OPPOSITION No B 2 655 648

Puma Se, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft mbB, Landschaftstraße 6, 30159 Hannover, Germany (professional representative)

a g a i n s t

Lincos Kft., Debrecen, Balmazújvárosi út 10, 4002 Hungary (applicant).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 648 is upheld for all the contested goods.

2.        European Union trade mark application No 14 782 254 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 14 782 254. The opposition is based on, inter alia, German trade mark registration No 2 001 632. The opponent invoked Article 8(1)(b) and Article 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 German trade mark registration No 2 001 632.

1. The goods and services

The goods and services on which the opposition is based include, inter alia, the following goods:

Class 7: Wood, leather and plastic working machines; sewing machines, paper machines, polishing machines (not for household use), presses (machines), stamping and punching machines, sharpening and sanding machines, cutters for industrial purposes, textile machines, packaging machines, grinding machines; machine tools; motors and engines (other than for land vehicles); transmission couplings and belts (other than those intended for land vehicles); mechanically-operated agricultural instruments and apparatus; agricultural machines.

The contested goods are the following:

Class 7: Hydraulic tools; mechanical tools; air driven hand tools; air-powered tools; hand held cordless power tools; pneumatic tools [machines]; pneumatically driven machines; pneumatically driven presses; portable air tools; portable electric power tools; ratchet handles [machines]; screw extractors [machines]; tyre removers [machines]; tyre vulcanising machines; all goods being hand tools for car repair and car maintenance (garage equipment); all goods not related to lathes, CNC (computer numerical control) lathes, machining centers, turning center, electric discharge machine.

Class 8: Lifting tools; hex tools; bits [parts of hand tools]; combination pliers; crow bars; grease guns; grease guns (hand operated -); pliers; hand jacks [hand tools]; lifting jacks, hand-operated; manually operated motorcycle lifts; vehicle trolley jacks [hand-operated]; stands for hand jacks; all goods being hand tools for car repair and car maintenance (garage equipment); all goods not related to lathes, CNC (computer numerical control) lathes, machining centers, turning center, electric discharge machine.

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

In general, tools are found in Class 7 if powered by electricity or some other power source whereas they are classified in Class 8 when hand operated. In the present case, albeit that some of the contested goods are followed by the indication [machines], the specification 'all goods being hand tools for car repair and car maintenance (garage equipment)' indicates that all the contested goods must be understood as being tools. In addition, this specification must be understood as indicating that the goods are hand-held tools and not hand-operated tools.

Therefore, the contested hydraulic tools; mechanical tools; air driven hand tools; air-powered tools; hand held cordless power tools; pneumatic tools [machines]; pneumatically driven machines; pneumatically driven presses; portable air tools; portable electric power tools; ratchet handles [machines]; screw extractors [machines]; tyre removers [machines]; tyre vulcanising machines; all goods being hand tools for car repair and car maintenance (garage equipment); all goods not related to lathes, CNC (computer numerical control) lathes, machining centers, turning center, electric discharge machine are all included in the broad category of, or overlap with, the opponent’s machine tools. Therefore, they are identical.

Contested goods in Class 8

Contrary to the opponent's goods in Class 7 which are powered by electricity or some other power source, the contested goods in Class 8 are all hand-operated tools. Nevertheless, this difference does not mean that the latter are not similar to the opponent's goods in Class 7, more specifically to the opponent's machine tools. Indeed, the goods at issue can have the same purpose and can be in competition. Moreover, they target the same public to whom they can be sold through the same distribution channels and in the same outlets. Therefore, the contested lifting tools; hex tools; bits [parts of hand tools]; combination pliers; crow bars; grease guns; grease guns (hand operated -); pliers; hand jacks [hand tools]; lifting jacks, hand-operated; manually operated motorcycle lifts; vehicle trolley jacks [hand-operated]; stands for hand jacks; all goods being hand tools for car repair and car maintenance (garage equipment); all goods not related to lathes, CNC (computer numerical control) lathes, machining centers, turning center, electric discharge machine are similar to the opponent's machine tools in Class 7.

2. 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 and similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is deemed to vary from average to higher than average depending on the degree of speciality of the goods and their possible impact on safety (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41).

3. The signs

	puma tools
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element 'PUMA' and the figurative element of a pouncing feline composing the earlier mark will both be associated with a wild animal that is a member of the cat family (see Duden dictionary online). However, these elements have no meaning in relation to the goods covered under this mark and, therefore, they are distinctive of such goods. Furthermore, although neither element can be considered clearly visually more eye-catching (dominant), it should be noted that 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). Finally, it must be pointed out that the additional letters and numbers shown on the representation of the earlier trade mark merely appear for administrative reasons and are not to be considered part of the trade mark as such. Consequently, these indications will not be taken into consideration for the purposes of comparison.

The element ‘tools’ of the contested sign is an English word defining any instrument or simple piece of equipment that you hold in your hands and use to do a particular kind of work (see Collins dictionary online). While this English word is also used in German, it will be associated with another meaning, namely with a small-scale program that performs additional tasks for a particular operating system or application program (see Duden dictionary online). Such meaning is not directly descriptive of the relevant goods and is, therefore, distinctive in relation to such goods in the same way as the other element, 'puma', which, in turn, will be understood with the meaning given above. In addition, the contested sign is a word mark and neither of its elements can be considered clearly visually more eye-catching (dominant). Nevertheless, it should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘puma’ albeit that these are represented in a specific typeface in the earlier mark. The signs differ in the graphic and figurative elements of the earlier mark and in the additional word 'tools' of the contested sign. Considering that the coincidences between the signs lie in the initial part of the contested sign and that the graphic and figurative elements of the earlier mark have less of an impact on the consumer than its word element, the signs at issue are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛P-U-M-A’, present identically in both signs. The pronunciation differs in the sound of the letters ‛tools' of the contested sign. 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. Therefore, the signs at issue are conceptually similar an average degree.

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

4. 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.

5. Global assessment, other arguments and conclusion

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 goods at issue have been found identical and similar and the signs have been found visually, aurally and conceptually similar to an average degree. The assessment of the distinctiveness of the earlier mark rests on its distinctiveness per se which is deemed to be of a normal degree and the degree of attention of the relevant public is deemed to vary from average to higher than average. In this respect, it should be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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.

In the present case, taking into account that the coinciding element 'PUMA' plays an independent and distinctive role in both signs and is placed at the beginning of the contested sign it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark (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 German public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 2 001 632. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier German trade mark registration No 2 001 632 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Sandra IBAÑEZ

Martina GALLE

Begoña URIARTE VALIENTE

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.