OPPOSITION No B 2 783 184

Trade Fides, a.s., Dornych 129/57, 617 00 Brno, Czech Republic (opponent), represented by Propatent – Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)

a g a i n s t

Spühl GmbH, Grüntalstraße 23, 9300 Wittenbach, Switzerland (applicant), represented by Kraus & Weisert, Thomas-Wimmer-Ring 15, 80539 München, Germany (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 783 184 is partially upheld, namely for the following contested goods:

Class 6:        Metal coil springs, metal coil spring assemblies and pocketed spring assemblies comprised of encased grouped metal springs, in particular metal springs for the production of mattresses, reclining and seating furniture.

2.        European Union trade mark application No 15 396 724 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 396 724, namely against all the goods in Class 6, some goods in Class 7 and some services in Class 37. The opposition is based on, inter alia, Czech trade mark registration No 187 269. 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.

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 Czech trade mark registration No 187 269.

1. The goods and services

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

Class 6:        Cables and wires of metal no-electric, locksmith and tinsmith requisites of metal, ores.

Class 37:        Assemblage and maintaining of reserved electric equipment.

The contested goods and services are the following:

Class 6:        Metal coil springs, metal coil spring assemblies and pocketed spring assemblies comprised of encased grouped metal springs, in particular metal springs for the production of mattresses, reclining and seating furniture.

Class 7:        Machinery and parts for the production of springs, pocket springs, innerspring units; pocket spring machines; spring coiling machines; wire forming machines; assembly machines for innerspring units; automatic wire straighteners; pneumatic clipping machines; pneumatic bending machines; pocket strand layering machines; frame bending machines.

Class 37:        Installation and repair services for machinery for the production of springs, pocket springs, innerspring units; installation and repair services for wire forming machines, assembly machines for innerspring units, automatic wire straighteners, pneumatic clipping machines, pneumatic bending machines, pocket strand layering machines and frame bending machines.

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 ‘in particular’, used in the applicant list of goods in Class 6, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 6

The contested metal coil springs, metal coil spring assemblies and pocketed spring assemblies comprised of encased grouped metal springs, in particular metal springs for the production of mattresses, reclining and seating furniture are similar to the opponent’s wires of metal no-electric. All these goods are items of metal hardware and the relevant public may expect them to be produced by, or under control of, the same manufacturer. Furthermore, the goods can target the same end users and be distributed by the same distribution channels (hardware shops).

Contested goods in Class 7

The contested machinery and parts for the production of springs, pocket springs, innerspring units; pocket spring machines; spring coiling machines; wire forming machines; assembly machines for innerspring units; automatic wire straighteners; pneumatic clipping machines; pneumatic bending machines; pocket strand layering machines; frame bending machines are power-driven devices that perform specific tasks (particular kinds of work). As mentioned in the opponent’s observations, the contested goods indicated above are used for creating, processing and working with metal goods, mainly wires and springs. However, the mere fact that the above indicated machines can use the opponent’s goods as a raw material in manufacturing springs or other metal goods is not sufficient to render them similar to the opponent’s goods in Class 6. The goods under comparison do not belong to the same industrial sectors and the public would not expect them to be produced by, or under control of, one and the same manufacturer. Furthermore, the purpose of the contested goods is highly specific and totally different from the purpose of the opponent’s goods in Class 6. They have different distribution channels and are neither interchangeable nor in competition with one another. Therefore, they are dissimilar.

The contested goods in Class 7 are, furthermore, dissimilar to the opponent’s services in Class 37. As a general rule, goods and services have different natures. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. In the present case, the opponent’s services refer to assemblage and maintaining of reserved electric equipment, whereas the contested goods are specific kinds of machinery (power-driven devices). They have completely different purposes, natures and relevant consumers. Furthermore, they are not complementary and the relevant consumers will not think that responsibility for the production of the contested goods in Class 7 and provision of the opponent’s services in Class 37 lies with the same undertaking.

Contested services in Class 37

The contested installation and repair services for machinery for the production of springs, pocket springs, innerspring units; installation and repair services for wire forming machines, assembly machines for innerspring units, automatic wire straighteners, pneumatic clipping machines, pneumatic bending machines, pocket strand layering machines and frame bending machines are very specialised services related to the installation and repair of particular kinds of machinery. The installation, maintenance and repair of virtually all goods are classified in Class 37. However, as mentioned before, services are not regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification.

In the present case, the opponent’s services relate to the act or process of assembling essentially electric equipment, keeping it in good condition by regularly checking it and repairing it when necessary, whereas the contested services relate to the acts of installing and repairing specific machinery. Although, in general, there may be an overlap between the process of assembling and installation (to the extent that installation can include assembling) and between maintenance and repair (to the extent that maintenance can include repair), the opponent’s services are related to the field of electricity (electronics), whereas the contested services are related to the field of machinery; the opponent’s services are provided by electrical engineers or specialists, whereas the contested services are provided by mechanical engineers or specialists.

Therefore, the earlier assembling and maintenance of reserved electric equipment and the contested installation and repair of power-driven specific machines are services related to different sectors of industry; they require different specialists with different knowledge, experience and professional skills (in the field of electric and electronics for the opponent’s services; in the field of mechanics and machinery for the contested services). Moreover, they target different relevant publics and are usually provided by different undertakings. Furthermore, they are neither complementary nor in competition with each other. The mere fact that they overlap to some extent in their nature is not sufficient in itself to make them similar. Therefore, they are dissimilar.

The contested services are also dissimilar to the opponent’s goods in Class 6, since (as mentioned above when comparing the contested goods in Class 7 with the opponent’s services in Class 37) they have completely different purposes, natures, origins and relevant consumers, and are neither complementary nor in competition with each other.

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 and at business consumers. Although these goods will not be purchased on a daily basis, they are not particularly specialised, sophisticated or expensive. Therefore, the degree of attention is considered average.

3. The signs

FIDES
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 a word mark, ‘FIDES’. The contested sign is a figurative mark, composed of the verbal element ‘FIDES’, depicted in a bold standard typeface, and a figurative element depicting an inverted triangle on the top of the letter ‘S’. The word ‘FIDES’ in both signs is meaningless for the relevant public and, in relation to the relevant goods, its distinctiveness is seen as normal. The figurative element of the contested sign, however, is not distinctive, since it consists of a simple geometric shape.

Neither of the marks has any element that could be considered more dominant than other elements.

Visually, the signs coincide in the word ‘FIDES’, which constitutes the earlier mark and the verbal element of the contested sign in their entirety. The signs differ in the figurative element and the typeface of the contested sign. However, taking into account the non-distinctive nature of this element, it will not create a significant difference between the marks. Therefore, the signs are considered visually similar to a high degree.

Aurally, the earlier mark and the contested sign will be pronounced as /FIDES/. The figurative element of the triangle will not be referred to aurally by the relevant public. Therefore, the signs are aurally identical.

Conceptually, the word ‘FIDES’, present in both signs, has no meaning for the public in the relevant territory. The figurative element of the contested sign will be perceived as a triangle. However, this element is not distinctive and this sole difference does not have any relevant impact on the comparison of the marks. Since a conceptual comparison of meaningless elements 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.

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 indicated above, the contested goods in Class 6 are similar to the opponent’s goods, and the contested goods and services in Classes 7 and 37 are dissimilar to the opponent’s goods and services. The relevant goods target the public at large and business consumers with an average degree of attention. The distinctiveness of the earlier mark is average.

As indicated in section c), the signs are visually highly similar and aurally identical. The difference (including conceptual) arising from the non-distinctive figurative element of the contested sign cannot create significant differences between the signs and counteract the visual similarity and aural identity between their verbal elements ‘FIDES’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Czech trade mark registration.

It follows 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 and services are dissimilar. 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks: Czech trade mark registrations No 186 003 for the word mark ‘FIDES’ and No 186 460 for the figurative mark . However these earlier rights invoked by the opponent cover the following: telecommunication equipment, preventive systems, fire-stopping systems, information systems, industrial television systems, computer equipment, office technology including accessories ranked in the 9th class, electronic components and equipment, especially for communicative and mobile technology including mounting and service in mentioned area, data transmission by means of software, security guard of belongings and persons by technical and physical substances. These goods and services are clearly different from those for which registration of the contested sign is sought, because they differ in their nature and purpose, are provided by different undertakings and target different consumers. Moreover, they have different distribution channels and are neither interchangeable nor in competition with those of the contested sign. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; and no likelihood of confusion exists with respect to those goods and services.

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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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ana MUÑIZ RODRÍGUEZ

Rasa BARAKAUSKIENE

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.