in isolation, be perceived by the English-speaking part of the public in the relevant territory as ‘an adult human male’ (information extracted from Oxford Dictionaries on 10/01/2017 at www.oxforddictionaries.com). Furthermore, it may be perceived by the Danish-, German- and Swedish-speaking parts of the public as a pronoun meaning ‘one’. In many other territories, the word ‘MAN’ has no meaning. As this word does not describe or suggest any of the qualities of the relevant goods and services, there is no direct connection between them and the earlier mark; the earlier mark has an average degree of distinctiveness.

The contested sign is the word mark ‘FARMAN’. The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). The element ‘FARMAN’ is very likely to be perceived by the English-speaking part of the public as a combination of the word ‘FAR’, meaning ‘situated at a great distance in space or time’ (information extracted from Oxford Dictionaries on 10/01/2017 at www.oxforddictionaries.com), and ‘MAN’, with the meaning given above. For the remaining part of the public in the relevant territory, the contested sign will be perceived as a whole with no meaning. In any case, the contested sign has no direct connection with the relevant goods and services and, therefore, it has an average degree of distinctiveness.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘MAN’, which forms the entire earlier mark and is included in its entirety at the end of the contested sign. However, they differ in the first letters, ‘FAR’, of the contested sign.

Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases (16/05/2007, T-158/05, Altrek, EU:T:2007:143). In the present case, the integral reproduction of the element ‘MAN’ in the contested sign and the fact that it constitutes the sole component of the earlier sign outweighs this difference overall.

It also must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

Therefore, taking into account the above considerations, the signs are visually similar to an average 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 ‛MAN’, present identically in both signs. These coinciding letters form the entire earlier mark and the second syllable of the contested sign. The pronunciation differs in the sound of the letters ‛FAR’, which form the first syllable of the contested sign and have no counterparts in the earlier mark.

Therefore, as explained above, although the part that the signs have in common is at the end of the contested sign, the commonality is still sufficient to conclude that the signs are aurally similar to an average degree.

Conceptually, as explained above, part of the relevant public will perceive the contested sign as a combination of the English words ‘FAR’ and ‘MAN’, resulting in an average degree of conceptual similarity. For the remaining part of the public neither of the signs has a meaning and, therefore, a conceptual comparison is not possible.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

The goods and services are partly identical and partly similar. The degree of attention of the relevant public varies from average to higher than average.

The sole component of the earlier mark, the letters ‘MAN’, is wholly incorporated in the end of the contested sign, ‘FARMAN’. As a result, the relevant consumers, even professionals with a higher than average degree of attention, could think that the signs had the same origin or at least, that they originated from economically linked undertakings. In particular, it cannot be ruled out that consumers might perceive the contested sign as a particular configuration of the earlier mark used to designate a special line of products or services and having the same commercial origin. This risk generates a likelihood of confusion between the signs which the mere absence of the sequence of letters ‘FAR’ in the earlier mark will not eliminate.

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 914 360 designating the European Union and Germany. It follows that the contested sign 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 and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier international trade mark registration No 914 360 designating the European Union and Germany leads to the success of the opposition and to the rejection of the contested sign 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).

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

Loreto URRACA LUQUE

Marta GARCÍA COLLADO

Vanessa PAGE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.