OPPOSITION No B 2 746 488

Festo AG & Co. KG, Ruiter Str. 82, 73734 Esslingen, Germany (opponent), represented by Patentanwälte Magenbauer & Kollegen Partnerschaft mbB, Plochinger Str. 109, 73730 Esslingen, Germany (professional representative)

a g a i n s t

Vestonn Pneumatic S.L., C/ Limonero 4, 03110 Mutxamel, Spain (applicant).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 488 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 427 156. The opposition is based on European Union trade mark registration No 13 507 405. 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

The goods on which the opposition is based are, inter alia, the following:

Class 7:        Machines, in particular for metal, wood or plastic processing, except rinsing and washing machines; Woodworking machines; Machines for use in the chemical industry, agriculture, mining; Textile production machines; Machines for preparing beverages [industrial]; Construction machinery; Packing machines; Machine tools; Compressed air machines; Conveyers; Robots (machines); Sorting machines for industry; Crankcases for machines, motors and engines; Cylinders for machines; Tables for machines; Motors and engines (except for land vehicles) and parts therefor; Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Air powered tools, Including abrading instruments, Polishing apparatus, Routers, Jig saws, Circular saws, Power saws, Drilling machines, Planers, Screwdrivers and Milling machines, Other than paint spraying apparatus; Electric tools, including being battery-powered apparatus, including abrading instruments, polishing apparatus, routers, jigsaws, circular saws, chain saws, drilling machines, planes, screwdrivers and milling machines; Hydraulic, pneumatic and electronic controls for machines, motors and engines; Pneumatic, hydraulic and electric actuating elements and apparatus and their parts, for example linear actuators, rotary actuators, swivel actuators, fluid operated actuators, pneumatic cylinders, hydraulic cylinders, electric linear drives and motors, forward feed devices and pistons; Pneumatic and hydraulic control and regulating elements and apparatus, and parts therefor, including valves, taps, stopcocks, oil brake cylinders, pressure switches, pressure regulators and electro-pneumatic transducers; Valves [parts of machines]; Connector plates and distributor plates for valves; Mechanical handling apparatus; Mechanical handling devices; Vacuum handling devices; Compressors; Pneumatic maintenance apparatus for treating compressed air; Compressed air maintenance devices for treatment of compressed air; Sound dampers for compressed air; Venturi scrubbers; Bearings (machine parts); Machines and mechanically operated apparatus, and parts therefor, for workpiece machining, the treatment of materials, handling technology, production technology and assembly technology, including saws, milling machines, routers, grinders, planes, drilling machines, screwdrivers, grippers, manipulators, vacuum-based handling apparatus, suction cups for vacuum-based handling apparatus, agitators, clamping devices and stapling apparatus, other than paint spraying apparatus; Machine tools, for example in the form of saw blades, milling cutters or grinding plates; Vacuum cleaning apparatus and installations and parts therefor, other than industrial vacuum cleaning apparatus; Electric cleaning machines and equipment, not portable; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Engines, powertrains, and generic machine parts; Robots; Current generators; Sweeping and cleaning machines, other than portable cleaning apparatus and machines; Washing apparatus; Coating machines; Printing and bookbinding machines; Filtering machines, separators and centrifuges; Shaping and moulding machines; Waste management and recycling machines; Metal production machines; Papermaking machines; Textile production machines; Machines for processing plastics; Crushing machines for industrial purposes; Brewing machines; Beaters being electric appliances; Electric egg beaters; Slicing machines (Electric -) for large scale food processing; Slicing machines (Electric -) for kitchen use; Machines for the preparation of foodstuffs [industrial]; Machines for mixing foodstuffs; Biscuit making machines; Beverage making machines; Machines for slicing food [industrial]; Peelers [electric machines]; Processing machines for use in the food industry; Cylinders for use in the manufacture of chocolate; Power drills and bores; Power saws; Wire stripping machines for removing the covering from electric cables; Chamfering machines; Belt sanding machines; Plate shearing machines; Wax-polishing (Machines and apparatus for -), electric; Bolt cutters [machines]; Oxygen cutting devices; Wire cut machines; Lathes; Metal machining centres; Polishing tools (Electric -); Sharpening machines for tools (Electric -); Electric planers; Milling machines; Floor sanders; Die-cutting and tapping machines; Thread mills [power tools]; Taps being mechanically operated tools; Taps [machine tools]; Wood grinding machines; Wood milling machines; Planing machines; Industrial cutting machines; Electric arc cutting apparatus; Punching machines; Deburring machines; Numerically controlled turning machines; Hacksaw blades for machines; Metal cutting tools [machines]; Pneumatic shears; Plasma cutting machines; Guillotine machines, other than for office use; Routers [machines]; Dies for machine tools; Cutting discs for use as parts of machines; Orbital sanding machines; 3D printers; Electromechanical machines for chemical industry; Utensils (Electric -) for stirring liquids; Dyeing machines; Machines for the production of semiconductors; Woodworking machines; Mechanical tools; Memory chip manufacturing machines; Box making machines; System control instruments (Pneumatic -); Process control units [pneumatic]; Process control instruments [pneumatic]; Industrial pneumatic tools; Pneumatic hammers [hand-held]; Pneumatically driven machines; Pneumatically driven presses; Pneumatic tools [machines]; Coil winding machines; Hand held cordless power tools; Screw extractors [machines]; Machine tools; Portable air tools, Other than paint spraying apparatus; Portable electric power tools; Drives for vacuum pumps; Compressed air machines; Compressed air pumps; Pressure multipliers for liquids; Pressure intensifiers [machines]; Ejectors [pumps]; Ejectors; Hydraulic pumps; Industrial vacuum machines for use in manufacture; Blowing machines for the compression, exhaustion and transport of gases, other than industrial vacuum cleaning apparatus; Compressing fans; Industrial blowers; Feed pumps; Air pumps [garage installations]; Air pumps; Air compressors for vehicles; Compressors; Diaphgram pumps; Pumps [machines]; Valves for pumps; Vacuum pumps [machines]; Industrial robots; Packing machines; Lifting and hoisting equipment, elevators and escalators; Conveyors and conveyors belts; Depalletisers [machines]; Air cushion devices for moving loads; Sheeting grippers [machines]; Handling machines, automatic [manipulators]; Linear transfer machines; Sorting machines for industry; Feeding machines for presses; Valves for process automation; Pneumatic valves; Piezo valves; Pneumatic cylinders; Electric cylinders; Electromechanical drives; Electric and pneumatic handling modules; Rotary drives; Toothed belt drives; Pneumatic and electric workpiece grippers; Vacuum generators; Multiway valves; Pressure regulating valves; Pneumatic and hydraulic shock absorbers; Automatic vending machines; Parts for all the aforesaid goods.

The contested goods are the following:

Class 7:        Valves; Servo-valves; Power operated valves; Hydraulic valves; Clack valves [parts of machines]; Servo-control valves; Valves for pumps; Valve diaphragms; Actuators for valves; Pneumatically operable valves; Hydraulically operated butterfly valves; Pneumatic valve actuators; Valves [parts of machines]; Hydraulic valve actuators; Regulators [parts of machines]; Pump control valves; Compressed air pilot valves; Hydraulic valves [parts of machines]; Valve closure mechanisms; Dosing valves [parts of machines]; Pressure valves [parts of machines]; Pneumatic actuators for control valves; Valves operated by changes in pressure; Valves operated automatically by hydraulic control; Digital electro-hydraulic proportioning valves; Spray valves [parts of machines]; Compressed air switch valves; Tapping valves for metallurgical purposes; Safety valves [parts of machines]; Valves operated automatically by pneumatic control; Dispensing valves being machine parts; Stop valves of metal [parts of machines]; Pressure reducers [parts of machines]; Suction valves for gas compressors; Level regulating valves [parts of machines]; Valve assemblies of metal [parts of machines]; Suction valves for air compressors; Cocks [valves] of metal parts of machines; Metal safety valves [parts of machines]; Non-return valves of metal [parts of machines]; Lockable valves [parts of machines]; Ball valves being parts of machines; Vacuum control valves [parts of machines]; Non-return valves of plastic [parts of machines]; Check valves (non-metallic -) [parts of machines]; Valves [mechanical] for regulating fluid flow; Vacuum control valves [parts of engines]; Butterfly valves (Non-metallic -) being parts of machines; Stop valves of plastic [parts of machines]; Pressure controllers [valves] being parts of machines; Butterfly valves being parts of machines; Plunger type valves for use with tanks; Butterfly valves of metal being parts of machines; Unloading check valves for the outlets of air compressors; Automatic inlet control valves for reciprocating air compressors; Pistons for cylinders; Cylinders for machines; Cylinders being parts of machines; Shock absorbing cylinders [parts of machines]; Filters for machines; Anti-pollution devices for motors and engines; Filters for gases [machines]; Filters for cleaning cooling air, for engines; Filters being parts of machines; Air filters for mechanical purposes; Filter housings being parts of machines; Air cleaners [air filters] for engines; Membrane filters for use as parts of machines; Hydraulic actuators; Rotary to linear actuators; Actuators incorporating a gear mechanism for pipeline valves; Electrical drives for machines; Linear actuators; Linear actuators [mechanical]; Pressure regulating apparatus being parts of machines; Cylinder blocks [parts of machines]; Electric ignition coils; Pumps [parts of machines, engines or motors]; Hydraulic circuits for machines; Manifolds [parts of machines]; Distributor manifolds being parts of machines, engines or motors; Industrial process controllers [pneumatic]; Variable speed drives for machines; Workpiece clamping attachments [parts of machines]; Machine guides [parts of machines]; Filters [parts of machines or engines]; Mechanical seals [machine parts]; Workpiece locators [machines]; Workpiece locators [parts of machines]; Pneumatic controls for motors; Pneumatic controls for machines; Pneumatic controls for machines, motors and engines; Compressed air engines; Vibration motors; Engines for compressors; Butterfly shutters; Multiple shell grippers [machines]; Pistons [parts of machines or engines]; Pistons for machines; Magnetic positioners [parts of machines]; Governors; Pressure regulators [parts of machines]; Pressure regulators for lubricating installations; Speed governers [mechanical] for machines, engines and motors; Speed governors for machines; Speed governors for machines, engines and motors; Regulators for machines; Anti-friction pads for machines; Self-oiling bearings; Ball-bearings; Mufflers [parts of machines]; Mufflers [parts of exhaust systems]; Workpiece carriers [parts of machines]; Pressure pipes of metal [parts of machines]; Stop valves [parts of machines]; Machine fly-wheels; Piston rods.

Some of the contested goods are identical to goods on which the opposition is based. For instance, the contested valves refer to the same goods as the opponent’s valves [parts of machines]. The same applies for pressure regulators which are identically contained in both lists. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 relevant goods target business consumers with specific professional knowledge or expertise, such as technicians or engineers. Taking into account the category of the goods in question and the high level of technical knowledge they may require, their sophistication and possibly also price, the degree of attention will be high.

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 earlier mark is a figurative sign that consists of the word ‘FESTO’ written in bold grey upper case letters. ‘FESTO’ will be perceived as ‘feast, festivity or width of cloths’ by the Portuguese-speaking public in the relevant territory. However, the meaning is not related to the goods in question. For the remaining part of the public, it has no clear meaning. It follows that this term enjoys an average degree of distinctive character for the entire relevant public.

The contested sign is also figurative in nature and consists of two word elements. The first word element ‘VESTONN’ appears in bold upper case typeface with the slightly stylised initial letter V which connects over the other letters with a red, horizontal line to the final letter N. The colour of the letters changes from the first four letters in red, the following two letters in grey to the final letter in red. Due to its size, the central position, the stylisation of the V-letter as well as the red colouring, this element has to be considered dominant (most eye-catching). It has no clear meaning for the relevant public and, therefore, it is distinctive. The other word element ‘PNEUMATIC’ appears underneath the dominant element in bold grey upper case lettering. It is notably smaller and it will be understood by the relevant public as ‘containing or operated by air or gas under pressure’ or as ‘an item of pneumatic equipment’. It can be reasonable assumed that the relevant public throughout the EU will be familiar with the term, either because it exists as such, which is the case for the English- and Romanian-speaking public; or it has similar equivalents for example: ‘pneumatikus’ in Hungarian, ‘pneimatisks’ in Latvian, ‘pneumatico’ in Italian and Portuguese, ‘pneumatický’ in Czech and Slovak, ‘pneumatisch’ in Dutch and German. It is directly descriptive of the kind of some of the contested goods, and allusive of objective characteristics for the rest. It follows that the impact of the element ‘PNEUMATIC’ in the overall impression given by the contested sign is very limited.

Visually, the signs coincide in the string of the letters ‘ESTO’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Taking this into account, there is a clear visual difference between the initial letter ‘F’ of the earlier mark and the stylised letter ‘V’ of the contested sign. Consequently, the signs clearly differ in their beginnings. They also differ in the two final letters ‘N’ of the word element ‘VESTONN’ and in the word element ‘PNEUMATIC’ of the contested sign, which have no counterparts in the earlier mark.

Finally, the signs differ in figurative elements such as the colours and the stylisation of the letter ‘V’ of the contested sign. Even assuming that the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the visual coincidence in four letters, which moreover make out the inner part of the respective word elements, is not sufficient to render the signs visually similar. Bearing this in mind, the signs are visually not similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ESTO’. The pronunciation differs in the sound of the letter ‛F’ of the earlier sign, the letter ‘V’, at least for a substantial part of the public, and the final letters ‘NN’ of the word element ‘VESTONN’ in the contested sign as well as in the verbal element ‘PNEUMATIC’ of the contested sign, which have no counterparts in the earlier mark. Even assuming that for a part of the public, such as a part of the German public, for example,  the pronunciation of the letters ‘F’ and ‘V’ will be the same, the signs still differ aurally in all other aspects and for this particular public, in the stress pattern. Consequently, the signs can be considered aurally similar at most to a below average degree.

Conceptually, the relevant public will perceive the meaning of the word ‘PNEUMATIC’ of the contested sign. On the other hand, the earlier mark has either no meaning or it will be understood by only a part of the public as explained above. Irrespective of the different possible scenarios, the signs are in any case not conceptually similar.

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 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

The signs have been found visually and conceptually not similar. Aurally, the signs are similar to a below average degree. Therefore, the Opposition Division considers that, contrary to the opponent’s arguments and even on the assumption that the contested goods are identical to those of the earlier mark, the differences between the signs are clearly sufficient to offset the similarities and enable the public to safely distinguish between them, bearing also in mind the high degree of attention that the relevant public will pay when purchasing the goods at issue.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the designated goods are presumed identical cannot, in this case, compensate for the differences identified between the signs.

Considering all of the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Keeva DOHERTY

Arkadiusz GORNY

Solveiga BIEZA

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.