OPPOSITION No B 2 741 869

Joseph Raab GmbH & Cie. KG, Gladbacher Feld 5, 56566 Neuwied, Germany (opponent), represented by Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Γεωργιοσ Κωνσταντοπουλοσ, Tυρναβου 1, Αγιοσ Δημητριοσ, Αττικη, Greece (applicant), represented by Dionysios Seloulis – Dimitrios Seloulis Law Company, 58 Othonos Str., 17234 Dafni, Attica, Greece (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 741 869 is partially upheld, namely for the following contested services:

Class 35: The bringing together, for the benefit of others, of systems of aluminium (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Installation of systems of aluminium.

2.        European Union trade mark application No 15 228 571 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 228 571 for the figurative mark , namely against all the services in Classes 35 and 37. The opposition is based on European Union trade mark registration No 1 408 970 for the word mark ALKON, and on German trade mark registration No 39 951 389 for the word mark ALKON. 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:

1. Earlier European Union trade mark registration No 1 408 970

Class 6: Rigid pipes for building (of metal).

Class 7: Exhaust gas systems for oil-fired, gas-fired and solid fuel furnace installations and for stationary engine sets; exhaust gas installations of metal, non-metallic materials or a combination of both; condensation boxes for neutralising of smoke condensates in chimney systems.

Class 19: Chimney systems, shafts and elements for inserting into chimneys of metal; chimney cowls and chimney seals; rigid pipes for building, not of metal or of metallic and non-metallic materials combined; fillings and insulating material for chimney construction.

Class 42: Engineering services in the field of insulation and exhaust gas technology for furnace installations and stationary motive power units.

(2) Earlier German trade mark registration No 39 951 389

Class 6: Chimney systems, shafts and elements for inserting into chimneys of metal; chimney cowls and chimney seals, of metal; rigid pipes for building, of metal or a combination of metal and non-metallic materials; prefabricates for chimney construction, of metal; fillings and insulating material for chimney construction, of metal.

Class 7: Exhaust gas systems for stationary engine sets; exhaust gas installations of metal, non-metallic materials or a combination of both; condensation boxes for neutralising of smoke condensates in chimney systems.

Class 11: Exhaust gas systems for oil-fired, gas-fired and solid fuel furnace installations.

Class 19: Chimney systems, shafts and elements for inserting into chimneys of ceramic, plastic or natural building materials, namely of bricks, fireclay and similar materials; chimney cowls and chimney seals, not of metal; rigid pipes for building, not of metal or of metallic and non-metallic materials combined; prefabricates for chimney construction, not of metal; fillings and insulating material for chimney construction, not of metal.

Class 42: Engineering services in the field of insulation and exhaust gas technology for furnace installations and stationary motive power units.

The contested services are the following:

Class 35: The bringing together, for the benefit of others, of systems of aluminium and buildings of metal (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Installation of systems of aluminium and buildings of metal.

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 services in Class 35

Regarding the contested services in Class 35, it must be pointed out that the activity of retail in goods as a service for which protection of an EUTM can be obtained does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. It follows that for this definition of the circle of services, the rules concerning ‘retail services’ will apply.

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 contested services in Class 35 are on the one hand, the bringing together, for the benefit of others, of systems of aluminium (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, and, on the other hand, the bringing together, for the benefit of others, of buildings of metal (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Systems of aluminium overlap with the opponent’s chimney systems, for inserting into chimneys of metal, covered by the earlier German trade mark. Chimney systems can be made of aluminium, regardless of their function as passages or flues by which the smoke from a fire or furnace ascends and escapes, or as funnels carrying off smoke or steam from a locomotive engine, steam-boat, etc. Therefore, these goods are considered identical. It follows that the contested the bringing together, for the benefit of others, of systems of aluminium (excluding the transport thereof), enabling customers to conveniently view and purchase those goods is similar to a low degree to the opponent’s chimney systems, for inserting into chimneys of metal.

Regarding buildings of metal, it must be pointed out that a building is ‘a structure that has a roof and walls, for example a house or a factory’ (information extracted from Collins Online Dictionary on 28/08/2017 at https://www.collinsdictionary.com/dictionary/english/building).

The opponent’s goods covered by its earlier marks in Classes 6, 7, 11 and 19 do not comply with the definition of a ‘building’, since none of these goods have walls or a roof. Even if the opponent´s arguments of complementarity or competition were true, this would not render the goods identical.

Similarity between retail services of specific goods covered by one mark, like in the present case, the contested the bringing together, for the benefit of others, of buildings of metal (excluding the transport thereof), enabling customers to conveniently view and purchase those goods and specific goods covered by another mark, namely by the earlier mark in Classes 6, 7, 11 and 19, can only be found where the goods involved in the retail services and the specific goods covered by the other marks are identical. This condition is not fulfilled in the present case, thus these contested services and the opponent’s goods in Classes 6, 7, 11 and 19 are dissimilar.

The contested the bringing together, for the benefit of others, of buildings of metal (excluding the transport thereof), enabling customers to conveniently view and purchase those goods and the opponent’s services in Class 42, namely engineering services in the field of insulation and exhaust gas technology for furnace installations and stationary motive power units are dissimilar. Retail services, such as the contested 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 the opponent’s services in Class 42, being specific engineering services. Furthermore, these services have different providers, distribution channels, relevant public, methods of use and are neither in competition nor complementary.

Contested services in Class 37

The contested services, installation of systems of aluminium may be regarded as construction services. Construction services in Class 37 and engineering services in Class 42 in general are often offered together through the same distribution channels to the same public. These services can be also complementary.

Systems of aluminium and the opponent’s furnace installations may overlap, as the latter goods can be made of aluminium. It follows that the construction services and engineering services under comparison are similar to a low degree, as they are related to the same products, they may coincide in their relevant public and distribution channels, and they are complementary.

The contested installation of buildings of metal in Class 37 is dissimilar to the opponent’s goods in Classes 6, 7, 11 and 19. By their nature, goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found. However, in the present case, the main features of buildings of metal are different from those of the opponent’s goods in in Classes 6, 7, 11 and 19. These goods and services are not complementary, they do not share the same producers/providers, distribution channels and relevant public, and their purpose, nature and method of use are also different. Further, they are not in competition.

The contested installation of buildings of metal in Class 37 and the opponent’s engineering services in the field of insulation and exhaust gas technology for furnace installations and stationary motive power units in Class 42 are dissimilar.

The opponent’s services in Class 42 in the present case are specific engineering services relating to insulation and exhaust gas technology for furnace installations and stationary motive power units. This technology, in principle, does not include the planning or the actual installation of buildings of metal. It follows that while comparing these services, construction services and engineering services concerning goods that are not identical have to be compared. These goods require a different kind of expertise when connecting services are purchased by the relevant consumers. This means that the providers of these services, and also their distribution channels are different. These services are further not complementary, and are not in competition with each other. These findings lead to the conclusion that the services at issue are dissimilar.

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 found to be similar are directed at the public at large, for example at home owners, and also at business customers with specific professional knowledge or expertise, especially in the field of construction works and connecting services.

The public’s degree of attentiveness will be higher than average, due to the higher price and specialised nature of the purchased goods and services.

3. The signs

ALKON
Earlier trade marks	Contested sign

The relevant territory is the European Union and 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 word ‘ALKON’ constituting the earlier marks has no meaning for the public in the relevant territories and therefore, it is normally distinctive.

As regards the contested sign, aside from its distinctive verbal element ‘alkon’ written with a customary font in blue and in italics, it contains further figurative elements, namely a blue rectangular frame and a yellow background.

As to the aforementioned figurative elements, 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).

Further, due to the frequent use of adding background colours and a frame to a word mark, these elements will have a limited impact on the relevant public, as they are rather of a decorative nature, and thus they are confined to be secondary and weakly distinctive.

Visually, the signs coincide in the word element ‘ALKON’. They differ in the secondary figurative elements of a rather decorative nature present in the contested sign, namely a blue rectangular frame and a yellow background, and the blue letters of its word element which is written in italics.

Therefore, the signs are highly similar.

Aurally, the signs are identical.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation, mentioning only that the opposition trade marks are not descriptive and they have at least an average scope of protection, emphasized by their extensive use. However, even if the above was to be accepted as a claim of enhanced distinctiveness of the marks, the evidence attached by the opponent under Enclosures 1, 2 and 3, namely extracts from the website of the German company group Raab describing the nature of their cooperation with the company Kutzner + Weber, and products distributed by them, is not sufficient to support such a claim. These documents do not show the extent of use of the earlier marks, and much less serve to show a degree of market recognition by the relevant public.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

A part of the conflicting goods and services is found to be similar to a low degree, while another part is dissimilar. The earlier marks have an average degree of distinctiveness. The relevant public is the general public and professionals, whose level of attention is higher than average.

The signs are identical aurally, and are visually similar to a high degree. The differences between the signs have only a limited impact on the relevant consumers, as the different elements, namely the figurative elements of the contested sign are rather decorative, and therefore are secondary. The relevant public will be more likely to focus on the verbal element of the marks, namely to the distinctive and identical word element ‘ALKON’, as this will be used to refer to it.

Further, the 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). This is particularly relevant in the present case considering that there is no conceptual difference between the signs that could facilitate their differentiation on behalf of the consumers. 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).

Consequently, even professional consumers displaying a high level of attentiveness, who would be capable of detecting certain differences between the two conflicting signs, and might associate the signs with each other.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. Indeed, due to the identical word element ‘ALKON’ that the signs contain identically, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier marks, configured in a different way according to the type of goods and services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, it is conceivable that the targeted public may regard the services designated by the trade mark applied for as coming from the same undertaking, even if the similarity between the goods and services compared is low.

In its observations, the applicant argues that it owns several registrations with the word ‘ALKON’ in Greece, and some of those coexist with the opponent’s earlier mark(s).

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 on national or Union registries 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.

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 relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 1 408 970 and German trade mark registration No 39 951 389 for the identical word ‘ALKON’.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods and services of the earlier trade marks.

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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

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.