OPPOSITION DIVISION
OPPOSITION No B 2 769 365
Sinterizados Montblanch, S.A., Ctra. Laurea Miro, 388, 08980 Sant Feliu de
Llobregat (Barcelona), Spain (opponent), represented by Herrero & Asociados,
Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Citizen Tokei Kabushiki Kaisha also trading as Citizen Watch Co., Ltd, 1-12, 6-
chome, Tanashi-cho, Nishi-tokyo-shi, Tokyo, Japan (holder), represented by
Elzaburu S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional
representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 769 365 is upheld for all the contested goods.
2. International registration No 1 281 183 is entirely refused protection in respect
of the European Union.
3. The holder bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 281 183, , namely against all the
goods in Class 7. The opposition is based on Spanish trade mark registration
No 2 685 738, . 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
Decision on Opposition No B 2 769 365 page: 2 of 7
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.
a) The goods
The goods on which the opposition is based are the following:
Class 6: Unwrought and semi-wrought common metals and their alloys, laminated
and casted building materials; safety chains (except transmission chains for
automobiles); non-electric cables and wires of common metal; metal pipes; balls of
steel, nails and screws, minerals, goods of metal not included in other classes;
prefabricated metal elements.
Class 7: Porous bronze bearings (parts of machines).
The contested goods are the following:
Class 7: Machine elements [not for land vehicles]; shafts, axles or spindles [not for
land vehicles]; bearings [machine elements not for land vehicles]; shaft couplings or
connectors [machine elements not for land vehicles]; power transmissions and
gearing for machines [not for land vehicles]; toothed wheels or gears [machine
elements not for land vehicles]; linear actuators [not for land vehicles]; pneumatic
actuators [not for land vehicles]; hydraulic actuators [not for land vehicles]; shock
absorbers [machine elements not for land vehicles]; springs [machine elements not
for land vehicles]; brakes [machine elements not for land vehicles]; valves [machine
elements not for land vehicles]; starters for motors and engines; alternating-current
motors and direct-current motors [not including those for land vehicles but including
‘parts’ for any alternating-current motors and direct-current motors]; AC generators
[alternators]; DC generators; electric motors, gear motors and their parts [not for land
vehicles]; micro electric motors [not for land vehicles]; gears and gear heads [not for
land vehicles]; linear motors and their parts [not for land vehicles]; servo motors and
their parts [not for land vehicles].
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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.
The opponent’s goods in Class 6 have nothing relevant in common with the
contested goods. Whereas the contested goods are machines and parts of
machines, the goods in Class 6 are unprocessed or semi-processed metals and
simple goods made of them. In addition, these two categories of products belong to
different manufacturing industries and have different distribution channels;
furthermore, they target different consumers. Therefore, the opponent’s goods in
Class 6 are considered dissimilar to all the contested goods.
Decision on Opposition No B 2 769 365 page: 3 of 7
The contested machine elements [not for land vehicles]; bearings [machine elements
not for land vehicles] include the opponent’s porous bronze bearings (parts of
machines). Since the Opposition Division cannot dissect ex officio the broad
categories of the contested goods, they are considered identical to the opponent’s
goods.
The contested shafts, axles or spindles [not for land vehicles]; shaft couplings or
connectors [machine elements not for land vehicles] are structural components that
belong to the category of machine parts (except for land vehicles). The contested
brakes [machine elements not for land vehicles]; springs [machine elements not for
land vehicles]; power transmissions and gearing for machines [not for land vehicles];
toothed wheels or gears [machine elements not for land vehicles]; gears and gear
heads [not for land vehicles] are machine elements that belong to the category of
mechanisms that control movement in various ways. The contested valves [machine
elements not for land vehicles] are parts of machines or pieces of equipment that
open and close to control the flow of air or liquid. The contested linear actuators [not
for land vehicles]; pneumatic actuators [not for land vehicles]; hydraulic actuators
[not for land vehicles]; shock absorbers [machine elements not for land vehicles] are
elements of a machine that function as control components. All these goods are
basic machine parts and features used as building blocks in most machines.
However, bearings are ‘parts of a machine that allow one part to rotate or move in
contact with another part with as little friction as possible’ (information extracted from
Oxford Dictionary on 27/10/2017) In particular, the opponent’s porous bronze
bearings (parts of machines) are bearings made of bronze that have small holes
through which water and air can pass. These goods are often used in a mechanical
system alongside other machine components such as the contested shafts, axles,
spindles, valves, gears, etc.
In principle, the mere fact that a certain product can be composed of several
components does not automatically establish similarity between the finished product
and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be
found only in exceptional cases and requires that at least some of the main factors
for a finding of similarity, such as producer, public and/or complementarity, are
present. Such an exception is based on the fact that parts and fittings are often
produced and/or sold by the same undertaking that manufactures the end product
and target the same purchasing public, as in the case of spare or replacement parts.
Depending on the product concerned, the public may also expect the component to
be produced by, or under the control of, the ‘original’ manufacturer, which is a factor
that suggests that the goods are similar.
Taking into account the general nature and purpose of use of these relevant goods,
such as machine components used for the construction of a normally functioning
machine block, a certain similarity between the opponent’s bearings in Class 7 and
the contested goods listed above cannot be ruled out. These goods may be used as
components of the same machine and target the same consumers constructing this
machine; they will also be available through the same distribution channels. In
addition, it cannot be ruled out that an identical origin may be assumed by the
relevant consumers, since the same manufacturer may be involved in the production
of all the machine components. Consequently, these contested goods are considered
similar to the opponent’s goods in Class 7.
Furthermore, the contested alternating-current motors and direct-current motors [not
including those for land vehicles but including ‘parts’ for any alternating-current
motors and direct-current motors]; electric motors, gear motors and their parts [not
Decision on Opposition No B 2 769 365 page: 4 of 7
for land vehicles]; micro electric motors [not for land vehicles]; linear motors and their
parts [not for land vehicles]; servo motors and their parts [not for land vehicles] are
machines, and parts thereof, that convert electrical energy into mechanical energy by
means of the forces exerted on a current-carrying coil placed in a magnetic field.
Given the importance of bearings in the normal functioning of motors, in particular,
that the rotor is usually supported by bearings, the Opposition Division considers that
the contested goods consisting of motors and the opponent’s goods in Class 7 are
similar. The goods may have the same manufacturers and distribution channels and
target the same relevant public. Therefore, the contested alternating-current motors
and direct-current motors [not including those for land vehicles; electric motors, gear
motors [not for land vehicles]; micro electric motors [not for land vehicles]; linear
motors [not for land vehicles]; servo motors [not for land vehicles] are considered
similar to a low degree to the opponent’s goods in Class 7.
Furthermore, the abovementioned ‘parts of the relevant goods’, namely ‘parts’ for
any alternating-current motors and direct-current motors, parts of ‘electric motors,
gear motors [not for land vehicles]’, parts of ‘linear motors [not for land vehicles]’,
parts of ‘servo motors [not for land vehicles]’ may refer to, inter alia, the opponent’s
bearings in Class 7 and to that extent these broader categories of the contested
goods may include bearings. Since the Opposition Division cannot dissect ex officio
the broader categories of the contested goods or of the opponent’s goods, these
goods are classified as identical.
The contested AC generators [alternators]; DC generators are devices for converting
mechanical energy into electrical energy by electromagnetic induction. The contested
starters for motors and engines are devices for starting an internal combustion
engine, usually consisting of a powerful electric motor that engages with the flywheel.
Given the findings above, it cannot be disregarded that the opponent’s bearings may
be an essential part of the construction of generators and starters and to that extent,
in addition to their complementarity, the opponent’s bearings may be expected by
their relevant consumers to be available via the same distribution channels as the
contested generators and starters. Consequently, these goods are considered similar
to a low degree.
b) 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 to different degrees are
directed at the public at large, as well as at business customers with specific
professional knowledge or expertise in the field of mechanics. The degree of
attention may vary from average to high, depending on the specialised nature of the
goods, the frequency of purchase and their price.
Decision on Opposition No B 2 769 365 page: 5 of 7
c) The signs
Earlier trade mark Contested sign
The relevant territory is Spain.
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 ‘simo’ in blue
upper case letters below a fanciful figurative element made up of two shapes in
different shades of blue with a white space between them. Furthermore, it cannot be
completely ruled out that a part of the relevant public may see the letter ‘S’ shaped in
the white space in question.
The contested sign consists of the verbal element ‘silmo’ in slightly stylised letters.
Therefore, the relevant public will completely disregard the stylisation or see it as a
negligible element of the sign when perceived as a whole.
The elements ‘SIMO’ and ‘SILMO’ have no meaning for the relevant public and are,
therefore, distinctive.
For the sake of completeness, it has to be noted that to the extent that a letter ‘S’
may be perceived in the earlier mark by some of the public, it will rather serve to
reinforce the concept of the initial letter ‘s’ in the verbal element ‘simo’ and bears no
additional connotation on its own on a conceptual and aural level.
The signs have no elements that could be considered clearly more dominant than
other elements.
Visually, the signs coincide in the letters ‘si*mo’. They differ in the additional letter ‘l’
in the third position in the contested sign, and in the figurative element of the earlier
mark and its colours (regardless if further perceived as a highly fanciful letter).
Nevertheless, 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). Furthermore, 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. In the present
case, the earlier mark’s verbal element is entirely incorporated in the contested sign
Decision on Opposition No B 2 769 365 page: 6 of 7
and the signs have the same beginnings, ‘SI’, and the same endings, ‘MO’.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘si*mo’,
present identically in both signs. The pronunciation differs in the sound of the letter ‘l’,
present in the middle of the contested sign. Therefore, taking into account that the
signs differ in only one sound, the signs are highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The goods are identical and similar to various degrees. The degree of attention will
vary between average and higher than average for the reasons explained in
section b). The distinctiveness of the earlier mark is normal.
The signs are visually similar to an average degree and aurally highly similar
because the verbal elements ‘SIMO’ and ‘SILMO’ differ in only one letter/sound,
which is in a non-prominent position, namely between the remaining letters, ‘SI’ and
‘MO’, which are identical. 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). 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). Therefore, bearing in mind the lesser importance of the
figurative elements of the marks, the Opposition Division is of the opinion that the
difference in a single letter/sound between the verbal elements of the signs can be
easily overlooked or misheard (to the extent that they might be purchased orally).
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
Decision on Opposition No B 2 769 365 page: 7 of 7
high degree of similarity between the signs outweighs the lower degree of similarity
between some of the goods.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and, therefore, the opposition is well founded on
the basis of the opponent’s Spanish trade mark registration. It follows from the above
that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Volker MENSING Manuela RUSEVA Gueorgui IVANOV
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.