OPPOSITION DIVISION
OPPOSITION No B 2 510 694
Nabaltec AG, Alustr. 50 -52, 92421 Schwandorf, Germany (opponent), represented
by Engemann Jörg-Berten Rechtsanwälte, Brandstr. 10, 53721 Siegburg,
Germany (professional representative)
a g a i n s t
Oscar Marchetto, Piazza Castello n. 19/3, Oderzo, Italy, Alessandro Zanchetta, via
Mario Spilimbergo n. 14, Ponte di Piave, Italy, Giancarlo Corazza, via Divisione Julia
n. 4, Azzano Decimo, Italy (applicants), represented by Parolin.Legal DP Partners
Srl, Via Dino Buzzati 8/5, 31044 Montebelluna (TV), Italy (professional
representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 510 694 is upheld for all the contested goods, namely
Class 19: Building materials (non-metallic).
2. European Union trade mark application No 13 577 465 is rejected for all the
contested goods. It may proceed for the remaining goods and services.
3. The applicants bear 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 13 577 465 , namely
against some of the goods in Class 19. The opposition is based on, inter alia,
German trade mark registration No 3 020 140 541 262 .
The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 510 694 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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s German trade mark registration No 3 020 140 541 262.
a) The goods
The goods on which the opposition is based are the following:
Class 19: Building materials; refractory building materials; aforesaid goods not
made of metal.
The contested goods are the following:
Class 19: Building materials (non-metallic).
The contested building materials (non-metallic) are identically included in both lists of
goods (including synonyms).
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.
In the present case, the goods found to be identical 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 above average depending on the
price, safety and environmental protection requirements and the frequency of
purchasing such goods.
c) The signs
Earlier trade mark Contested sign
Decision on Opposition No B 2 510 694 page: 3 of 5
The relevant territory is Germany.
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 final components ‘tec(h)’ will be perceived by a significant part of the relevant
public as an abbreviation for ‘Technologie’ (German for technology). In the context of
the goods the common final element indicates that these goods are manufactured
using technology, or that they use technology to enhance the quality of their
performance. Therefore, it is considered to be weak in relation to the relevant goods.
The earlier sign is a figurative sign which consists of the verbal element ‘Nabaltech’.
The component ‘Nabal’ which does not carry a meaning for the relevant public and is
therefore distinctive is depicted in dark green standard type faced bold italic letters.
The weak component ‘tec’ is depicted in black italic standard type faced letters. The
verbal element is underlined by a tilting dark green line, which is of purely decorative
nature and therefore non-distinctive. None of the elements can be considered to be
more dominant (visually eye-catching) than others.
The contested sign is a figurative sign which consists of the verbal element
‘navaltech’ depicted in bold black standard type faced lower case letters. The
component ‘naval’ does not carry any meaning for the relevant public and is therefore
distinctive. The component ‘tech’, as stated above, is weak.
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).
Visually, the signs coincide in the letters ‘Na*altec*’. The signs differ merely in their
third letters ‘v’ (contested sign) and ‘b’ (earlier sign), as well as in the contested sign’s
letter ‘h’ of the weak component ‘tech’ and the earlier sign’s purely decorative line
and colour way.
Therefore, the signs are highly similar.
Aurally, the signs coincide in the sound of the letters ‘Na*altec*’. The pronunciation
differs merely in the sound of their respective third letter ‘v’ (contested sign) and ‘b’
(earlier sign). Furthermore, a part of the public will pronounce the sound of the
ending letters ‘c’ (earlier sign) and ‘ch’ (contested sign) differently, namely ‘tec’ as ‘tek’
and ‘tech’ as ‘teç’. A part of the relevant public pronounces the components ‘tec’ and
‘tech’ identically.
Therefore, the signs are highly similar.
Conceptually, the signs’ coincide in the weak component ‘tec(h)’ which will be
perceived as an abbreviation for ‘technology’. The respective first component of each
mark has no meaning.
Decision on Opposition No B 2 510 694 page: 4 of 5
Taking into account that the sings coincide in the concept of the weak components
mentioned above, the signs are conceptually lowly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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 weak component in the mark, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
The goods are identical. The signs are conceptually lowly similar and visually and
aurally highly similar.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).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).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German
trade mark registration No 3 020 140 541 262. It follows that the contested trade
mark must be rejected for all the contested goods.
As the earlier German trade mark registration No No 3 020 140 541 262 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 510 694 page: 5 of 5
Since the applicants are 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
Irina SOTIROVA André Gerd Günther
BOSSE
Plamen IVANOV
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.