CANCELLATION No 13598 C (INVALIDITY)
Shenzhen Kstar Science & Technology Co., Ltd., 4/F, No.1 Bldg, Software Park, Keji C. Rd. 2nd, Hi-Tech Industrial Zone, Shenzhen, People’s Republic of China (applicant), represented by Janning & Repkow, Klausenberg 20, 86199 Augsburg, Germany (professional representative)
a g a i n s t
Doreen Knauer-Steinbrück, Mozartstraße 30, 71691 Freiburg, Germany (EUTM proprietor), represented by Müller, Clemens & Hach, Lerchenstr. 56, 74074 Heilbronn, Germany (professional representative).
On 13/07/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
REASONS
The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 14 956 973, namely against all the goods in Class 9. The application is based on international trade mark registration No 884 406 designating Bulgaria, Benelux, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Latvia, Hungary, Malta, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for the figurative mark . The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion since the goods under comparison are similar and the signs are visually similar and aurally and conceptually identical.
The EUTM proprietor did not submit any arguments in reply.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 goods
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 goods on which the application is based are the following:
Class 9: Galvanic cells; battery chargers; accumulator boxes; computer peripheral devices; inverters (electricity); stabilized voltage power supply; commutators.
The contested goods are the following:
Class 9: Protective helmets, in particular bicycle, motorcycle, ski, snowboard and riding helmets; Visors (parts of protective helmets); Clothing for protection against accidents, in particular kidney belts and balaclavas, protective clothing for the police, military, fire brigade; Gloves for protection against accidents; Protective gloves for the police, military, fire brigade.
An interpretation of the wording of the contested list of goods is required to determine the scope of protection of these goods.
The term in particular used in the EUTM proprietor’s list of 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 (on the use of in particular see reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Moreover, according to Article 28(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.
The contested protective helmets, in particular bicycle, motorcycle, ski, snowboard and riding helmets are all those hard or padded protective hats, various types of which are worn when riding a bicycle, a motorcycle or when doing sports such as ski or snowboard; visors (parts of protective helmets) are movable parts of a helmet that can be pulled down to cover the face.
The contested clothing for protection against accidents, in particular kidney belts and balaclavas, protective clothing for the police, military, fire brigade; Gloves for protection against accidents; Protective gloves for the police, military, fire brigade are all those items which cover different parts of the human body intended to protect them against accidents to be worn especially by the police, soldiers or firemen.
On the other hand, the applicant’s galvanic cells are electrochemical cells that derive electrical energy from spontaneous redox reactions taking place within the cell; battery chargers are devices used to put energy into a secondary cell or rechargeable battery by forcing an electric current through it; accumulator boxes; inverters (electricity); stabilized voltage power supply; commutators are a variety of items used in the electricity field.
The applicant’s computer peripheral devices are defined as any auxiliary device such as a computer mouse or keyboard that connects to and works with the computer in some way.
In its observations, the applicant argues that the contested goods may be fitted with equipment that uses batteries/galvanic cells for their work protected by the applicant’s mark.
However, the Cancellation Division considers that the goods under comparison are manufactured by specialized companies in different fields. They differ in terms of their nature, purpose and method of use and they target different end consumers. They do not have the same distribution channels and are not in competition.
The goods are not complementary either since goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44) which is not the case here.
Therefore, they are dissimilar and the applicant’s claim is rejected as unfounded.
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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
|
Elisa ZAERA CUADRADO |
Carmen SÁNCHEZ PALOMARES |
Ana MUÑIZ RODRÍGUEZ |
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 Cancellation 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.