OPPOSITION No B 2 387 093

Acondicionamientos e Instalaciones Manchuela, S.L., C/ Rafael Alberti Nº 13, 02247 Cenizate (Albacete), Spain (opponent), represented by Santiago Soler Lerma, Calle Poeta Querol, 1-3-10, 46002 Valencia, Spain (professional representative)

a g a i n s t

Vallox Oy, Myllykyläntie 9-11, 32200 Loimaa, Finland (applicant), represented by Papula Oy, Mechelininkatu 1 a, 00180 Helsinki, Finland (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 387 093 is partially upheld, namely for the following contested goods and services:

Class 6:        Pipes, tubes and hoses, and fittings therefor, including valves; ducts of metal for ventilating and air conditioning installations; ducts of metal for housing air conditioning and ventilation pipes; junctions of metal for pipes; ventilation pipes of metal.

Class 7:        Pumps; clamp connectors for piping [parts of machines]; pre-insulated bonded pipes (non-metallic -) [parts of machines].

Class 11:        Apparatus for ventilating purposes, not including ventilation windows systems; ventilation [air conditioning] installations and apparatus; ventilating systems; ventilating fans; ventilation terminals; temperature regulators; ventilation hoods; filters for air conditioning; air impellers for ventilation; motorised fans for ventilation; valves for air conditioners; extractors [ventilation or air conditioning]; air conditioning fans; exhaust hoods; cooker hoods; heaters; valves (thermostatic -) [parts of heating installations]; valves [plumbing fittings]; filters for industrial and household use; machines for the ventilation, air conditioning and heating of buildings and machine tools.

Class 17:        Tubes, hoses, and fittings therefor, including valves.

Class 19:        Pipes and tubes, and fittings therefor; ducts, not of metal, for ventilating and air conditioning installations.

Class 37:         Building, maintenance, repair and installation services relating to air conditioning, ventilating and heating apparatus and systems; air conditioning, ventilating and heating contractor services; consultation and advice relating to air conditioning, ventilating and heating systems and apparatus.

2.        European Union trade mark application No 12 637 773 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 637 773. The opposition is based on Spanish trade mark registration No 3 079 655. 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 and services

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

Class 11:        Heating apparatus and installations, parts of heating installations such as feeding apparatus for heating boilers, radiators (heating), stoves, hot plates, heat accumulators; apparatus for steam generating, refrigerating, ventilating; water supply installations; water supply equipment; pipelines and water distribution installations ; equipment or facilities for water discharge; water intake apparatus; hot water appliances and boilers, water heaters; apparatus for water treatment, equipment for water purification, machines for water purification; safety accessories for water or gas apparatus and pipes; regulating accessories for water or gas apparatus and pipes; sanitary installations.

The contested goods and services, after a limitation, are the following:

Class 6:        Non-electric cables and wires of common metal; pipes, tubes and hoses, and fittings therefor, including valves; ducts of metal for ventilating and air conditioning installations; ducts of metal for housing air conditioning and ventilation pipes; junctions of metal for pipes; ventilation pipes of metal.

Class 7:        Pumps; suction machines for industrial purposes; industrial blowers; clamp connectors for piping [parts of machines]; pre-insulated bonded pipes (non-metallic -) [parts of machines].

Class 9:        Optical, weighing apparatus and instruments; detectors; gauges; controllers (regulators); remote control apparatus; energy controllers and regulators; air analysis apparatus; hygrometers and humidity sensors; programming apparatus; central heating and ventilation programming apparatus; thermostat apparatus and controllers; computer software.

Class 11:        Apparatus for ventilating purposes, not including ventilation windows systems; ventilation [air conditioning] installations and apparatus; ventilating systems; ventilating fans; ventilation terminals; temperature regulators; ventilation hoods; filters for air conditioning; air impellers for ventilation; motorised fans for ventilation; valves for air conditioners; extractors [ventilation or air conditioning]; air conditioning fans; exhaust hoods; cooker hoods; heaters; valves (thermostatic -) [parts of heating installations]; valves [plumbing fittings]; filters for industrial and household use; machines for the ventilation, air conditioning and heating of buildings and machine tools.

Class 17:        Tubes, hoses, and fittings therefor, including valves.

Class 19:        Pipes and tubes, and fittings therefor; ducts, not of metal, for ventilating and air conditioning installations.

Class 37:         Building, maintenance, repair and installation services relating to air conditioning, ventilating and heating apparatus and systems; air conditioning, ventilating and heating contractor services; consultation and advice relating to air conditioning, ventilating and heating systems and apparatus.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, and the term ‘such as’, used in the opponent’s list of goods, indicate that the specific goods and services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

Contested goods in Class 6

The contested pipes, tubes and hoses, and fittings therefor, including valves are similar to the opponent’s pipelines and water distribution installations in Class 11, since they have the same purpose (e.g. to create water supply installations). They also have the same producers, target the same relevant public (e.g. technicians dealing with water installations) and distribution channels (e.g. dedicated sections in hardware stores and specialised sales outlets).

The contested ducts of metal for ventilating and air conditioning installations; ducts of metal for housing air conditioning and ventilation pipes; junctions of metal for pipes; ventilation pipes of metal are similar to the opponent’s apparatus for ventilating, as they have similar purposes, are provided by the same providers and target the same customers (e.g. technicians dealing with air conditioning installations) through the same distribution channels (e.g. dedicated sections in hardware stores and specialised sales outlets).

The contested non-electric cables and wires of common metal are metal hardware cables and wires. When comparing these with the opponent’s goods in Class 11, which mainly include goods for heating apparatus and installations and water and sanitary equipment and installations, they are all dissimilar. They differ in nature and purpose, since the contested goods are used for lifting, hauling and towing, or conveying force through tension. These goods are not complementary or in competition with each other, either. They have different distribution channels and the companies manufacturing them are also different.

Contested goods in Class 7

The contested pumps; clamp connectors for piping [parts of machines]; pre-insulated bonded pipes (non-metallic -) [parts of machines] are similar to a low degree to the opponent’s water supply installations in Class 11. These goods have the same distribution channels (e.g. dedicated sections in hardware stores for sanitary installation equipment), target the same relevant public (e.g. technicians for water supply installations) and are produced by the same undertakings.

The contested suction machines for industrial purposes; industrial blowers are specific goods that are used in several kinds of industries, such as in mining, petrochemicals, metalworking, generation of electricity and gas, agriculture and waste management. They differ in nature and purpose from the opponent’s goods in Class 11. These goods target the professional public in a variety of industrial fields, while the opponent’s goods, such as apparatus for heating, apparatus for cooking, apparatus for water supply and sanitary purposes, etc., target the public at large and professionals in the construction industry, for example. These goods are not complementary or in competition. They have different methods of use, natures, purposes, distribution channels and origins, as it is unlikely that the same kind of undertakings would manufacture these goods. Therefore, they are considered dissimilar.

Contested goods in Class 9

The contested optical, weighing apparatus and instruments; detectors; gauges; controllers (regulators); remote control apparatus; energy controllers and regulators; air analysis apparatus; hygrometers and humidity sensors; programming apparatus; central heating and ventilation programming apparatus; thermostat apparatus and controllers; computer software are specific goods designed for measuring, detecting and monitoring, and programs that can be used with a particular computer system. They differ in nature and purpose from the opponent’s goods in Class 11. These goods have different methods of use, natures, purposes, distribution channels and origins, as it is unlikely that the same kind of undertakings would manufacture these goods. Therefore, they are considered dissimilar.

Contested goods in Class 11

The contested apparatus for ventilating purposes, not including ventilation windows systems; ventilation [air conditioning] installations and apparatus; ventilating systems; ventilating fans; ventilation terminals; ventilation hoods; filters for air conditioning; air impellers for ventilation; motorised fans for ventilation; valves for air conditioners; extractors [ventilation or air conditioning]; air conditioning fans; exhaust hoods; cooker hoods; machines for the ventilation and air conditioning of buildings and machine tools are included in the broad category of, or overlap with, the opponent’s apparatus for ventilating. Therefore, they are identical.

The contested temperature regulators; heaters; valves (thermostatic -) [parts of heating installations]; machines for the heating of buildings and machine tools are included in the broad category of, or overlap with, the opponent’s heating apparatus and installations. Therefore, they are identical.

The contested valves [plumbing fittings] are included in the broad category of the opponent’s water supply equipment. Therefore, they are identical.

The contested filters for industrial and household use overlap with the opponent’s apparatus for water treatment. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 17

The contested tubes, hoses, and fittings therefor, including valves are similar to the opponent’s pipelines and water distribution installations in Class 11, since they have the same purpose, to create/insulate water supply installations. Furthermore, they have the same producers, relevant public and distribution channels.

Contested goods in Class 19

The contested pipes and tubes, and fittings therefor; ducts, not of metal, for ventilating and air conditioning installations are similar to heating apparatus and installations in Class 11, since air conditioning installations are identical to heating installations and therefore the contested components for such installations have the same purpose, producers, relevant public and distribution channels.

Contested services in Class 37

The contested building, maintenance, repair and installation services relating to air conditioning and heating apparatus and systems; air conditioning and heating contractor services belong to the category of goods-related services. Since by nature goods and services are dissimilar, similarity between goods and their building/installation, maintenance and repair can be established only when it is common in the relevant market sector for the manufacturer of the goods also to provide such services, when the relevant public coincides, and when building/installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not as after-sales services). These contested services are similar to the opponent’s heating apparatus and installations in Class 11. Indeed, these goods and services are often offered by the same undertakings, which not only sell the goods but also offer various services that relate to the building/installation and maintenance of such goods; in this regard, it is not uncommon in the relevant market sector for the manufacturers of the goods also to provide the service of repairing them. Moreover, the goods and services are in competition with each other; for instance, instead of buying new air-conditioning equipment, one might decide to repair the equipment one already has. The goods and services target the same relevant public and have the same distribution channels.

Following the same reasoning, the contested building, maintenance, repair and installation services relating to ventilating apparatus and systems; ventilating contractor services are similar to the opponent’s apparatus for ventilating in Class 11.

Advisory services are services for the provision of advice that is tailored to the circumstances or needs of a particular user and recommendations for specific courses of action by the user.

The contested consultation and advice relating to air conditioning, heating systems and apparatus are similar to the opponent’s heating apparatus and installations in Class 11, as these services are commonly offered together with the goods, have the same distribution channels (e.g. specialised sales outlets for household appliances and installations), target the same relevant public (e.g. technicians dealing with air conditioning and heating systems installations) and can have the same producers/providers.

Following the same reasoning, the contested consultation and advice relating to ventilating systems and apparatus are similar to the opponent’s apparatus for ventilating in Class 11.

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 goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. As the degree of specialisation of these goods and services, as well as their cost, may vary significantly (from ventilating fans in Class 11 to building, maintenance, repair and installation services relating to air conditioning systems in Class 37), it is considered that the degree of attention may also vary from average to high.

3. 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 sign composed of the verbal element ‘VALIOX’, written in grey lower case letters, and a fanciful figurative element combining two vertical curved lines and a semicircle in grey.

The contested sign is a figurative mark consisting of the word ‘VALLOX’, written in blue upper case letters, and a fanciful figurative element composed of an arrow and a curved line in blue.

Conceptually, neither the verbal elements nor the figurative elements of the signs have any clear meaning in the relevant territory. It follows that a conceptual comparison between the signs is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

All of the components of the signs are distinctive to an average degree. However, it should be borne in mind that, 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).

Turning to the dominance of elements in the earlier mark, its two components have more or less the same visual impact. As regards the contested sign, the mere fact that the device is placed to the left of the verbal element does not automatically mean that it is visually more outstanding, given that the word occupies a much larger proportion of the sign and has the same visual impact as the figurative element. Therefore, neither of the marks under comparison has any element that could be considered clearly more dominant than any other.

Visually, the signs coincide in the string of letters ‘VAL*OX’. They differ in their fourth letters, ‘I’ in the earlier mark and ‘L’ in the contested sign, the stylisation of their verbal elements, their colours and their figurative elements. Considering this and bearing in mind that the verbal elements of the signs differ in only one letter each, and that the consumers are likely to focus on the verbal elements, the signs are visually similar to an average degree.

Aurally, in Spanish, the pronunciation of the double letter ‘L’ of the contested sign will be rather similar to the pronunciation of the letters ‘LI’ in the middle of the earlier mark. Furthermore, the signs have in common the sound of the letter sequence ‘VA*OX’. Given that the figurative elements will not be enunciated, the pronunciations of the signs are similar to a high degree.

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 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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly identical, partly similar to various degrees and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree, without this impression being altered by any conceptual perception.

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).

In an overall assessment of the relevant factors of the case, the differences identified between the signs are insufficient to counteract the similarities between them and to enable the relevant public, whether the general public or professionals, to safely distinguish between them in the context of identical or similar goods and services. When encountering the signs at issue, the public may overlook the differences in the verbal elements and assume that they denote goods and services produced/provided by the same undertaking, or economically linked undertakings, and that the marks simply have different graphic depictions.

In its observations of 02/01/2017, the applicant argues that it has been designing and selling goods for over 40 years and that its goods are well known for their quality. In support of its arguments, the applicant argues that it has used the trade name ‘VALLOX OY’ in its business since 1998, and submits evidence in this regard.

The Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant also points out that it is the owner of EU trade mark No 5 651 484 ‘VALLOX DIGIT’, registered on 19/12/2007, and asserts that this proves that the contested EU trade mark application was not applied for to create confusion between the marks in question but as a new logo for the applicant’s goods.

In this regard, the Opposition Division clarifies that the assessment of likelihood of confusion is limited to the trade marks at issue in the present proceedings. Therefore, the applicant’s rights with regard to any other EU trade marks are irrelevant.

Therefore, the applicant’s arguments have to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public, even for consumers paying a high degree of attention. The opposition is partly well founded on the basis of the opponent’s Spanish trade mark No 3 079 655.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

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 strong similarity between the signs is sufficient to offset the low degree of similarity between some of the goods and services, and a likelihood of confusion exists also in relation to those goods and services.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Arkadiusz GORNY

Jorge ZARAGOZA GOMEZ

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.