Trowel and Error: power-tools aren't similar to manual ones, says General Court

In the STAYER trade mark dispute, Case T-254/13 Stayer Ibérica, SA v OHIM, ZAO Korporaciya ‘Masternet’, the General Court provided useful guidelines on how to assess and prove that branded goods are complementary or in competition for the purposes of establishing their similarity and possibly the existence of a likelihood of confusion between their trade marks.

This case regards an application for invalidity lodged by the Russian company Zao Korporaciya Masternet ('Zao') against Stayer Ibérica's figurative Community trade mark (CTM), registered for various goods and services in Classes 7, 8, 39 relating to the construction industry. Invalidity was sought on relative grounds under Article 8(1)(b) in combination with Article 53(1)(a) of Regulation 207/2009, the application being based on an International Registration for the word mark STAYER, having effect in Germany in respect of goods in classes 3, 8 and 16.

The contested CTM

The Cancellation Division rejected the invalidity claim, finding that Zao Korporaciya had not shown genuine use of its own mark for the goods it had been registered, as requested by the CTM proprietor. The Board of Appeal overturned that finding, saying that proof of genuine use was fulfilled in relation to polyurethane (PU) float trowels protected by the earlier International Registration in class 8.  It followed that, while narrowing the invalidity assessment to PU float trowels, considering that the relevant public comprised both the German average consumers and professionals of the construction industry whose level of attention was high, some of the goods covered by the contested CTM were either similar or slightly similar to PU Float trowels. That being said, as the signs were also similar, there existed a likelihood of confusion justifying the invalidity of those specific goods in classes 7 and 8 for which the contested CTM was registered.

On appeal by Stayer Ibérica, the General Court part-affirmed and part-annulled the Board of Appeal's decision.

The first thing that the Court considered was the admissibility of evidence submitted out of time and the application of Article 76(2) of Regulation 207/2009. This evidence consisted of an additional five invoices submitted by Zao for the first time before the Board of Appeal: these invoices just supplemented the main evidence (five other invoices) presented at first instance and, said the Court, the Board Appeal rightly exercised its discretion in considering the evidence even though it was submitted out of time before the Cancellation Division. Indeed, such evidence had to be assessed when considering proof of the genuine use of the STAYER word mark, as it was paramount to the decision on that mark's invalidity and was furnished at an admissible stage of the proceeding before the Board of Appeal.

Turning now to the scope of use, the Board of Appeal was right to take only ‘PU hand float trowels’ into consideration in its comparison of the goods in question and in its global assessment of the likelihood of confusion, for the very good reason that genuine use of the earlier trade mark has not been established except for those goods.

A further plea in law claiming infringement of Article 15 of Regulation 207/2009 was also rejected: this was because the invoices proved genuine use of the STAYER mark in respect of PU float trowels insofar as they had been issued by one of Zao's licensees for export purposes.

A polyurethane float trowel

Stayer Ibérica was however luckier with its third plea in law, based on the misapplication of Article 8(1)(b): the General Court annulled the declaration of invalidity for some goods in classes 7 and 8, on the basis that there was no likelihood of confusion. Said the General Court, ‘parts of cutting and polishing diamond machines; bits and cutting wheels for the following industries: marble, granite, stone, clay, slabs, tiles and brick, and, in general terms, cutting tools as parts of the equipment included in Class 7’ in class 7 and ‘hand held abrasive items (wheels and grinding wheels)’ in class 8, covered by the figurative STAYER CTM, were dissimilar to PU hand float trowels.  However, since the trowels did fall within the broad category of 'equipment and tools' included in class 7 of the contested mark, they were deemed to be identical and the likelihood of confusion in that case was confirmed.

Who needs tools when you've got paws?

Regarding the non-similar goods the General Court observed that the fact they could be directed to the same consumers and used in the same construction process did not imply that they were similar, especially in the view of their different nature and intended purposes. In any event, while Stayer Ibérica's goods were power-driven machines and parts, the PU hand float trowels were by definition hand-operated tools, which one might expect to be made by different companies. The Board of Appeal failed to explain why those goods were to be considered complementary or how they belonged to the same product family. Said the General Court, there was no close connection between the parties' goods, and there was no evidence that 'bits and cutting wheels' could be components of hand-operated tools.

Trowels here
Trial and Error here