CANCELLATION No 11 325 C (INVALIDITY)

Strama-MPS Machinenbau GmbH & Co. KG, Ittlinger Strasse 195, 94 315 Straubing, Germany (applicant), represented by Heisse Kursawe Eversheds, Brienner Straße 12, 80 333 Munich, Germany (professional representative)

a g a i n s t

Ged Integrated Solutions, Inc., 9280 Dutton Drive, 44087-1967 Twinsburg, United States of America (EUTM proprietor), represented by Maqs Advokatbyrå Göteborg AB, Box 11918, 40439 Gothenburg, Sweden (professional representative).

On 25/01/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 12 661 047 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 661 047. The application is based on European Union trade mark registration No 7 358 443. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks are identical and that the contested goods are identical with the applicant’s machines for processing plastics in Class 7. In the alternative, it claims that the marks and the goods are highly similar and there is likelihood of confusion. The applicant claims enhanced distinctiveness of the earlier trade mark acquired through use.

The EUTM proprietor argues that the applicant did not submit any proof of enhanced distinctiveness of the earlier trade mark. The contested goods are not identical to the applicant’s machines for processing plastics because they are neither literally identical, nor are they included in a broad category, nor do they overlap. The EUTM proprietor further submits detailed arguments denying the alleged high degree of similarity between the goods. They have a different purpose, distribution channels and producers and are neither in competition nor complementary. The parties effectively produce machines for different industries, namely the fenestration industry in the case of the EUTM proprietor and automotive industry in the case of the applicant. Since the goods are neither identical nor similar, there is no likelihood of confusion.

In support of its observations, the EUTM proprietor filed the following evidence:

• Appendix 1: press release with information on the EUTM proprietor’s product.
• Appendix 2: print-out from the applicant’s website.

In its reply, the applicant reiterates its previous claims and submits further arguments on the similarity of the goods.

In its rejoinder, the EUTM proprietor submits further arguments on the dissimilarity of the goods.

DOUBLE IDENTITY — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(a) EUTMR

1. The goods

The goods on which the application is based are the following:

Class 7:        Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); parts of motors and engines (of all kinds); controls for machines, motors or engines, drums [parts of machines], valves (parts of machines), heat exchangers (parts of machines), sorting machines for industrial purposes, fly-wheels for machines, welding machine (electric), lubricators (parts of machines), grindstones (parts of machines), regulators (parts of machines), pumps (parts of machines, motors or engines), presses (machines for industrial purposes), pneumatic controls for machines, motors and engines, machines for assembly and testing systems, machines for vehicle body framework construction installations, machines for processing plastic, machines for the drinks industry, machines for the chemical industry, machines for processing raw materials (sawing, torch cutting, welding), machines for medical systems, for the aeronautical, aerospace and food industries, machines for high-pressure deburring of production parts, machines for assembly and testing, machines for the solar and photovoltaic industries, all of the aforementioned goods with the exception of the goods vacuum cleaners, electrical carpet and rug cleaning machines and parts thereof, dust bags.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculating machines, data-processing equipment and computers; computer hardware; computer software; apparatus and instruments for controlling machines and installations (included in class 9).

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; research in the field of mechanical engineering and special-purpose mechanical engineering; engineering drawings; materials testing; quality audits.

The contested goods are the following:

Class 7:        Machinery for fabrication and manufacture of thermoplastic components used in the assembly of fenestration products, namely, insulating glass windows, doors, and skylights, sold to manufacturers of such insulating glass windows, doors, and skylights.

Contested goods in Class 7

The contested goods are, in essence, machinery for fabrication and manufacture of thermoplastic components. The applicant’s trade mark covers, among other things, machines for processing plastic in Class 7 (with the rather irrelevant limitation all of the aforementioned goods with the exception of the goods vacuum cleaners, electrical carpet and rug cleaning machines and parts thereof, dust bags).

First, machinery and machines are synonymous. Second, it is common knowledge that thermoplastics are a type of plastics. Third, the applicant’s trade mark protects machines for processing plastic which is quite a broad category of machines that are used for any type of processing (treating, transforming) plastic materials. The EUTM proprietor’s machinery is used for the fabrication/manufacture of thermoplastic components. Such a fabrication/manufacture consists in the processing (treating, transforming) of an initial plastic raw material into a final product, in this case thermoplastic components used in the assembly of fenestration products.

Consequently, it follows from a logical literal interpretation of the respective specifications of goods in their natural and usual meaning, that the contested goods are included in the broad category of, or overlap with, the applicant’s goods mentioned above. Therefore, they are considered to be identical.

The EUTM proprietor argues that the goods are not identical. It claims that the goods are not specified using the same terms, that neither of the marks covers a broad category of goods and that the goods do not overlap. However, apart from these statements, the EUTM proprietor did not submit any specific arguments explaining why any of the goods do not represent a broad category or why the goods do not overlap. Consequently, the EUTM proprietor’s argument must be set aside.

The fact that the parties are effectively active in different fields of industry, as argued by the EUTM proprietor, is irrelevant because the task of the Cancellation Division is to compare the goods as registered.

2. The signs

RoboClean	ROBOCLEAN
Earlier trade mark	Contested trade mark

The signs are identical.

The fact that the earlier trade mark is depicted in a combination of upper and lower case letters and the contested sign only in upper case letters has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

3. Conclusion

The marks as well as the goods are identical. Consequently, the prerequisites for the application of Article 53(1)(a) EUTMR in connection with Article 8(1)(a) EUTMR are fulfilled in this case.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 7 358 443. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(1)(b) EUTMR in conjunction with Article 53(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Alexandra APOSTOLAKIS

Vít MAHELKA

Lucinda CARNEY

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 Cancellation 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.