OPPOSITION No B 2 761 479
Cargotec Finland Oy, Ruskontie 55, 33710 Tampere, Finland (opponent), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative)
a g a i n s t
Erik Svensson, Pettersgatan 2, 692 38 Kumla, Sweden (applicant), represented by Carolina Lorenzatti, Hyttåsvägen 10, 691 80 Karlskoga, Sweden (professional representative).
On 19/06/2017, the Opposition Division takes the following
1. Opposition No B 2 761 479 is upheld for all the contested goods.
2. European Union trade mark application No 15 340 425 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 340 425. The opposition is based on, inter alia, European Union trade mark registration No 4 419 628. 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 European Union trade mark registration No 4 419 628.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine belts and couplings (except for land vehicles); loading and lifting cranes, hydraulic loaders, lifting machines and apparatus (except car lifts, in particular for workshops); hauling engines and apparatus; transmission components; loaders for harvesters; parts and fittings for the aforesaid goods not included in other classes.
Class 12: Motor vehicles, namely vehicles incorporating lifting apparatus and cranes; fork-lift trucks; replaceable vehicle platforms; vehicle chassis; traction vehicles, parts and fittings for the aforesaid goods not included in other classes.
Class 37: Repair and maintenance of machines, machine tools, motors and engines, machine belts and couplings, loading and lifting cranes, hydraulic loaders, lifting machines and apparatus, (except car lifts in particular for workshops); hauling engines and apparatus, transmission components, loaders for harvesters, motor vehicles, vehicles incorporating lifting apparatus and cranes, fork-lift trucks, replaceable vehicle platforms, vehicles chassis and traction vehicles; installation services for all the aforesaid goods.
The contested goods are the following:
Class 7: Pallet forks; Taps being parts of machines; Snap lock fasteners (parts of machines); Attachments for cranes; Grippers for cranes; Fork blades (parts of machines); Loader buckets for excavators; Components for excavators and buckets therefor; Loading cranes; Taps [machine tools]; Fasteners for machine tools; Snap lock fasteners for machine tools for mounting of fork blades (parts of machines) on wheel loader buckets; Fork blades (parts of machines).
Class 12: Parts and fittings for vehicles; Load carrying [lifting] attachments for motor vehicles; Forklifts, and structural parts therefor.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods (motor vehicles, namely vehicles incorporating lifting apparatus and cranes), is exclusive and restricts the scope of protection only to the specifically listed goods (vehicles incorporating lifting apparatus and cranes).
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 7
Loading cranes are identically contained in both lists of goods in Class 7.
The contested pallet forks are included in, or overlap with, the opponent’s lifting machines and apparatus (except car lifts, in particular for workshops). They are identical.
The contested attachments for cranes; grippers for cranes are included in the opponent’s parts and fittings for the aforesaid goods not included in other classes (relating to lifting machines and apparatus (except car lifts, in particular for workshops)) to the extent that cranes are lifting machines; therefore, they are identical.
The contested taps [machine tools] are included in the opponent’s machine tools and are identical.
The contested taps being parts of machines; snap lock fasteners (parts of machines); fasteners for machine tools; snap lock fasteners for machine tools for mounting of fork blades (parts of machines) on wheel loader buckets; fork blades (parts of machines) (listed twice) are included in the opponent’s parts and fittings for the aforesaid goods not included in other classes (related to machine tools) and are identical.
Excavators are used to dig the ground, be it made of earth, sand, gravel, etc. The earth, sand or gravel is then removed from the cavity with an excavator’s bucket. Excavators and cranes are used by companies in the building sector; they may be manufactured by the same undertakings and available through the same distribution channels. Those companies are likely to supply the related parts and components of those very specialised goods. Therefore, the contested loader buckets for excavators; components for excavators and buckets therefor are similar to the opponent’s parts and fittings for the aforesaid goods not included in other classes (related to loading and lifting cranes, hydraulic loaders, lifting machines and apparatus (except car lifts, in particular for workshops)).
Contested goods in Class 12
The contested parts and fittings for vehicles include, as a broader category, the opponent’s parts and fitting for the aforesaid goods not included in other classes (related to traction vehicles). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested forklifts include, as a broader category, or may even refer to the same goods as the opponent’s forklift trucks. These goods are identical. The contested structural parts therefor (related to forklifts) are similar to the opponent’s forklift trucks. These goods are usually available through the same distribution channels and target the same public. They are also complementary.
The contested load carrying [lifting] attachments for motor vehicles are similar to the opponent’s motor vehicles, namely vehicles incorporating lifting apparatus and cranes. The opponent’s vehicles are equipped with loading and lifting apparatus, which may be manufactured by the vehicle manufacturer itself. These goods are available from the same distribution channels and target the same public. They are also complementary.
- 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 or similar are mostly specialised goods directed at business customers in the sector of ware handling or building, who have specific professional knowledge or expertise or, more generally, whose activity requires moving/lifting wares. In particular, the opponent’s goods target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
The degree of attention will vary from average to higher than average depending on the intended use and/or price of the goods, and also bearing in mind that the use of these goods may involve safety issues.
- The signs
Earlier trade mark
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 figurative mark consisting of the verbal element ‘MULTILIFT’ in grey upper case letters and, before it, a figurative element depicting part of an elephant’s head, inside a square. Despite the figurative element being smaller than the verbal element, the latter does not clearly dominate the visual impression created by the mark. Therefore, this mark does not have a dominant element.
The contested trade mark is a figurative mark consisting of the verbal elements ‘Nordic’ and ‘Multilift’ in black title case letters over two lines. A rather sizeable cone-shaped figurative element formed of black balls connected by black rods, outlined in red, is placed to the left of the verbal elements. It resembles a molecular structure, but this concept may not come to the public’s mind in relation to the goods at issue, and it may be perceived simply as an abstract device. In terms of visual impact, neither the verbal element nor the figurative element clearly stands out. Therefore, there is no dominant element in the contested sign either.
When assessing the similarity of the signs, an analysis of whether the coinciding and differing components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these components have a lesser or greater capacity to indicate or rule out a common commercial origin.
Taking the above into account, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will understand the additional word ‘NORDIC’ of the contested sign and, accordingly, perceive it as a weak element, as will be explained below. This will be the case for, at least, the Spanish-, Czech-, German-, Dutch-, French-, Italian-, Polish-, Portuguese-, Romanian-, Swedish- and English-speaking parts of the public. The assessment below will focus on this public.
The element ‘NORDIC’ is weak for the public in question because it is an English adjective that indicates somebody/something coming from the North, usually the North of Europe. Therefore, it will be associated with the geographical provenance of the goods or their providers. Furthermore, the same or very similar words exist in the abovementioned languages (‘nórdico’ in Spanish, ‘nordický’ in Czech, ‘nordische’ in German, ‘Noordse’ in Dutch, ‘nordique’ in French, ‘nordico’ in Italian, ‘nordycki’ in Polish, ‘nórdico’ in Portuguese, ‘nordic’ in Romanian, ‘nordisk/Norden’ in Swedish) and speakers of those languages will therefore have the same perception of this element as English-speaking consumers.
Therefore, by focusing on the part of the public that attributes the abovementioned meaning to the verbal element ‘NORDIC’, the Opposition Division is examining the case in the light that is most favourable to the opponent, while not prejudicing the interests of the applicant, since a likelihood of confusion need not be established for the entire public. Indeed, 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 coinciding element of the signs, that is, the word ‘MULTILIFT’, does not exist as such in any language of the European Union, in particular those mentioned above, and is, therefore, an invented word.
However, it will be perceived by a large part of the public taken into consideration, especially the English-speaking public, as being formed of the Latin prefix ‘MULTI’, meaning ‘more than one; several’, and the English word ‘LIFT’, meaning ‘raise into the air from the ground, or to a higher position; to elevate, heave, hoist’. The Latin prefix is used as a combining form in the languages mentioned. Furthermore, as regards the word ‘LIFT’, it should be borne in mind that the relevant public is made up of professionals in the field of ware handling or building, who are highly likely to understand the English word ‘lift’, since it is directly related to their field of activity. It is also taken into account that the Swedish- and Dutch-speaking parts of the public usually have a good command of English.
Therefore, a significant part of the public will perceive the element ‘MULTILIFT’ in both signs as alluding to the fact that the goods at issue allow several loads to be lifted at the same time or a variety of different types of loads to be lifted. It is, however, an invented word with more distinctive character than the clearly meaningful and weak element ‘NORDIC’.
On the other hand, it is not excluded that a part of the non-English-speaking public, such as the French- or Spanish-speaking parts of the public, and even professionals in this part of the public, may not attribute a meaning to the verbal element ‘MULTILIFT’ as a whole. For this part of the public, the element ‘MULTILIFT’ clearly has an average degree of distinctive character.
The figurative elements of the signs refer to concepts that are not related to the goods at issue and therefore those elements fulfil a distinctive role in the signs. Nonetheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, it is considered that the distinctive character of the verbal elements of the signs, ‘MULTILIFT’ and ‘NORDIC MULTILIFT’, as a whole is not so low, even for the public that understands the previously indicated meanings, as to invalidate the abovementioned principle, also bearing in mind that the figurative elements are not particularly prominent in either sign.
In view of the above, the word ‘MULTILIFT’ is, in both signs – even where it is attributed the meaning of lifting simultaneously several or many different loads – the element to which the public will attribute most trade mark significance, as it is the main indication of the commercial origin of the goods at issue.
Visually, the signs coincide in the invented verbal element ‘MULTILIFT’, which the public considered will, for the reasons previously explained, perceive as being the element with the most trade mark value in both signs. The signs differ in their figurative elements and in the element ‘Nordic’ of the contested sign. Bearing in mind the reduced impact of the figurative elements and the fact that the word ‘Nordic’ is weak, as well as the fact that the coinciding element is the only verbal element of the earlier mark, it is considered that the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in the languages of the public considered, the pronunciation of the signs coincides in the sound of the verbal element ‘MULTILIFT’. The earlier mark is fully included in the contested mark. The signs differ in the sound of the verbal element ‘NORDIC’ of the contested sign, which is weaker than the coinciding element. The figurative elements are not subject to a phonetic assessment, since the public will not describe them when referring to the marks orally. Therefore, the signs are highly similar aurally.
Conceptually, the coinciding verbal element ‘MULTILIFT’, which has been defined as the essential element in both signs, may be associated with the concept of something that allows multiple loads to be lifted. This concept is allusive in respect to the goods at issue, but it is nevertheless the main concept that will be remembered by the public. Indeed, the public will pay limited attention to the concepts conveyed by the figurative elements of the signs (which have less impact than the words), namely the concept of an elephant’s head in the earlier mark and, if the device in the contested sign is perceived as having any meaning, the concept of a molecular or ball-and-rod structure in the contested sign. Likewise, the concept of ‘from the North or from the North of Europe’ conveyed by the verbal element ‘NORDIC’ of the contested sign is weak and does not significantly lessen the conceptual similarity between the signs that arises from the coinciding verbal element. Therefore, the signs are conceptually similar to an average degree for a significant part of the public.
However, for the part of the public that does not attribute a meaning to the word ‘MULTILIFT’, the signs evoke different concepts (the concept of an elephant in the earlier mark and the concepts of the North and, much less probably, of a molecular structure in the contested sign); therefore, they are conceptually dissimilar. However, owing to the reduced impact of those meaningful elements, the ensuing conceptual difference is not particularly marked.
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.
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 distinctive character of the earlier mark as a whole is considered normal even for the significant part of the public that perceives the allusive meaning of the verbal element ‘MULTILIFT’. The distinctiveness of the earlier mark lies not only in its figurative element, which has no link to the goods at issue, but also in its verbal element, which, although it is allusive of the purpose of the goods at issue, is an invented word that the public will no doubt perceive as an indicator of commercial origin.
The degree of distinctive character of the earlier mark is, a fortiori, normal for the smaller part of the public that does not associate a meaning with the element ‘MULTILIFT’ as a whole.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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).
In the present case, the contested goods are partly identical and partly similar to the opponent’s goods. The signs are visually similar to an average degree and aurally highly similar. For part of the public, there is also an average degree of conceptual similarity between the signs. For another part of the public, the signs evoke different concepts, but it is not likely that the concepts concerned will make a strong impression on that public.
In view of the above, the Opposition Division is of the opinion that the differences between the signs are not of such a nature as to dispel the risk that the public taken into consideration, even when a higher than average degree of attention is displayed, may perceive the goods at issue, marketed under the conflicting signs, as proceeding from the same undertaking or from economically linked undertakings.
Indeed, it is highly conceivable that those consumers will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public considered, namely the part of the public that understands the verbal element ‘NORDIC’. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s EUTM No 4 419 628. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier EUTM leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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, he 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
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.