OPPOSITION No B 2 385 352
Mat Mischanlagentechnik GmbH, Zweigniederlassung der Bauer Maschinen GmbH, Illerstraße 6, 87509 Immenstadt, Germany (opponent), represented by Weber & Heim Patentanwälte Partnerschaftsgesellschaft Mbb, Irmgardstr. 3 81479 München, Germany (professional representative)
a g a i n s t
“Мат” ООД, ж.к. Гарова Промишлена ЗОНА, 7200 Разград, Bulgaria (applicant), represented by Zlatarevi Patent and Trademark, Dianabad 31b, b-1/14 1172 Sofia, Bulgaria (professional representative).
On 14/07/2017, the Opposition Division takes the following
1. Opposition No B 2 385 352 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 598 645 for the figurative sign, namely against some of the goods in Classes 6 and 11 and some of the services in Class 37. However, the application has been the subject of two additional oppositions, which have resulted in the goods and services of the application being limited to Class 6. The opposition will therefore proceed against some of the goods in Class 6. The opposition is based on European Union trade mark registration No 3 531 621 for the word ‘MAT’. The opponent invoked Article 8(1)(b) EUTMR.
Proof of use of the earlier European Union trade mark registration No 3 531 621 was requested by the applicant. However, at this point the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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 goods
The goods on which the opposition is based are the following:
Class 7: Construction machines, in particular for special civil engineering works; mixer machines and mixer installations, in particular continuous mixers and batch mixers; stationary and mobile mixer installations for processing building materials, in particular suspensions, concrete, mortar and flooring material; stirring machines and agitators, in particular for mixer installations; machine housings for mixer installations; pumps, in particular hose pumps, high-pressure piston pumps and high-pressure plunger pumps for building materials; injection installations for special civil engineering works, in particular for mud flushing, cavity filling and high-pressure injection; machines and installations constructed therefrom for processing building materials, in particular drilling fluids, support suspensions and flocculants; rolling and winding devices for construction machines; hydraulic transmissions, hydraulic pressure generators, hydraulic units.
Class 9: Scales for building materials, dosage dispensers for building materials, control apparatus, measuring apparatus and regulating apparatus for construction machines.
Class 11: Decanter installations.
The contested goods are the following:
Class 6: Ducts of metal for ventilating and air conditioning installations; clevises of metal; clips of metal for cables and pipes; cane clips of metal; structures and transportable buildings of metal; prefabricated metal constructions; structures of metal; modular metallic structures.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, 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).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 contested goods are not for day-to-day use but have a specialised technical nature. The contested goods are mainly metal building materials and simple products made of metal. The opponent’s goods are power-driven machines and their components in Class 7, measuring and controlling apparatus in Class 9 and apparatus for environmental control in Class 11. These goods have nothing relevant in common with the contested goods in Class 6. Contrary to the opponent’s argument, the fact that some of the earlier goods are made of metal does not imply that they are structures of metal and the fact that machine housings for mixer installations or rolling and winding devices for construction machines and hydraulic units are prefabricated does not mean that they are prefabricated metal constructions. The goods have nothing relevant in common, as they do not have the same producers and are not complementary in the sense that one is indispensable for the use of another. The contested goods do not belong to the same branch of industry and the public would not expect them to be produced by, or under the control of, the same manufacturer. Furthermore, the purposes of the conflicting goods are highly specific and each purpose is different. They are neither interchangeable nor in competition with one another. They are, therefore, dissimilar.
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 opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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
Cristina CRESPO MOLTO
Loreto URRACA LUQUE
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.