OPPOSITION No B 2 251 158

Nathalie Fouquet, 120, Avenue de Provence, 13190 Allauch, France and Jean-Christophe Fouquet, 109, Impasse des Jonquilles, 13420 Gemenos, France (opponents), represented by Santarelli, 49, avenue des Champs Elysées, 75008 Paris

France (professional representative)

a g a i n s t

Thyssenkrupp Infrastructure GmbH, Hollestraße 7, 45127 Essen, Germany (applicant), represented by Faustmann Neumann Rechtsanwälte GbR, Kaiserstraße 30ª, 40479 Düsseldorf, Germany (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 251 158 is partially upheld, namely for the following contested goods and services:

Class 6:         Building materials of metal for civil engineering, canal construction and structural engineering, including large-area steel shoring, in particular shoring elements and formwork elements of metal, namely steel shoring panels, supports, props, spindles, struts, slide rails, chateau planks, sheet piles, supporting frames and stretching frames, formwork panels, pressure beams, posts, stabilisers, guide frames; pipe tongs, boxes of metal for shoring trenches, metallic building components, ironmongery, small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, non-electric cables and wires of common metal, metallic containers, bung covers.

Class 35:         Retailing of building equipment and machines, in particular trench shoring devices, namely shoring elements and formwork elements of metal, pipe tongs, boxes of metal for shoring trenches, components of metal, ironmongery and small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, metal cables and wires (not for electrical purposes), containers of metal, bung covers.

Class 37: Building construction, in particular civil engineering, canal construction, structural engineering and engineering.

2.        European Union trade mark application No 11 866 647 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 11 866 647. The opposition is based on French trade mark registration No 1 411 874. 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:

Classes 6, 19 and 37: All being building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal, repairs.

The contested goods and services are the following:

Class 6:         Building materials of metal for civil engineering, canal construction and structural engineering, including large-area steel shoring, in particular shoring elements and formwork elements of metal, namely steel shoring panels, supports, props, spindles, struts, slide rails, chateau planks, sheet piles, supporting frames and stretching frames, formwork panels, pressure beams, posts, stabilisers, guide frames; pipe tongs, transportable buildings of metal, boxes of metal for shoring trenches, metallic building components, ironmongery, small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, non-electric cables and wires of common metal, metallic containers, bung covers.

Class 7:         Construction machinery for sewer construction and structural engineering, in particular for large-scale steel construction.

Class 35:         Retailing of building equipment and machines, in particular trench shoring devices, namely shoring elements and formwork elements of metal, pipe tongs, transportable constructions of metal, boxes of metal for shoring trenches, components of metal, ironmongery and small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, metal cables and wires (not for electrical purposes), containers of metal, bung covers.

Class 37:         Building construction, in particular civil engineering, canal construction, structural engineering and engineering, rental of building equipment and machines, in particular trench shoring devices.

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 building materials of metal for civil engineering, canal construction and structural engineering, including large-area steel shoring, in particular shoring elements and formwork elements of metal, namely steel shoring panels, supports, props, spindles, struts, slide rails, chateau planks, sheet piles, supporting frames and stretching frames, formwork panels, pressure beams, posts, stabilisers, guide frames; pipe tongs, boxes of metal for shoring trenches, metallic building components, ironmongery, small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, non-electric cables and wires of common metal, metallic containers, bung covers are included in the broad category of the opponent’s building materials. Therefore, they are identical.

Transportable buildings of metal are buildings of metal designed and built to be movable rather than permanently located. Often used temporarily and later removed. They are often seen on building sites. They are finished products. Therefore, contested transportable buildings of metal have a different nature, purpose and method of use than the opponent’s building materials and public works, all elements armour plating props horizontal, all  elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal, repairs. Furthermore, they are not complementary. Therefore, they are dissimilar.

Contested goods in Class 7

The contested construction machinery for sewer construction and structural engineering, in particular for large-scale steel construction and the opponent’s building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal have a different nature, purpose, method of use, and origin. Furthermore, it is not common that manufacturers of these goods also provide repair services. Usually, they are provided independently of the purchase. Therefore, the contested construction machinery for sewer construction and structural engineering, in particular for large-scale steel construction is dissimilar to the opponent’s building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal, repairs in Classes 6, 19 and 37.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The list of the contested services in this Class is ruled by the individual items following the term ‘namely’. As explained above, since this word is used in the specification of the goods to which the retail services relate, the list has to be interpreted in such a way that the retail services concern exclusively the items listed after the term namely, that are shoring elements and formwork elements of metal, pipe tongs, transportable constructions of metal, boxes of metal for shoring trenches, components of metal, ironmongery and small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, metal cables and wires (not for electrical purposes), containers of metal, bung covers. 

Since shoring elements and formwork elements of metal, pipe tongs, boxes of metal for shoring trenches, components of metal, ironmongery and small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, metal cables and wires (not for electrical purposes), containers of metal, bung covers are included in the broad category and identical to opponent’s building materials, the contested services retailing of building equipment and machines, in particular trench shoring devices, namely shoring elements and formwork elements of metal, pipe tongs, boxes of metal for shoring trenches, components of metal, ironmongery and small items of metal hardware, pipes and tubes of metal and rails for building, link chains of metal, metal cables and wires (not for electrical purposes), containers of metal, bung covers are similar to low degree to the opponent’s building materials.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

This condition is not fulfilled in the present case since transportable constructions of metal are dissimilar to the opponent’s building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal as stated above. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, retail services of transportable constructions of metal are dissimilar to the opponent’s building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal.

Retail services of transportable constructions of metal and opponent’s services of repairs have a different nature, purpose and method of use. Therefore, they are dissimilar.  

Contested services in Class 37

Although by nature the goods and services are not similar, the contested building construction, in particular civil engineering, canal construction, structural engineering and engineering are complementary to the opponent’s building materials, they can coincide in end users and distribution channels as it is common in the relevant market sector for the building construction service providers to provide building materials too. Therefore, they are similar to low degree.  

The contested rental of building equipment and machines, in particular trench shoring devices have different origin, purpose, nature and method of use and therefore are dissimilar to the opponent’s building materials and public works, all elements armour plating props horizontal, all elements formwork and implementing pipes, common metals and their alloys, laminated building materials and melted pipes of metal, repairs.

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 at issue are specialised goods and services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature, terms and conditions of the purchased goods and services, the frequency of purchase and the price.

3. The signs

KRINGS
Earlier trade mark	Contested sign

The relevant territory is France.

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 word mark, consisting of the six-letter word ‘KRINGS’. In the case of word marks, it is the word as such that is protected and not its written form.

The word ‘KRINGS’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative trade mark consisting of the verbal elements ‘KRINGS VERBAU’ depicted in red upper case rather standard typeface. The word ‘VERBAU’ is depicted below the word ‘KRINGS’. The verbal elements are depicted against the yellow background within a red rectangular frame.

The figurative element (the coloured background and the frame) of the contested sign of purely decorative nature, is less distinctive than the verbal element.

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).

The words ‘KRINGS VERBAU’ have no meaning for the relevant public and therefore are distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in word element ‘KRINGS’ which is distinctive in relation to the relevant goods and services. However, they differ in the verbal element ‘VERBAU’ which is also distinctive in relation to the relevant goods and services and in the less distinctive figurative element (yellow background and red rectangular frame) of decorative nature.  

In its observations, the applicant argued that the contested sign is clearly longer than the earlier mark, namely, in the written form there is a doubling of length between the signs. It is true that the verbal element of the contested sign consists of two words whereas the earlier trade mark of one word, however, it is entirely and identically contained in both signs and it appears first in the verbal element of the contested sign. Therefore, the Opposition Division is of the opinion that this will not be overlooked by the relevant public even though the degree of attention varies from average to high.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in one syllable word ‘KRINGS’, present identically in both signs. The pronunciation differs in the two-syllable word  ‛VER-BAU’ of the contested mark, which has no counterpart in the earlier mark.

In its observations the applicant argued that phonetically the additional word ‘VERBAU’ in the contested sign is a two syllable word, clearly longer than the word element ‘KRINGS’ and it dominates the word element. It is true that the word element ‘VERBAU’ is a two- syllable word and the word element ‘KRINGS’ is of one syllable only, however, the word ‘KRINGS’ will be identically pronounced in both signs. Moreover, it will be pronounced before the second word. Since consumers generally tend to focus on the beginning of a sign when they encounter a trademark, they will first encounter and pronounce the word ‘KRINGS’. Since both words are depicted in equal size letters and one on top of the other, no word is more dominant than the other.

Therefore, the signs are similar to an average 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.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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, part of the goods and services are identical or similar to low degree and they are directed at the business customers with specific knowledge. The degree of attention varies from average to high.

The distinctiveness of the earlier trade mark is normal.

The signs are considered visually highly similar and aurally similar to an average degree.

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.

In spite of the difference in the additional word in the contested sign, the coinciding word ‘KRINGS’ plays a distinctive role in both signs. Given that the earlier trade mark is entirely contained in the contested sign, that the stylisation of the verbal element is rather slight and that the figurative element is of a decorative nature, it is concluded that the differences are not capable of counteracting the similarity between the signs which will be perceived both visually and orally.  

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).

Therefore, and applying the principle of interdependence, the relevant public is likely to perceive the contested sign as a sub-brand or variant of the earlier mark, configured in a different way, and believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations the applicant has raised an argument that the earlier mark was filed in bad faith and that by filing of the opposition the opponent is abusing its rights. It must be noted that the applicant has a right to file an invalidity action, as stated in the EUTMR, in separate invalidity proceedings. The Opposition Division has no authority to assess the validity of the earlier mark or circumstances under which it was registered, in the opposition proceedings. Therefore, the Opposition Division will not examine this claim, nor the evidence and  arguments of the applicant as regards this matter in the present opposition proceedings.

The applicant has also raised an argument of coexistence. In its observations, the applicant explained that the former owner of the earlier trade mark was employed by KRINGS VERBAU GmbH which was taken over by the applicant and argued that with the knowledge of the opponent it had marketed products bearing the word ‘KRINGS’ for many years and in a great number of countries, including France.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the present case, the applicant did not file any evidence to support its arguments regarding the coexistence of the trade marks on the market that would allow to assess if the abovementioned conditions are fulfilled. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s French trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark. As mentioned above, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks. In the present case, the degree of similarity between the marks is sufficiently high as to overcome the low degree of similarity between some goods and services. Therefore, there is a likelihood of confusion also as regards the contested services found to be similar only to a low degree to the opponent’s goods.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services 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

Keeva DOHERTY

Biruté SATAITE-GONZALEZ

Michaela SIMANDLOVA

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.