OPPOSITION No B 2 637 034

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Przedsiębiorstwo Wielobranżowe ‘AUTOS’ Spółka z o.o., ul. Unii Europejskiej 2B, 86 050 Solec Kujawski, Poland (applicant), represented by Kancelaria Patentowa Wojciech Lech, ul. Architektów 1/8A, 85-804 Bydgoszcz, Poland (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 637 034 is partially upheld, namely for the following contested goods:

Class 8:         Hand tools for vehicle repair (not including bicycle tools).

Class 12:        Tool trolleys (not including trolleys for bicycle tools).

2.        European Union trade mark application No 14 513 758 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 513 758. The opposition is based on European Union trade mark registration No 14 294 458. 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.

1. The goods

A preliminary note must be made with regard to the goods on which the opposition was initially based. Since the earlier mark, or earlier trade mark application at the time of filing the opposition, has been partially rejected and proceeded to registration for only some of the relevant goods, the Opposition Division will take into account the final scope of protection, that is, the goods for which the trade mark has been registered. Therefore, the goods on which the opposition is based are the following:

Class 8:         Bicycle tools (hand-operated); multipurpose tool bags for bicycles; miniature tools for bicycles; chain breakers for bicycles; wrenches for bicycles; torque wrenches for bicycles; tube cutters for bicycles; inserts for wrenches for bicycles; cable cutters for bicycles; pliers for bicycles; screwdrivers for bicycles; hand-operated locking tools, namely locking wrenches for bicycles.

The contested goods, after a limitation made by the applicant, are the following:

Class 7:         Air-powered tools (not including bicycle tools).

Class 8:         Hand tools for vehicle repair (not including bicycle tools).

Class 12:         Tool trolleys (not including trolleys for bicycle tools).

Class 20:         Workshop furniture.

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 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Furthermore, the specification ‘not including’ in the applicant’s list of goods serves to exclude the goods listed afterwards from the scope of protection.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 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

The contested air-powered tools (not including bicycle tools) are a type of power tool, driven by compressed air, supplied by an air compressor. These goods are commonly used in industry and construction. They are different from the opponent’s goods in Class 8, which are hand-operated tools for bicycles. Apart from their different natures and purposes, these two categories of products will have different methods of use (hand-operated tools versus tools powered by air compression) and will be available in different specialised stores. It is very unlikely that they would be manufactured by the same undertakings or target the same public. For example, the opponent’s goods might target consumers wishing to repair vehicles, in particular bicycles, whereas the contested goods might target workers in an industrial or a construction environment. Therefore, these goods are dissimilar.

Contested goods in Class 8

The contested hand tools for vehicle repair (not including bicycle tools) are similar to the opponent’s bicycle tools (hand-operated). Even though the applicant intended to exclude the opponent’s goods that might overlap with the contested goods, namely bicycle hand tools for repair, there is not, in the opinion of the Opposition Division, sufficient reason to find these two categories completely different. The goods may still have the same distribution channels and may, to a certain extent, target the same relevant public. They have the same broad purpose of being used for repairs and they are likely to have the same manufacturers, specialising in hand tools used for the repair and maintenance of vehicles.

Contested goods in Class 12

The contested tool trolleys (not including trolleys for bicycle tools) are objects on wheels that are used for transporting tools. Likewise, although the applicant has made a limitation excluding trolleys used for bicycle tools from the scope of protection of its goods, it cannot be completely ruled out that the contested goods might have a character complementary to the opponent’s goods in Class 8. Some tool trolleys may be used for a wide range of purposes, and even though the opponent does not intend its goods to be used as bicycle tools, this in itself cannot prevent consumers of these products using them as such. Therefore, the goods are similar to a low degree.

Contested goods in Class 20

The contested workshop furniture refers to movable and generally functional articles that equip a workshop, that is, a space that contains tools or machinery for making or repairing things, especially using wood or metal. These goods generally differ from the opponent’s goods in Class 8, which are hand tools for bicycles. The goods have different purposes and methods of use; furthermore, although they might target the same group of consumers – those who carry out repairs – they have different distribution channels and manufacturers. They are dissimilar.

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 similar to varying degrees are directed at the public at large. The degree of attention may vary from average to higher than average, since some of the tools in question may be quite expensive and not frequently purchased.

3. The signs

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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark consisting of the verbal elements ‘RACE’, written in white, and ‘MASTER’, written in standard grey upper case letters, both of which are set against a black rectangular background, on which a small grey arch is depicted above the verbal element ‘RACE’.

The contested sign is a figurative mark consisting of the slightly stylised verbal element ‘REDMASTER’, written in upper case letters and set in a red rectangular frame, with a depiction of a small white wrench in front of the verbal element.

The verbal element ‘master’, present in both signs, may be perceived throughout the European Union with different connotations, including related to ‘a postgraduate degree following a Bachelor’s degree’ (e.g. ‘el máster’ in Spanish; information extracted from http://www.spanishdict.com/translate/master, 4.b, on 08/08/2017). For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public for which this verbal element has no meaning in relation to the goods in question, namely the Spanish-speaking part of the public. For the sake of completeness, it has to be mentioned that the Spanish equivalents of ‘master’ would be ‘maestro’, ‘dueño’, ‘experto’, ‘señor’, etc. The verbal elements preceding this word, namely ‘RACE’ in the earlier mark and ‘RED’ in the contested sign, have no meaning for the Spanish public either.

Therefore, the verbal elements of which the two signs consist are meaningless for the relevant public in relation to the goods found to be similar to varying degrees and are, consequently, distinctive.

The figurative element representing a wrench in the contested sign will be associated with the nature of the relevant goods, which are, inter alia, wrenches. Bearing in mind that the relevant goods are hand-operated tools and trolleys therefor, this element is non-distinctive for these goods.

As regards the additional elements and stylisation of the signs, the signs are composed of distinctive verbal elements and less distinctive stylisation of a purely decorative nature, namely the arch and the black background in the earlier mark and the red frame in the contested sign. Therefore, the verbal elements are more distinctive than these decorative elements.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘R**(*)MASTER’. They differ in their second and third letters, namely the additional letters ‘AC’ in the earlier mark and the letter ‘D’ in the contested sign. Furthermore, they differ in their additional stylised elements, as described above. However, as previously stated, these additional elements have a non-distinctive character and/or have a limited impact on a visual level. Therefore, taking into account the similar structure and the considerable coincidence in the letters in the signs’ verbal elements, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘R**(*)MASTER’, present identically in both signs. The pronunciation differs in the sound of the first parts of the signs, ‘RA-CE’ in the earlier mark and ‘RED’ in the contested sign. However, bearing in mind the coincidence in the following string of letters and the very similar structure of the verbal elements in general, the signs are aurally similar to an average degree.

Conceptually, reference is made to the assertions above concerning the concepts evoked by the signs’ elements. Although the figurative element in the contested sign evokes a concept (a wrench), it does not affect the conceptual assessment of the signs, as it is considered non-distinctive. Therefore, the signs are similar to only a low degree, to the extent that the concept of a university degree will be recognised in both of them.

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.

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 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, despite the decorative elements described above in section c).

5. Global assessment, other arguments and conclusion

The goods are partly similar to varying degrees and partly dissimilar, and the degree of attention is average.

The signs are visually and aurally similar to an average degree, as well as conceptually similar to a low degree, to the extent that they coincide in a significant part of their verbal elements, which, in addition, have similar structures and positions in the signs. As explained above, the additional differentiating elements will have less impact on the overall perception of the signs, as the relevant public will focus on the most distinctive parts, namely their sole verbal elements. Furthermore, account is taken of the fact 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). In such cases, bearing in mind the significant coincidence in the letter sequences in the signs, as well as the lack of any other differing distinctive elements, the similarities between the signs outweigh the differences between them. As a result, it cannot be safely excluded that the signs might convey different overall impressions to consumers and that consumers will be able to differentiate between them.

In addition, 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). Consequently, the lesser similarity between some of the goods is outweighed by the considerable similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ignacio IGLESIAS ARROYO

Manuela RUSEVA

Gueorgui IVANOV

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.