OPPOSITION No B 2 680 083
Interkat Katalysatoren GmbH, Eduard-Rhein-Str. 25, 53639 Königswinter-Oberpleis, Germany (opponent), represented by Geskes patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968 Cologne, Germany (professional representative)
a g a i n s t
Intracom Constructions Societe Anonyme Technical and Steel Constructions, 19.7 km New Road Peania-Markopoulou, 190 02 Peania, Attica, Greece (applicant), represented by Pistiolis – Triantafyllos and Associates, 1 Aristeidou Street, 105 59, Athens, Greece (professional representative).
On 06/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 680 083 is upheld for all the contested services, namely:
Class 40: Custom manufacture and assembly services.
2. European Union trade mark application No 14 836 341 is rejected for all the contested services. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 836 341 namely against some of the services in Class 40. The opposition is based on European Union trade mark registration No 3 452 844. 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.
- The goods and services
The services on which the opposition is based are, inter alia, the following:
Class 40: Treatment of materials; coating of catalytic converter bearing elements, in particular for the automobile industry; material treatment information; custom assembling of materials (for others).
The contested services are the following:
Class 40: Custom manufacture and assembly services.
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 services in Class 40
The contested assembly services include, as a broader category the opponent’s custom assembling of materials (for others) in Class 40. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested custom manufacture is related to the opponent’s custom assembling of materials (for others) in Class 40. Custom manufacture refers to the action or process of making or producing articles, material or a commodity. The opponent’s custom assembling of materials (for others) refers to the bonding of parts or materials by fitting together the separate component parts of an object, article and/or machine. These operations may be provided by the same companies (the manufacturer of the goods is also likely to assemble them either in the factory or at their destination) and share the same relevant public. Furthermore, they can have the same end purpose and share the same distribution channels. Therefore, they are similar.
- 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 services found to be identical or similar are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average to high, depending on the specific nature and price of the services, as well as on the frequency with which they are rendered.
- The signs
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INTERKAT
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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 elements ‘INTERKAT’ and ‘INTRAKAT’ are not meaningful in certain territories, for example, in those countries where Bulgarian and Greek are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian- and Greek-speaking parts of the relevant public.
The earlier mark is the word mark ‘INTERKAT’, which has no meaning for the relevant public and is distinctive for the relevant services. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.
The contested sign is a figurative mark comprising the verbal element ‘INTRAKAT’ in grey and orange lower case letters, which has no meaning for the relevant public and is, therefore, distinctive for the relevant services. Next to the verbal element ‘INTRAKAT’, on the left side, there is a figurative element resembling to a 3D cube or a grey rhombus next to an orange arrow. The figurative element in the contested sign does not convey any particular meaning for the services in question from the perspective of the public in the relevant territory and has a normal degree of distinctiveness. Other figurative features of the contested sign, such as the graphical arrangement of the sign, have only a decorative nature and, as such, are less distinctive than the other elements with a normal degree of distinctiveness.
According to the applicant, the marks consist of prefixes, (the prefix ‘inter-’ for the earlier mark and the prefix ‘intra-’ for the contested sign), which have a separate meaning and will be recognised by the relevant public. However, the Opposition Division does not agree with the applicant’s argument, since the public for which the opposition is focused on will perceive the marks as a whole and will not break them down into elements, since none of the elements suggests a specific meaning or resembles to meaningful words. The applicant’s argument has, therefore, to be set aside.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘INT*KAT’, present identically in both signs and the letter ‘R’ placed in the fifth position in the earlier mark and in the fourth position in the contested sign. However, they differ in the vowels ‘E’ and ‘A’, placed in the fourth position in the earlier mark and in the fifth position in the contested sign. In addition, they differ in the graphical stylisation of the contested sign, id est the typography and the presence of the figurative element.
The signs are both made up of eight letters, having seven of them identical. While in very short words, small differences may more easily lead to a different overall impression, in contrast, the public is less aware of differences between longer signs, such as in the present case the eight-letter sequence of both marks.
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). This principle is fully applicable to the present case with respect to the figurative element in the contested sign.
Regarding the colours and the typeface in which the verbal element of the contested sign is written, this stylisation cannot be considered sophisticated and it will not lead the consumer’s attention away from the element it seems to embellish, that is, the verbal element ‘INTRAKAT’.
Furthermore, the fact that the signs under comparison have their initial three-letter sequence in common is of particular importance given that 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.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘INT*KAT’, present identically in both signs and in the sound of the letter ‘R’, present in the fifth position of the earlier mark and in the fourth position of the contested sign. Both signs have eight letters and are pronounced in three syllables, as /IN-TER-KAT/ and /IN-TRA-KAT/; therefore, their rhythms and intonations are similar. The pronunciation differs in the sequence of letters ‘ER’ of the earlier mark and ‘RA’ of the contested sign.
Therefore, the signs are aurally similar to a high degree.
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.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The services under comparison are partly identical and partly similar. They are directed at business customers with specific professional knowledge or expertise whose degree of attention may vary from average to high.
The marks are visually and aurally similar to a high degree on account of the sequence of letters that they have in common. In particular, the marks have the same beginning, ‘INT’, the same ending, ‘KAT’, and they share the same letter, ‘R’, placed in the fifth position of the earlier mark and in the fourth position of the contested sign. Although the marks have visual differences, as explained above in section c) of this decision, these differences between the signs are not capable of substantially influencing the consumer’s overall impression so as to keep the signs sufficiently apart and safely exclude a likelihood of confusion on the part of the public. The differentiating fourth and fifth letter of the marks (‘E’ versus ‘A’) are placed in the middle of the signs and will not be immediately detected, since consumers normally perceive a sign as a whole and are usually less aware of differences between longer signs. The figurative element of the contested sign, as explained above under section c) of this decision, has a very limited impact on the overall impression and the stylisation of the contested sign will be perceived as a common graphical means of bringing the verbal element in question, ‘INTRAKAT’, to the attention of the public.
Furthermore, as explained above in section c) of this decision, the conceptual aspect does not influence the comparison. The verbal elements ‘INTERKAT’ and ‘INTRAKAT’ will not be associated with any meaning by the relevant public on which the attention has been focused. In fact, they will be perceived as fanciful terms by the Bulgarian- and Greek-speaking parts of the relevant public. Therefore, neither of the signs conveys a concept that could render them more distinguishable and thus avoid the potential confusion between them resulting from their visual and aural similarities.
All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.
Considering all the above and also bearing in mind that the earlier mark has a normal degree of distinctiveness and that average consumers rarely have the chance to make a direct comparison between marks, but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and Greek-speaking parts of the public. This is equally true in relation to the services for which a higher degree of attentiveness can be expected on behalf of the relevant consumers, as the visual and aural similarities between the signs nonetheless prevail. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 452 844. It follows that the contested trade mark must be rejected for all the contested services.
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 applicant 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
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Francesca CANGERI SERRANO
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José Antonio GARRIDO OTAOLA |
Andrea VALISA |
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 Opposition 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.