OPPOSITION No B 2 583 709

Kallisto 7 Spółka z Ograniczoną Odpowiedzialnością Spółka Komandytowa, ul. Dekerta 24, 30-703 Kraków, Poland (opponent), represented by Anna Górska, ul. Długa 59/5, 31-147 Kraków, Poland (professional representative)

a g a i n s t

A.G. Plastics NV, Spinnerijstraat 100, 8530 Stasegem-Harelbeke, Belgium (applicant), represented by K.O.B. NV, Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 583 709 is upheld for all the contested goods.

2.        European Union trade mark application No 14 188 171 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 188 171. The opposition is based on European Union trade mark registration No 12 500 724. 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 6: Metal windows; metal balcony windows; metal terrace windows; metal roller shutters; metal roller blinds; metal doors; metal balcony doors; metal terrace doors; metal folding shutters; metal windowsills; metal gates; metal garage doors; metal window systems; metal door systems; metal door and window frames; metal window accessories; metal roller shutter accessories; metal roller blind accessories; metal door accessories; metal folding shutter accessories; metal window equipment; metal roller shutter equipment; metal roller blind equipment; metal door equipment; metal folding shutter equipment; metal building profiles; metal window profiles; metal roller shutter profiles; metal roller blind profiles; metal door profiles; metal folding shutter profiles; metal building fittings; metal window fittings; metal roller shutter fittings; metal roller blind fittings; metal door fittings; metal folding shutter fittings; metal building materials; metal building constructions; metal walls; metal partitions; metal displays; sunrooms (metal constructions).

Class 19: Not of metal windows; not of metal balcony windows; not of metal terrace windows; not of metal roller shutters; not of metal roller blinds; not of metal doors; not of metal balcony doors; not of metal terrace doors; not of metal folding shutters; not of metal windowsills; not of metal gates; not of metal garage doors; not of metal window systems; not of metal door and window frames; not of metal window accessories; not of metal roller shutter accessories; not of metal roller blind accessories; not of metal door accessories; not of metal folding shutter accessories; not of metal window equipment; not of metal roller shutter equipment; not of metal roller blind equipment; not of metal door equipment; not of metal folding shutter equipment; not of metal window profiles; not of metal roller shutter profiles; not of metal roller blind profiles; not of metal door profiles; not of metal folding shutter profiles; not of metal building materials; not of metal building constructions; not of metal walls; not of metal partitions; not of metal displays (windows); sunrooms (not of metal constructions); glass for building; insulating glass; glass for windows; plate glass; hardened glass; drawn glass; window glass; glazings.

The contested goods are the following:

Class 6: Metal building materials; Transportable buildings of metal; Windows, including roof windows; Skylights, Cellar windows; Lattice windows; Glass roofs; Dormers; flashing; Ready-made building elements, including ready-made building elements for making roofs, in the form of windows; Window profiles; Window sections and profiles for roofs; Covering materials for windows, including caps and profiles; All the aforesaid goods of metal or made using metal.

Class 19: Building materials (non-metallic); Transparent non-metallic structures; Windows, including roof windows and skylights; Windows of synthetic material/plastic; Profiles, window profiles and sections, including window profiles of synthetic material/plastic; dormers; roof terraces; Roofings; Glass roofs; glass canopies; Covering materials for windows, including caps and profiles; Panels with multi-layered glass, including double glazing; All the aforesaid goods not of metal.

As regards the scope of protection of the contested goods, it should be noted that the term ‘including’, used in the applicant’s list of goods, indicates that the specific goods 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).

Contested goods in Class 6

The contested metal building materials; window profiles; all the aforesaid goods of metal or made using metal are identically contained in the opponent’s list of goods in Class 6 (including synonyms).

Transportable buildings of metal; glass roofs; all the aforesaid goods of metal or made using metal are included in the broad category of the opponent’s metal building constructions in Class 6. Therefore, they are identical.

The contested windows, including roof windows; skylights, cellar windows; lattice windows; dormers; all the aforesaid goods of metal or made using metal are included in the broad category of the opponent’s metal windows in Class 6. Therefore, they are identical.

The contested flashing; ready-made building elements, including ready-made building elements for making roofs, in the form of windows; window sections and profiles for roofs; covering materials for windows, including caps and profiles; all the aforesaid goods of metal or made using metal are included in or overlap with the broad category of the opponent’s metal building materials in Class 6. Therefore, they are identical.

Contested goods in Class 19

The contested building materials (non-metallic); all the aforesaid goods not of metal are identically contained in the opponent’s list of goods in Class 19 (including synonyms).

The contested transparent non-metallic structures; roof terraces; glass roofs; glass canopies; all the aforesaid goods not of metal are included in the broad category of the opponent’s not of metal building constructions in Class 19. Therefore, they are identical.

The contested windows, including roof windows and skylights; windows of synthetic material/plastic; dormers; all the aforesaid goods not of metal are included in the broad category of the opponent’s not of metal windows in the same class. Therefore, they are identical.

The contested profiles, window profiles and sections, including window profiles of synthetic material/plastic; roofings; covering materials for windows, including caps and profiles; panels with multi-layered glass, including double glazing; all the aforesaid goods not of metal are included in the broad category of the opponent’s not of metal building materials in the same class. 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 found to be identical are directed at building construction professionals as well as the public at large, for example those interested in DIY or home improvement. The degree of attention of both professionals and the public at large may vary from average to high, depending on the frequency of purchase of the relevant goods and their price.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

IWINDOW	Skylux iWindow
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.

Although the element ‘IWINDOW’, which the signs have in common, and the word ‘SKYLUX’ in the contested sign have no meaning as a whole for the public in the relevant territory, the English-speaking part of the public may dissect these elements and understand words such as ‘WINDOW’ and ‘SKY’. However, contrary to the applicant’s arguments, these words are not meaningful in the parts of the relevant territory where English is not commonly understood, such as Poland, Spain or Hungary. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the general public, which will perceive them as meaningless words without any identifiable components, and therefore having an average degree of inherent distinctiveness for the relevant goods. The use of lower and upper case letters is immaterial in the present case because word marks are protected for the word as such rather than its written form. Accordingly, the marks cannot be dissected simply because they contain both lower and upper case letters, as in the contested sign’s element ‘iWindow’.

Visually and aurally, the signs coincide in the word ‘IWINDOW’, which is the sole component of the earlier mark and the second component of the contested sign. This word is composed of seven letters and their sounds, which still form three syllables everywhere in the relevant territory where English is not understood. The signs differ in the word ‘SKYLUX’ in the contested sign, which has no counterpart in the earlier mark and is composed of six letters and their sounds, which form two syllables.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, as mentioned above, neither of the signs has a meaning for the non-English-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 its observations, the applicant claims that the earlier mark has a very low degree of distinctive character because of the descriptiveness of its components: ‘I’ meaning ‘interactive’ and ‘WINDOW’ being a generic product name of the relevant goods.

However, the Opposition Division has focused the analysis of the present case on the non-English-speaking part of the relevant public, which – as explained above in section  c) – will not dissect the earlier mark and will not associate it with any concepts.

Therefore, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the general non-English-speaking public in the relevant territory and its degree of distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical. The visual and aural similarity between the signs results from the element ‘IWINDOW’, which constitutes the entirety of the earlier mark and the second element of the contested sign. Moreover, as explained above, the element that the signs have in common has an average degree of distinctiveness in relation to the relevant goods from the perspective of the general non-English-speaking public.

Although the contested sign contains an additional and distinctive component, ‘SKYLUX’, the Opposition Division considers that its presence at the beginning of the sign is not sufficient to exclude a likelihood of confusion because the coinciding element, ‘IWINDOW’, which is the sole element of earlier mark, plays an independent distinctive role in both signs.

It is highly conceivable that although the relevant consumer displays a high degree of attention in relation to some of the relevant goods, he 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). Llikelihood 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.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the general public. 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, there is no need to extend the comparison of the signs to the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 500 724. It follows that the contested trade mark must be rejected for all the contested goods.

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

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Julie GOUTARD

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.