OPPOSITION No B 2 367 558

VIRAG S.R.L., Via della Moscova, 46/9, 20121 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C.S.R.L., Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Cemex Research Group AG, Römerstr. 13, 2555 Brügg bei Biel, Switzerland (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 367 558 is partially upheld, namely for the following contested goods:

Class 19:        Building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen; non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal.

2.        European Union trade mark application No 12 639 878 is rejected for all the above goods. It may proceed for the remaining 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 12 639 878. The opposition is based on European Union trade mark registration No 2 533 230. The opponent invoked Article 8(1)(a) and (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 19:        Laminated flooring; floor tiles, not of metal; floors (not of metal); resilient or vinyl flooring (non-metallic); resilient or vinyl wall coverings (non-metallic); parquet flooring; parquet floor boards.

Class 27:        Floor coverings; insulating floor coverings; linoleum.

After a limitation, the contested goods and services are the following:

Class 19:        Building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen; non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal.

Class 37:        Construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying work, plastering; remodelling of buildings.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 19

Floor tiles are identically contained in both lists of goods.

The contested building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, bricks are included in the broad category of, or overlap with, the opponent’s floors. Cement, concrete, screed, stone, lime, gravel and gypsum floors are available on the market. Therefore, these goods are identical.

The contested asphalt, pitch and bitumen are similar to a low degree to the opponent’s floors (not of metal). Asphalt, pitch and bitumen are construction materials used in building or isolating floors. The goods under comparison have the same distribution channels, they can have the same producers and they are complementary to each other.

The contested building materials (non-metallic), namely partitioning and non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal are similar to a low degree to the opponent’s resilient or vinyl wall coverings (non-metallic). The latter, which serve to decorate walls, are often needed when using the contested materials. The goods under comparison have the same distribution channels, they can have the same producers and they are complementary to each other.

Contested services in Class 37

The contested construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying work, plastering; remodelling of buildings are not similar to the opponent’s goods. Although when providing construction and repair services, or providing other installation services, the provider does indeed use various materials, such as the opponent’s goods in Classes 17 and 27, it is not customary in trade for construction companies to be engaged in manufacturing specific goods used in the construction process. It is generally known that the materials used in building construction and in connection with repair and installation or demolition services have a completely different origin from those services. Therefore, the contested services are considered dissimilar to all the opponent’s goods.

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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to higher than average, depending on the nature, price and frequency of purchase of the products in question.

3. The signs

EVOLUTION
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 earlier mark is a word sign composed of a single word, ‘EVOLUTION’, whereas the contested sign is a figurative mark consisting of the verbal elements ‘EVOLUTION’, ‘ULTRA’, ‘BY’ and ‘DESIGN’, in that order, written in rather standard lower case italic letters, except for the word ‘EVOLUTION’, whose letters ‘t’ and ‘i’ are slightly stylised. The words are depicted in different colours: blue (‘EVOLUTION’), red (‘ULTRA’) and grey (‘BY’ and ‘DESIGN’). In addition, the contested sign contains other figurative devices, namely two curved lines in red and grey located just beneath the letter ‘e’ in the word ‘EVOLUTION’.

The word ‘EVOLUTION’, present in both signs, and the other verbal elements, ‘ULTRA’, ‘BY’ and ‘DESIGN’, of the contested sign, will be understood by English-speaking consumers. The last two words create an expression, ‘by design’. ‘EVOLUTION’ is ‘a process of gradual development in a particular situation or thing over a period of time’ (information extracted from Collins Dictionary on 06/03/2017 at www.collinsdictionary.com/dictionary/english/evolution), ‘ULTRA’ means ‘extreme or extremely’ (information extracted from Cambridge Dictionary on 06/03/2017 at www.dictionary.cambridge.org/dictionary/english/ultra?a=british) and ‘BY DESIGN’ is ‘as a result of a plan; intentionally’ (information extracted from Oxford Dictionaries on 06/03/2017 at www.en.oxforddictionaries.com/definition/us/by_design).

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 common element ‘EVOLUTION’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom, Ireland and Malta.

The contested sign could be understood by the public in the relevant territory as referring to an extreme evolution – an evolution being ‘a process of gradual development in a particular situation or thing over a period of time’ – made intentionally.

The word ‘EVOLUTION’ has no relation to the goods in question and is therefore distinctive. On the other hand, the other verbal elements of the contested sign, ‘ULTRA’, ‘BY’ and ‘DESIGN’ (‘BY DESIGN’), are distinctive to a low degree, as they may be perceived as alluding to the goods in question. Furthermore, the phrase ‘ULTRA BY DESIGN’ may be perceived as a laudatory slogan attached to the word ‘EVOLUTION’. The figurative elements in the contested sign, described above, are also distinctive to a low degree, as they are essentially decorative.

The earlier mark, as a one-word mark, has no element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The verbal element ‘EVOLUTION’ in the contested sign could be considered more dominant (visually eye-catching) than the other elements, as it is the first element, depicted in blue and in a slightly larger font than the other elements. Furthermore, its first letter is underlined by the two curved lines in red and grey.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the word ‘EVOLUTION’, which is distinctive. However, they differ in the abovementioned additional verbal elements and some figurative devices, which have a low degree of distinctiveness or have a decorative nature.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EVOLUTION’, present identically in both signs. As explained above, this coinciding element is distinctive. The pronunciation differs in the sound of the words ‘ULTRA’, ‘BY’ and ‘DESIGN’ in the contested sign, which have no counterparts in the earlier mark. These words are, however, distinctive to a low degree.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The concept of the word ‘EVOLUTION’ is clearly perceptible in both marks.

Therefore, as the signs will be associated with similar meanings, they are conceptually similar to an average 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

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.

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 contested goods are identical or similar to a low degree and the contested services are dissimilar to the opponent’s goods, and they target the public at large and professionals, whose degree of attention may vary from average to higher than average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs have an average degree of visual, aural and conceptual similarity because they have in common the distinctive element ‘evolution’. Furthermore, this coinciding element constitutes the first, or only, verbal element of the signs at issue. The earlier mark is wholly included in the beginning of the contested sign. The differences between the signs lie in their figurative elements and additional verbal elements.

The phrase ‘ULTRA BY DESIGN’, which was found to have a low degree of distinctiveness, may be perceived by the public in the relevant territory as a verbal supplement to the word ‘EVOLUTION’. 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 figurative elements in the contested sign, namely two curved lines in red and grey, make the word ‘EVOLUTION’ more striking. They are merely decorative and, as such, they will not be remembered or perceived as a badge of origin by the relevant public.

The Opposition Division is of the opinion that the visual, aural and conceptual similarities caused by the coinciding element ‘evolution’ outweigh the differences between the marks under comparison, and may induce consumers to believe that the contested goods, which are identical or similar to those of the opponent, including those that are similar to a low degree, come from the same undertaking or from economically-linked undertakings. Even highly attentive consumers may believe that the contested sign designates a particular line of goods.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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.

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

The rest of the contested 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services under comparison are obviously not identical.

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 shall 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

Loreto URRACA LUQUE

Michal KRUK

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.