OPPOSITION No B 2 658 220

NOE-Schaltechnik Georg Meyer-Keller GmbH + Co. KG, Kuntzestr. 72, 73079 Süssen, Germany (opponent), represented by Dreiss Patentanwälte PartG mbB, Friedrichstraße 6, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

LIKO-S a.s., U Splavu 1419, 684 01 Slavkov u Brna, Czech Republic (applicant), represented by Jindřich Špaček, Svatopluka Čecha 106A, 612 00 Brno, Czech Republic (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 658 220 is upheld for all the contested goods and services, namely 

Class 19:        Structures, not of metal, facades, not of metal, cladding, not of metal, for structures and buildings, cladding for structures and buildings of living vegetation, facades created from green vegetation, modular houses not of metal.

Class 37:        Construction and demolition of buildings, construction of low-energy and zero-energy buildings and structures, construction of residential interiors, construction of filled metal walls, engineering construction in the field of irrigation, insulation and proofing of buildings, thermal insulation of buildings.

Class 42:        Construction drafting in the field of urban planning and commercial planning, design and construction drafting of low-energy and zero-energy buildings and structures, design of systems for water efficiency in buildings and structures.

2.        European Union trade mark application No 14 792 361 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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 14 792 361, namely against all the goods and services in Classes 19, 37 and 42. The opposition is based on European Union trade mark registration No 8 999 443. 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 and services on which the opposition is based are the following:

Class 1:        Oil purifying preparations, water purifying preparations, tempering and soldering preparations; chemical solvents.

Class 3:        Cleaning preparations for formwork for concrete (included in class 3) for use in the construction industry.

Class 4:        Separating agents containing oil for formwork for concrete (included in class 4).

Class 6:        Shuttering of metal for concrete, reinforcing materials of metal for concrete, prefabricated beams and parts of metal or of steel for walls and ceilings; formwork for walls and ceiling, being manual formwork and for crane use, tunnel formwork, rectangular support formwork, round-column formwork, shaft formwork, round container formwork, climbing scaffold for formwork, stair formwork, work scaffolding and protective scaffolding, support scaffolding, formwork accessories, namely clamps, clamping bridges; concrete formliners, formwork panels, formwork beams, building supports, transportable scaffolding, formwork scaffolding, work, forming and training scaffolding, clamping strips and clamping screws for concrete formwork, clamping cones and spacers, small items of metal hardware, non-electric wire goods, sheets.

Class 7:        Transport apparatus for formwork for concrete ceilings, tipping apparatus being machine parts, included in class 7, for finished concrete parts (building sector);work platforms with motorised and manual height-adjustment, lifts and parts therefor; mechanically movable standing surfaces for vehicles.

Class 9:        Computer programs for construction and formwork drafting; electric and electronic control mechanisms for lifts.

Class 17:        Plastics in extruded form for use in manufacture, in particular plastic panels, plastic formwork and plastic formwork covers.

Class 19:        Building materials (non-metallic), in particular concrete formwork and shuttering elements, not of metal, prefabricated beams and parts (not of metal) for walls and ceilings; formwork for walls and ceiling, being manual formwork and for crane use, tunnel formwork, rectangular support formwork, round-column formwork, shaft formwork, round container formwork, climbing scaffold for formwork, stair formwork, work scaffolding and protective scaffolding, support scaffolding, formwork accessories, namely clamps, clamping bridges; concrete formliners, formwork panels, formwork beams, building supports, transportable scaffolding, formwork scaffolding, work, forming and training scaffolding.

Class 37:        Building construction, in particular scaffolding and formwork construction, repair and installation services; architectural consultancy and monitoring of construction works; rental of concrete formwork, and parts thereof for structural and civil engineering.

        

Class 42:        Structural engineering, engineering planning with regard to formwork applications in structual and civil engineering; technical project studies for building construction.

The contested goods and services are the following:

Class 19:        Structures, not of metal, facades, not of metal, cladding, not of metal, for structures and buildings, cladding for structures and buildings of living vegetation, facades created from green vegetation, modular houses not of metal.

Class 37:        Construction and demolition of buildings, construction of low-energy and zero-energy buildings and structures, construction of residential interiors, construction of filled metal walls, engineering construction in the field of irrigation, insulation and proofing of buildings, thermal insulation of buildings.

Class 42:        Construction drafting in the field of urban planning and commercial planning, design and construction drafting of low-energy and zero-energy buildings and structures, design of systems for water efficiency in buildings and structures.

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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 19

The contested structures, not of metal and overlap with the opponent’s formwork for walls and ceiling, being manual formwork. Therefore, they are identical.

The facades, not of metal overlap with the opponent’s formwork for walls and ceiling, being manual formwork. Therefore, they are identical.

  

The contested cladding, not of metal, for structures and buildings, cladding for structures and buildings of living vegetation, facades created from green vegetation  overlap with the opponent’s formwork for walls and ceiling, being manual formwork. Therefore, they are identical.

The contested modular houses not of metal  and the opponent’s Building materials (non-metallic) can coincide in producer, end user and distribution channels. Therefore, they are considered similar.

 

Contested services in Class 37

The contested construction of buildings is identical to the opponent’s building construction.

The contested construction of low-energy and zero-energy buildings and structures, construction of residential interiors, construction of filled metal walls, engineering construction in the field of irrigation, insulation and proofing of buildings, thermal insulation of buildings are included in the broad category of the opponent’s building construction. Therefore, they are identical.

The contested demolition of buildings are necessary in some circumstances prior to the opponent’s building construction and to that extent they are complementary. They can be provided by the same companies and target the same public. Therefore, they are similar. 

Contested services in Class 42

The opponent’s structural engineering covered by Class 42 are defined as the application of scientific, economic, social and practical knowledge in order to design,

build and maintain structures.

The contested Construction drafting in the field of urban planning and commercial planning, design and construction drafting of low-energy and zero-energy buildings and structures, design of systems for water efficiency in buildings and structures are included in or overlap with the opponent’s structural engineering. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

NOE	LIKO-NOE
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. For reasons of economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The earlier mark is the word mark ‘NOE’.

The contested sign is the word mark ‘LIKO-NOE’.

The verbal element ‘LIKO-NOE’ as such and the combination thereof do not bear any meaning for the relevant public. Therefore, none of the signs has any element that could be considered more distinctive. The signs have no elements that could be considered dominant (visually eye-catching) than others.

 

Visually, the signs coincide in the letters ‘NOE’, being the second part of the verbal element of the contested sign and the sole element of the earlier sign, ‘LIKO-NOE’ (contested sign) versus ‘NOE’ (earlier sign). However, they differ in the first part of the verbal element of the contested sign ‘LIKO’ and the following hyphen which have no counterparts in the earlier mark. Taking into account that the contested sign incorporates the earlier mark in its entirety and because of the hyphen that element as such is perceived immediately, the signs are, at least, similar to an average degree.

Aurally, the signs coincide in the pronunciation the letters ‘NOE’. The sign differ in the additional letters ‘LIKO’ of the contested sign which have no counterparts in the earlier mark. The hyphen does not influence the pronunciation. Therefore, the sings are considered aurally, at least, similar to an average degree.

Conceptually, neither of the signs has a meaning for the German-speaking 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.

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 and services in question from the perspective of the German-speaking 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 contested goods and services are identical or similar to the opponent’s goods and services. The relevant goods and services target the public at large and business owners. The degree of attention may vary from average to high, depending on the specialised nature, the complexity, frequency of purchase and the price of the goods and services.

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).

The signs have been found to be visually and aurally similar to the extent that the contested sign entails the earlier mark in its entirety, ‘NOE’. Even though, consumers generally tend to focus on the first component of a sign when confronted with a trade mark, in the present case ‘NOE’ is clearly and equally perceivable as a distinctive part of the contested sign. That is because of the hyphenation which joins the second word ‘NOE’ with the foregoing word ‘LIKO’. Moreover, the two signs, as they coincide in ‘NOE’, could be perceived as two different product/service lines coming from/provided by the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 8 999 443. It follows that the contested trade mark must be rejected for all the contested goods and 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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.