KONETOOL | Decision 2659095 – Trademarkers Legal Blog

OPPOSITION No B 2 659 095

Kone Corporation, Kartanontie 1, 00330 Helsinki, Finland (opponent), represented by Roschier Brands, Attorneys Ltd., Keskuskatu 7 A, 00100 Helsinki, Finland (professional representative)

a g a i n s t

Kone Carbide Tool Ltd., No. 777, Eastern Section of Haike Road, Chengdu Cross-Strait Scientific Industry Development Park, Wenjiang District, Chengdu, Sichuan, People’s Republic of China (applicant), represented by Ufficio Internazionale Brevetti Ing. C. Gregorj S.R.L., Via Muratori 13/B, 20135 Milano, Italy (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 659 095 is upheld for all the contested goods.

2. European Union trade mark application No 14 862 197 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 of European Union trade mark application No 14 862 197. The opposition is based on, inter alia, European Union trade mark registration No 11 776 879. 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.

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 European Union trade mark registration No 11 776 879.

The goods and services

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

Class 6: Metal building materials or building materials predominantly of metal; Building panels of metal; small items of metal hardware; goods of common metal not included in other classes; Doors of metal or predominantly of metal included in this class, including sliding doors and gates, revolving doors and gates, turnstiles, roller doors, folding doors and swing-up doors and their components and parts; building fittings and door, gate and window furniture included in this class, including fittings for windows, doors and gates of metal, door hinges, door handles, door bolts, door knobs and door frames; metallic building fittings and door, gate and window furniture included in this class, including door hinges, door handles, door bolts, door knobs; Metal ropes, belts and cables (non-electric) to be used in connection with elevators, automatic doors and escalators.

Class 7: Lifting and transporting equipment, namely elevators, escalators, moving walkways, as well as components, parts and fittings, for all the aforesaid goods; Hydraulic and pneumatic door openers and closers (parts of machines) for elevator and parking hall doors, and their control units, as well as components, parts and fittings for the aforesaid goods; Machines, namely automatic door operators and their control units for elevator and parking hall doors, as well as components, parts and fittings for aforesaid goods; Electric door, turnstile and gate openers and closers for elevator and parking hall doors and gates and their components, parts and fittings; Electric and electronic apparatus and installations for automatic doors and gates for elevators and parking halls, including automatic door drive gear; Automatic door opening and closing apparatus for automatic doors and gates for elevators and parking halls; Automatic barriers and gate drive gear for elevators and parking halls, as well as components, parts and fittings for all the aforesaid goods; Power units and motors to be used in lifting and transporting equipment, namely elevators, escalators, moving walkways as well as components, parts and fittings for all the aforesaid goods; Power units and motors to be used in automated doors and gates for elevators and parking halls; Non-metallic cables, belts and ropes for elevators, escalators and moving walkways.

Class 9: All kinds of measuring and control systems and their components, parts and fittings in connection with elevators, escalators and moving walkways; apparatus and installations for access control, access control systems, electronic time keeping systems in connection with doors, elevators, escalators and moving walkways, as well as components, parts and fittings for all the aforesaid goods; Computer chips and other electronic identification devices and cards in connection with elevators, escalators and moving walkways; electronic remote controls for doors, turnstiles and gates; Electronic indoor and outdoor guidance and navigation apparatuses and systems in connection with doors, elevators, escalators and moving walkways, as well as their components, parts and fittings; Electronic equipment for advertising, such as advertising signs and luminous signs to be used on doors, elevators, escalators and moving walkways; Computer software for monitoring and controlling elevators, escalators, moving walkways, automated doors, turnstiles and gates; computer software for monitoring and controlling security and access control systems in connection with doors, elevators, escalators and moving walkways; Computer software for indoor and outdoor guidance and navigation systems in connection with doors, elevators, escalators and moving walkways; computer software for designing conveying equipment, routes and systems; Electronic alarms and emergency phones in connection with doors, elevators, escalators and moving walkways; warning devices, fire alarms, burglar alarms, emergency calls, misuse alarms and malfunction alarms all the afore mentioned in connection with doors, elevators, escalators and moving walkways; Computer software and applications for interfacing mobile phones, smart phones and mobile computers with elevators, automatic doors, turnstiles, gates, indoor and outdoor guidance and navigation systems, access control systems and time keeping systems; Installations for monitoring human activity in connection with elevators, escalators and moving walkways.

Class 19: Building materials (non-metallic or predominantly non-metallic) in connection with doors, elevators, escalators and moving walkways, non-metallic gates, non-metallic doors included in this class, including sliding doors, revolving doors, turnstiles, roller doors, folding doors and swing-up doors, flexible hanging and strip doors; Door frames; Ceiling, wall and floor panels, not of metal in connection with doors, elevators, escalators and moving walkways.

Class 20: Non-metallic door and window furniture including door hinges, door handles, door bolts, door knobs, fittings for windows and doors.

Class 37: Installation, maintenance, repair and modernization of elevators, escalators and moving walkways as well as associated components for such equipment; Installation, maintenance, repair and modernization services of doors, turnstiles and gates and their associated components and spare parts; Installation, maintenance, repair and modernization services of access control, time keeping and security systems, apparatus and installations and their parts in connection with doors, elevators, escalators and moving walkways; Installation, maintenance, repair and modernization services of electronic indoor and outdoor guidance and navigation systems, apparatus and installations and their parts in connection with doors, elevators, escalators and moving walkways; Installation, maintenance, repair and modernization services of electronic equipment and systems for advertising, such as advertising signs and luminous signs used in connection with doors, elevators, escalators and moving walkways.

Class 45: Security services for the protection of property and individuals in connection with doors, elevators, escalators and moving walkways; Access control services for buildings, parts of buildings, doors, turnstiles, gates, elevators, escalators and moving walkways; Rental of security equipment in connection with doors, elevators, escalators and moving walkways; Rental of access control equipment in connection with doors, elevators, escalators and moving walkways; Opening of security locks; Monitoring of security locks; Security consultancy in connection with doors, elevators, escalators and moving walkways.

The contested goods are the following:

Class 6: Steel, unwrought or semi-wrought; pipes of metal; doors of metal; iron wire; washers of metal; fittings of metal for doors; hardware of metal, small; locks of metal, other than electric; memorial plates of metal; soldering wire of metal.

Class 7: Agricultural machines; knives [parts of machines]; blades [parts of machines]; tools [parts of machines]; saw benches [parts of machines]; dyeing machines; meat choppers [machines]; beverage preparation machines, electromechanical.

Class 8: Sharpening stones; abrading instruments [hand instruments]; grindstones [hand tools]; picks [hand tools]; garden tools, hand-operated; instruments and tools for skinning animals; manicure sets; scraping tools [hand tools]; graving tools [hand tools]; knives.

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 ‘including’, used in the opponent’s list of goods, 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).

However, the term ‘namely’, used in the opponent’s list of goods 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.

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 steel, unwrought or semi-wrought overlaps with the opponent’s building materials predominantly of metal. Therefore, they are identical.

Doors of metal are identically contained in both lists of goods.

The contested pipes of metal; iron wire; washers of metal; fittings of metal for doors; hardware of metal, small; locks of metal, other than electric; memorial plates of metal; soldering wire of metal are included in the broad categories of the opponent’s building materials predominantly of metal; small items of metal hardware; goods of common metal not included in other classes. Therefore, they are identical.

Contested goods in Class 7

The contested agricultural machines; knives [parts of machines]; blades [parts of machines]; tools [parts of machines]; saw benches [parts of machines]; dyeing machines; meat choppers [machines]; beverage preparation machines, electromechanical are dissimilar to all the opponent’s goods and services. The opponent’s lists of goods and services are restricted to elevators, their systems, parts of them and services provided in relation thereto. The contested goods are different types of machines and parts of machines with no connection with the opponent’s goods. They are provided by different undertakings and target different publics. They are neither complementary nor in competition.

Contested goods in Class 8

The contested sharpening stones; abrading instruments [hand instruments]; grindstones [hand tools]; picks [hand tools]; garden tools, hand-operated; instruments and tools for skinning animals; manicure sets; scraping tools [hand tools]; graving tools [hand tools]; knives are dissimilar to all the opponent’s goods and services. The opponent’s lists of goods and services are restricted to elevators, their systems, parts of them and services provided in relation thereto. The contested goods are different tools with no connection with the opponent’s goods. They are provided by different undertakings, target different publics and are sold through different distribution channels. They are not in competition.

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 are directed at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to higher than average, depending on the goods and services in question.

The signs

KONE

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 a word mark, ‘KONE’. The Finnish-speaking part of the public will understand this word, which means ‘elevator’ in Finnish, and the Bulgarian-speaking part of the public will understand it as ‘horses’; it has no meaning for the rest of the relevant public. Therefore, the sign has a normal degree of distinctiveness for the goods at issue.

The contested sign is a figurative sign, . The sign as a whole has no meaning for the relevant public, but due to its script, part of the relevant public (mainly the English-, Finnish- and Bulgarian-speaking parts) will probably dissect the sign into two words, ‘Kone’ and ‘Tool’. As explained above, ‘Kone’ has a meaning for only the parts of the relevant public that speak Finnish and Bulgarian, and it has no meaning for the rest of the public. Despite the larger size of the two letters ‘KO’ of the contested sign, as the font is quite standard, it will still be read as ‘Kone’. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘Tool’ will be understood as ‘a thing used to help perform a job’ (information extracted from Oxford Dictionaries on 13/03/2017 at https://en.oxforddictionaries.com/definition/tool) by the part of the relevant public that speaks English. Therefore, the element ‘Tool’ of the contested sign will be associated with ‘instruments’. Bearing in mind that some of the relevant goods are tools and instruments, this element is non-distinctive for this part of the public and for these goods, namely for the contested goods in Class 8.

For the rest of the relevant public, the element ‘Tool’ has no meaning and is, therefore, distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the identical string of letters ‘KONE’, which constitute the beginning of the contested sign and the entire earlier sign. However, they differ in the figurative script and additional letters, ‘Tool’, of the contested sign.

Therefore, 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 element ‛KONE’, which constitutes the entire earlier sign and the beginning of the contested sign, and which will have a greater impact on the public than the other element of the contested sign. The pronunciation differs in the sound of the element ‛Tool’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the Finnish- and Bulgarian-speaking parts of the public, as the signs will be partly associated with the same meaning (that of ‘Kone’), to this extent the signs are conceptually similar to an average degree.

For another part of the public in the relevant territory, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the English-speaking part of the relevant public, although the signs as a whole do not have any meaning, the element ‘Tool’ in the contested sign will be associated with the meaning given above, which is not distinctive for the contested goods in Class 8. The earlier mark has no meaning for this part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar.

The signs are visually and aurally similar to an average degree and conceptually similar to an average degree for part of the public. The marks coincide in the string of letters ‘KONE’, which is the only element of the earlier sign and the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the initial part the one that first catches the attention of the reader. Consequently, the fact that the first four letters of the contested sign are identical to the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.

It is common for undertakings active on the market to use sub-brands, that is, signs that derive from a principal mark and that have an element in common, to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical goods designated by the conflicting signs as product lines that come from the same undertaking or from economically linked undertakings. The relevant public might assume that the contested sign, , is a sub-brand of the earlier mark, ‘KONE’.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 776 879.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

Since the opposition is partially 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 reputation as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 10 590 495 for the word mark ‘KONE 4L’, registered for the following goods:

Class 7: Elevators, escalators, moving walkways, parts and fittings for all the aforesaid goods; non-metallic cables and ropes for lifts.

Class 22: Non-metallic cables and ropes.

European Union trade mark registration No 11 634 326 for the word mark ‘KONE UltraRope’, registered for the following goods:

Class 6: Metallic ropes and cables.

Class 7: Elevators, escalators, moving walkways, parts and fittings for all the aforesaid goods; non-metallic cables and ropes for lifts.

Class 22: Non-metallic cables and ropes.

European Union trade mark registration No 11 786 381 for the figurative mark , registered for the following goods:

Class 6: Metal building materials or building materials predominantly of metal; Building panels of metal; small items of metal hardware; goods of common metal not included in other classes; doors of metal or predominantly of metal included in this class, including sliding doors and gates, revolving doors and gates, turnstiles, roller doors, folding doors and swing-up doors and their components and parts; building fittings and door, gate and window furniture included in this class, including fittings for windows, doors and gates of metal, door hinges, door handles, door bolts, door knobs and door frames; metallic building fittings and door, gate and window furniture included in this class, including door hinges, door handles, door bolts, door knobs. Metal ropes, belts and cables (non-electric).

Class 7: Lifting and transporting equipment, such as elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems, as well as components, parts and fittings, for all the aforesaid goods. Hydraulic and pneumatic door openers and closers (parts of machines) and their control units, as well as components, parts and fittings for the aforesaid goods; machines, namely automatic door operators and their control units, as well as components, parts and fittings for aforesaid goods. Electric door, turnstile and gate openers and closers and their components, parts and fittings; electric and electronic apparatus and installations for automatic doors and gates, including automatic door drive gear; automatic door opening and closing apparatus for automatic doors and gates; automatic barriers and gate drive gear, as well as components, parts and fittings for all the aforesaid goods. Power units and motors to be used in lifting and transporting equipment, such as elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems, as well as components, parts and fittings for all the aforesaid goods. Power units and motors to be used in automated doors and gates non-metallic cables, belts and ropes for elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems.

Class 9: All kinds of measuring and control systems and their components, parts and fittings in connection with lifting and transporting equipment, such as elevators, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems; apparatus and installations for access control, access control systems, electronic time keeping systems, as well as components, parts and fittings for all the aforesaid goods; Computer chips and other electronic identification devices and cards; electronic remote controls for doors, turnstiles and gates; Electronic indoor and outdoor guidance and navigation apparatuses and systems, as well as their components, parts and fittings; Electronic equipment for advertising, such as advertising signs and luminous signs; Computer software; Computer software for monitoring and controlling elevators, escalators, moving walkways, automated doors, turnstiles and gates; computer software for monitoring and controlling security and access control systems; Computer software for indoor and outdoor guidance and navigation systems; computer software for designing conveying equipment, routes and systems; Electronic alarms and emergency phones; warning devices, fire alarms, burglar alarms, emergency calls, misuse alarms and malfunction alarms; Computer software and applications for interfacing mobile phones, smart phones and mobile computers with elevators, escalators, automatic doors, turnstiles, gates, indoor and outdoor guidance and navigation systems, access control systems and time keeping systems; Installations for monitoring human activity.

Class 37: Installation, maintenance, repair and modernization of all kinds of lifting and transporting equipment, such as elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems, as well as associated components for such equipment; installation, maintenance, repair and modernization of doors, turnstiles and gates and their associated components and spare parts; Installation, maintenance, repair and modernization of access control, time keeping and security systems, apparatus and installations and their parts. Installation, maintenance, repair and modernization of electronic indoor and outdoor guidance and navigation systems, apparatus and installations and their parts; Installation, maintenance, repair and modernization of electronic equipment and systems for advertising, such as advertising signs and luminous signs.

Benelux trade mark No 1 270 923 for the word mark ‘KONE’, registered for the following goods:

Class 7: Lifting and transporting equipment, such as elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems, as well as components, parts for all the aforesaid goods; Hydraulic and pneumatic door openers and closers (parts of machines) and their control units, as well as components, parts and fittings for the aforesaid goods; machines, namely automatic door operators and their control units, as well as components and parts for aforesaid goods; Mechanic opening and closing equipment for doors, revolving doors and gates as well as components and parts therefor; electric and electronic apparatus and installations for automatic doors and gates, namely automatic door drive gear; automatic door opening and closing apparatus for automatic doors and gates; automatic barriers and gate drive gear, as well as components and parts for all the aforesaid goods; motors to be used in lifting and transporting equipment, such as elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems, as well as components, parts for all the aforesaid goods. Power units and motors to be used in automated doors and gates, non-metallic cables, belts and ropes for elevators, elevating apparatus, escalators, moving walkways and other vertical, horizontal and inclined conveyor systems.

Having compared these goods and services with the remaining goods and services in Classes 7 and 8, for which the opposition has been rejected on the basis of the earlier right already examined, the Opposition Division considers that these goods and services are also dissimilar. The purposes, relevant public and providers of all of the opponent’s goods and services are different from those of the contested goods and services. Since these goods and services have different natures and purposes, as well as different distribution channels and sales outlets, and are not in competition or complementary, they are dissimilar.

The other earlier rights cover the same or a narrower scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The Opposition Division will now examine the opposition based on Article 8(5) EUTMR in relation to the dissimilar goods, for which there is neither identity nor likelihood of confusion.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 11 776 879, for which the opponent claimed repute for the goods and services in Classes 7 and 8, found to be dissimilar under Article 8(1)(b) EUTMR.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation, in particular in the territories of Estonia, Sweden and Finland.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 30/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 6: Doors of metal or predominantly of metal included in this class, including sliding doors and gates, revolving doors and gates, turnstiles, roller doors, folding doors and swing-up doors and their components and parts; building fittings and door, gate and window furniture included in this class, including fittings for windows, doors and gates of metal, door hinges, door handles, door bolts, door knobs and door frames; metallic building fittings and door, gate and window furniture included in this class, including door hinges, door handles, door bolts, door knobs; Metal ropes, belts and cables (non-electric) to be used in connection with elevators, automatic doors and escalators.

Class 20: Non-metallic door and window furniture including door hinges, door handles, door bolts, door knobs, fittings for windows and doors.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 20/09/2016, the opponent submitted the following evidence:

Annex No 2: the Finnish Patent and Registration Office’s List of Trademarks with Reputation, mentioning Kone as a company that has had a reputation in Finland for lifts, escalators, moving walkways, automatic doors and maintenance services related thereto since 2009.

Annex No 3: a printout in English from the website http://www.kone.com/en/company/history/ summarising the company’s history and activities.

Annex No 4: a printout in English from the website http://www.kone.com summarising the company’s history from 1996 to 2001 and the development of KONE UltraRope, a new high-rise elevator technology.

Annex No 5: a printout from the website http://www.kone.com/en/investors/kone-as-investment/default/ giving estimated figures for the elevator and escalator market for 2015. It states Kone’s share of the global market as 19%.

Annex No 6: a printout from the website http://www.t-media.fi/kone-ykkonenn/, in Finnish and translated into English, stating that Kone was number one in terms of trust and reputation in a ranking of Finnish companies in 2016. The translation into English states that the data come from a survey conducted yearly by T-Media.

Annex No 7: a printout of a press article from the website http://suomenkuvahlehti.fi/jutut/kotimaa/talous/tutkimus-porssiyhtioista-’teliasoneralla, in Finnish and translated into English, dated 19/09/2013, on Finnish companies’ brand value, stating that Kone has the strongest brand in the Helsinki Stock Exchange. According to research based on the ISO 10668 standard, Kone scored 5.8 on a scale of 1-7.

Annex No 8: a printout in English from the website http://www.kone.com/en/references describing elevators installed under the trade mark ‘KONE’ in reference buildings around the world between 2011 and 2016.

Annex No 9: a printout in English from the website http://www.kone.com/en/press/press/kone-in-the-top-50-of-the-forbes-list, regarding an article published in 2015 stating the inclusion of Kone in the top 50 of the Forbes list of the World’s Most Innovative Companies. In 2015, Kone was ranked 48th among the top 100 most innovative companies in the world. Out of all the European companies listed in 2015, Kone was ranked fifth.

Annex No 10: Kone has been included in the Forbes list of the World’s Most Innovative Companies.

Annex No 11: a list of KONE trade marks, with data about the countries where they are registered and the classes of goods and services for which they are registered.

Annex 12: a printout in English from the website http://www.kone.com/en/solutions/designs/awards regarding various design awards won by the brand ‘KONE’ between 2012 and 2014 for elevator design.

The documents submitted, especially the Finnish Patent and Registration Office’s List of Trademarks with Reputation mentioning Kone as a company with a reputation, the survey conducted yearly by T-Media mentioning Kone as number one in terms of trust and reputation in a ranking of Finnish companies in 2016, and the various articles stating the reputation of Kone’s brand, prove the reputation in Finland of the trade mark ‘KONE’ during the relevant period.

The information about Kone’s share of the elevator and escalator market for 2015, together with other items of the evidence (information on the design awards won by Kone and information on the elevators installed under the trade mark ‘KONE’ in reference buildings around the word between 2011 and 2016), confirms the mark’s position in the market and its continuous use for some of the goods and services for which it is registered.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in Finland for some of the goods and services for which the opponent has claimed reputation, namely lifts, escalators, and maintenance services related thereto.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). The territorial borders of the Member States should be disregarded when assessing the reputation of a trade mark in the Union; in territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but that of markets. Therefore, the reputation of the trade mark ‘KONE’ in only part of the European Union, in this case Finland, is sufficient to substantiate a claim of reputation for a European Union trade mark.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to lifts, escalators, and maintenance services related thereto (some of the goods and services in Classes 6, 7, 9, 19 and 37), whereas there is little or no reference to the remaining goods. This is clear, for example, from the market share report and press articles, where only the former are mentioned.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The signs were found to be visually and aurally similar in the previous examination of the decision under Article 8(1)(b) EUTMR. The relevant public could regard the contested sign, , as a sub-brand of the earlier trade mark, ‘KONE’. The professional public, which is aware of the trade mark ‘KONE’ for elevators, could associate it with the contested mark for different goods, as it is not uncommon for large undertakings to expand into other, neighbouring, branches of industry. Even though some of the goods are dissimilar, these goods are produced in an industrial market close to the market of the opponent’s goods and services, so the public could think that the opponent has established a new range of goods, namely tools and other machines. Taking into account the established reputation and distinctiveness of the mark and the existence of other trade marks of the opponent, such as ‘KONE UltraRope’, which include the element ‘KONE’ and a second verbal element, the relevant public may establish a link between the opponent’s and the applicant’s marks.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that registration is sought for several goods in Classes 6, 7 and 8, that those goods are intended for industrial use and that therefore the target public is a part of the professional public. The question of unfair advantage should be assessed from the point of view of the professional public, which is considered to have an average degree of attention. As stated above, the fact that the relevant public is considered professional does not necessarily mean that the degree of attention is high and, in any case, a likelihood of confusion can exist despite a high degree of attention

The opponent further claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

As seen above, the earlier trade mark was found to have a reputation for:

Class 7: Lifting and transporting equipment, namely elevators, escalators, moving walkways, as well as components, parts and fittings, for all the aforesaid

Class 9: All kinds of measuring and control systems and their components, parts and fittings in connection with elevators, escalators and moving walkways;

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

∙ The opponent’s trade mark is considered a mark with a reputation in Finland and, thus, within the EU, in addition to which the mark enjoys widespread recognition throughout the urbanised world. Therefore, and due to the high degree of similarity, the use of the applicant’s mark will bring the opponent’s mark ‘KONE’ to the minds of the relevant consumers.

∙ The opponent’s trade marks have a considerable reputation, especially in the elevator and escalator industry. The competition in that field of business is growing steadily as the global trend of urbanisation continues. The relevant public is able to connect the dominant and distinctive part, ‘KOne’, of the applicant’s trade mark with the opponent’s trade marks ‘KONE’. Therefore, the highly similar distinctive and dominant element ‘KOne’ will take unfair advantage of the well-established fame and repute of the opponent’s trade marks ‘KONE’.

It has been established that the opponent’s trade mark ‘KONE’ has a reputation in the EU market for the industry sector related to lifts, escalators, and maintenance services related thereto. Trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. The stronger the distinctive character of the earlier mark, the more likely it is that, encountering a later identical or similar mark, the relevant public will associate it with that earlier mark. The opponent’s trade mark ‘KONE’ has a leading position in its sector; therefore, the target professional public, familiar with the trade mark, may be likely to associate the contested sign, , with the earlier trade mark, ‘KONE’, and attribute the reputation for good qualities and expertise earned by the opponent to the goods of the contested sign. Therefore, the contested sign will take advantage of the attractiveness of the earlier right by designating its goods with a sign that is similar to the opponent’s, which is known in the market, and thus misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. It will exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark to create and maintain the image of that mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

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

Gueorgui

IVANOV

Patricia

LÓPEZ FERNÁNDEZ

DE CORRES

Dorothee

SCHLIEPHAKE

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.

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