OPPOSITION No B 2 785 866
Sistemcam, S.A., Almagro, 8, 28010 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (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 18/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 785 866 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 396 724. The opposition is based on Spanish trade mark registration No 2 512 766. The opponent invoked Article 8(1)(a) and (b) EUTMR.
The signs
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FIDES |
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Earlier trade mark |
Contested sign |
- The goods and services
The goods on which the opposition is based are the following:
Class 9: Recorded computer programs.
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, mattresses and cushions; pocket spring machines; spring coiling machines; wire forming machines; assembly machines for innerspring units; packing machinery; automatic wire straighteners; pneumatic clipping machines; pneumatic bending machines; roll packing machines; roll pack opening machines; pocket strand layering machines; frame bending machines.
Class 20: Mattresses; spring mattresses.
Class 37: Installation and repair services for machinery for the production of springs, pocket springs, innerspring units, mattresses and cushions; installation and repair services for wire forming machines, assembly machines for innerspring units, packing machinery, automatic wire straighteners, pneumatic clipping machines, pneumatic bending machines, roll packing machines, roll pack opening 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’s 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 (see the judgment of 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 Classes 6, 7 and 20
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 in Class 6 are mechanical devices formed from a metal wire or rod twisted in a spiral shape, which are typically used to store energy and subsequently release it, to absorb shock or to maintain a force between contacting surfaces.
The contested machinery and parts for the production of springs, pocket springs, innerspring units, mattresses and cushions; pocket spring machines; spring coiling machines; wire forming machines; assembly machines for innerspring units; packing machinery; automatic wire straighteners; pneumatic clipping machines; pneumatic bending machines; roll packing machines; roll pack opening machines; pocket strand layering machines; frame bending machines in Class 7 are power-driven devices that perform specific tasks (particular kinds of work).
The contested mattresses; spring mattresses in Class 20 are large flat pads with a strong cover, filled with straw, foam rubber, etc. and often incorporating coiled springs, used as a bed or as part of a bed.
The opponent’s recorded computer programs in Class 9 are a set of coded instructions that enables a machine, especially a computer, to perform a desired sequence of operations.
All of the contested goods in Classes 6, 7 and 20 indicated above have completely different natures, purposes and methods of use from the opponent’s goods in Class 9. They satisfy different needs, are produced by different companies, are distributed thorough different commercial channels, target different consumers and are neither complementary nor in competition with each other. Therefore, they are dissimilar.
Contested services in Class 37
The contested installation and repair services for machinery for the production of springs, pocket springs, innerspring units, mattresses and cushions; installation and repair services for wire forming machines, assembly machines for innerspring units, packing machinery, automatic wire straighteners, pneumatic clipping machines, pneumatic bending machines, roll packing machines, roll pack opening machines, pocket strand layering machines and frame bending machines are installation and repair services for the machines listed in Class 7.
By their nature, goods are generally dissimilar to services. 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. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.
In the present case, the opponent’s recorded computer programs in Class 9 have nothing in common with the contested services indicated above. They have completely different purposes, natures, origins and relevant consumers, and are neither complementary nor in competition with each other. Therefore, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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 because the goods and services 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.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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Lena FRANKENBERG GLANTZ |
Rasa BARAKAUSKIENE |
Jessica LEWIS |
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.