OPPOSITION DIVISION
OPPOSITION No B 2 487 547
CIN – Corporação Industrial do Norte, S.A., Avenida Dom Mendo, 831, 4474-009
Maia, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Pedro
Gil da Silva Pelayo de Sousa Henriques, Paulo Rui da Silva Pelayo de Sousa
Henriques, Rua de Sá da Bandeira, 706 – 6°. Dt°., 4000-432 Porto, Portugal
(professional representative)
a g a i n s t
Shingels, S.A., c/Torres Quevedo s/n (Pol. Ind. Coll de la Manya), 08403 Granollers,
Spain (applicant) represented by Plaza y Cía, Calle Orense, 64 1ºD, 28020 Madrid,
Spain (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 487 547 is upheld for all the contested goods, namely
Class 2: Paints and washes.
Class 17: Insulating paints.
2. European Union trade mark application No 13 007 877 is rejected for all the
contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary Remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 13 007 877 for the word mark
‘AQUALACK’, namely against all the goods in Classes 2 and 17. The opposition is
based on Portuguese trade mark registration No 242 216 for the word mark
‘AQUALAC’. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 487 547 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 2: Paints, varnishes, lacquers.
The contested goods are the following:
Class 2: Paints and washes.
Class 17: Insulating paints.
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 2
Paints are identically contained in both lists of goods.
The contested washes are diluted paints and are therefore included in the broad
category of the opponent’s paints. They are therefore identical.
Contested goods in Class 17
The contested insulating paints are highly similar to the opponent’s paints in Class 2.
The nature of the goods coincide in that they are both paints. The method of use is
the same. The purpose may differ slightly as insulating paints have the additional
function of insulating apart from covering the surfaces they are used on. They are
directed at the same relevant public, share distribution channels and can come from
the same providers.
b) 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.
Decision on Opposition No B 2 487 547 page: 3 of 5
In the present case, the goods found to be identical or highly similar are directed at
the public at large and at professional customers with specific professional
knowledge or expertise.
The degree of attention is considered to vary from average to higher than average.
Insulating paint, for example, may require a higher than average degree of attention
given its potential effect on energy savings. It also tends to be more expensive.
c) The signs
AQUALAC AQUALACK
Earlier trade mark Contested sign
The relevant territory is Portugal.
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 the word mark ‘AQUALAC’, which has no meaning as a whole for
the relevant public in Portugal. However ‘AQUA’ will be understood as ‘related to
water’, given that it is a well-known prefix present in a number of words in
Portuguese (aquático, aquacultura, etc.). Therefore it is descriptive in relation to the
goods at issue that may be water based and so is non-distinctive. The remaining
element ‘LAC’ has no meaning in Portuguese and is therefore distinctive.
The contested sign is the word mark ‘AQUALACK’ that has no meaning as a whole
for the relevant Portuguese public. The above considerations regarding ‘AQUA’ also
apply here. ‘LACK’ is distinctive having no meaning in Portuguese.
Visually, the signs coincide in ‘AQUALAC’, which is the earlier mark in full and the
first seven of eight letters of the contested sign. The signs differ only in the last letter
of the contested sign ‘K’, which has no counterpart in the earlier mark. Therefore, the
signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‛AQUALAC’, present identically in both signs. The pronunciation of ‘C’ and ‘CK’ is
identical so there is no difference in the pronunciation of ‘AQUALAC’ and
AQUALACK’. Therefore, the signs are aurally identical.
Conceptually, neither of the signs has a meaning as a whole. Although the
coinciding word ‘AQUA’ will evoke a concept, it is not sufficient to establish any
conceptual similarity, as this element is non-distinctive and cannot indicate the
commercial origin. The attention of the relevant public will be attracted by the
additional fanciful verbal elements, which have no meaning. Therefore, the
conceptual aspect will have no impact on 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.
Decision on Opposition No B 2 487 547 page: 4 of 5
d) 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, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
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.
According to the case law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.).
In the present case the goods are partly identical and partly highly similar. The signs
are aurally identical and visually highly similar, the conceptual aspect not influencing
the similarity of the signs. The earlier mark has a normal degree of distinctive
character and the level of attention of the relevant consumer varies from average to
higher than average.
The earlier mark is contained in its entirety in the contested sign. The only difference
is the last additional letter ‘K’ of the contested sign. ‘C’ and ‘CK’ are pronounced the
same way so the signs are phonetically identical.
Account should be taken of the fact that average consumers only rarely have the
chance to make a direct comparison between different marks, but must trust in their
imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26). Even consumers who pay a higher than average 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).
Considering all the above, and given the very high similarity between the signs on
goods that are identical and highly similar, there is a likelihood of confusion on the
part of the Portuguese public regardless of the level of attention.
Decision on Opposition No B 2 487 547 page: 5 of 5
Therefore, the opposition is well founded on the basis of the opponent’s Portuguese
trade mark registration No 242 216. It follows that the contested trade mark must be
rejected for all the contested goods.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Renata COTTRELL Lynn BURTCHAELL Denitza STOYANOVA-
VALCHANOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.