OPPOSITION No B 2 754 565

Spiro International S.A., Industriestrasse 173, 3178 Bösingen, Switzerland (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden  (professional representative)

a g a i n s t

Eurospiro SA, Rua do Crasto 736, 4150-243 Porto, Portugal, (applicant), represented by Alberto Ranhada Domingues, Rua do Crasto 736 4150-243, 4150-243 Porto, Portugal (professional representative).

On 07/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 565 is partially upheld, namely for the following contested goods:

Class 6:        Metal hardware; Containers, and transportation and packaging articles, of metal; Building and construction materials and elements of metal; Unprocessed and semi-processed materials of metal, not specified for use; Doors, gates, windows and window coverings of metal.

2.        European Union trade mark application No 15 383 763 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 383 763. The opposition is based on: European Union trade mark registration No 1 013 697, International Registration No 662 522 designating Czech Republic, Spain, Portugal, Romania, Slovakia and Poland, European Union trade mark registration No 6 458 269, International Registration No 523 521 designating Portugal, Austria, Italy, Benelux and Germany. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 26/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 31/12/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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 European Union trade mark registration No 1 013 697.

1. The goods

The goods on which the opposition is based are the following:

Class 6:        Tubes, tubing, ducts, ducting, flow control and mixing valves all of common metal and all for use in ventilation, air-conditioning, warm-air heating and exhaust systems, and parts and fittings for all the aforesaid goods, none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment.

Class 7:        Machines for use in the sheet metal industry in particular machines for the manufacture of helically formed metal tubing and ducting, cutting machines, rollforming machines, stitchwelding machines, flanging and locking machines, flow control and mixing valves, being parts of machines, and parts and fittings for all the aforesaid goods, none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment.

Class 11:        Tubes, tubing, ducts and ducting, flow control and gas mixing valves, all for use in ventilation, air-conditioning, warm-air heating and exhaust systems, and parts and fittings for all the aforesaid goods, none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment.

Class 17:        Seals of rubber or of plastics, for use in the sealing of tubes, ducts and of pipes; none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment.

The contested goods are the following:

Class 6:         Metal hardware; Containers, and transportation and packaging articles, of metal; Building and construction materials and elements of metal; Structures and transportable buildings of metal; Unprocessed and semi-processed materials of metal, not specified for use; Doors, gates, windows and window coverings of metal.

The term ‘in particular’ used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 metal hardware; containers, and transportation and packaging articles, of metal; building and construction materials and elements of metal; unprocessed and semi-processed materials of metal, not specified for use are all broad categories of goods that may have some relevant points of contact with the opponent’s  tubes, tubing, ducts all of common metal and all for use in ventilation, air-conditioning, warm-air heating and exhaust systems, and parts and fittings for all the aforesaid goods, none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment in Class 6. All the contested goods are metal goods that may be specifically applied to ventilation, air-conditioning, warm-air heating and exhaust systems and be manufactured by the same companies that produce the opponent’s goods. Furthermore, the conflicting goods may target the same relevant professional public and have the same distribution channels. Therefore, they are similar.

The contested doors, gates, windows and window coverings of metal and the opponent’s tubes, tubing, ducts, ducting, flow control and mixing valves all of common metal and all for use in ventilation, air-conditioning, warm-air heating and exhaust systems, and parts and fittings for all the aforesaid goods, none being, or for use with steam process equipment, and none being, or for use with, fluid control equipment may target the same relevant professional public and have the same distribution channels. They may also coincide in their ultimate purpose (e.g., all can be used for ventilation, air-conditioning, warm-air heating installations). It follows that these goods are similar to a low degree.

The remaining contested structures and transportable buildings of metal have different purposes and method of use when compared to the opponent’s goods in Class 6, and even more so when compared to the opponent’s goods in Classes 7, 11 and 17. They are sold through different distribution channels and target different relevant public. They are neither complementary to each other nor in competition. Therefore, the remaining contested goods in Class 6 are dissimilar to them.

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 similar are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

3. The signs

SPIRO	EUROSPIRO
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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the relevant public for which the common term ‘SPIRO’ does not have any meaning.

The earlier sign consists of the verbal element ‘SPIRO and the contested sign of the verbal element ‘EUROSPIRO’.

The verbal element ‘EUROSPIRO’ has no clear meaning for the relevant public. However, the relevant public will immediately split it into two word elements by detaching the term ‘EURO’ from the remaining part ‘SPIRO’.

The term ‘EURO’ of the contested sign will be perceived as, inter alia, a combining form used to form words ‘relating to Europe, European or the European Union’ and indicates the European origin, or the supply throughout Europe, of the goods concerned (14/07/2007, T-207/06 Europig EU:T:2007:179, § 34). It is considered that this element is weak for the relevant contested goods, as it may be associated by consumers as describing the origin or place of provision of the goods or also as an indication that the goods are in compliance with the European Union standards. The relevant public understands the meaning of this weak element and will not pay to it as much attention as to the other more distinctive element of the mark, namely the element ‘SPIRO’. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The common element ‘SPIRO’ does not convey any particular meaning for the public in the relevant territory in relation to the relevant goods. It has an average degree of distinctiveness and constitutes the distinctive part of the contested sign.

The marks in question have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the string of letters ‘SPIRO’, which constitutes the earlier mark and is the most distinctive element of the contested sign. The signs differ in the initial element of the contested sign ‘EURO’, which, is however weak in relation to the relevant goods.

Therefore, considering the coincidence in the normally distinctive element ‘SPIRO’ which constitutes the earlier mark as well as the weakness of the differing component ‘EURO’ of the contested sign, the marks are visually and aurally similar to a high degree.

Conceptually, the public in the relevant territory will be aware of the semantic content of the element ‘EURO’ of the contested sign, which, however, due to its weak distinctive character will have a limited impact on the assessment of the likelihood of confusion.

The signs in question coincide in the distinctive element ‘SPIRO’ which, as such, does not convey any particular meaning for the public in the relevant territory. On the other hand, the remaining element ‘EURO’ is weak. Consequently, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one of the comparison, the examination of the 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

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).

The contested goods are partly similar (including similar to a low degree) and partly dissimilar to the ones covered by the earlier mark. The level of attention of the relevant public varies from average to high.

The signs are visually and aurally similar to a high degree. The common element ‘SPIRO’ has no meaning and the distinctiveness of the earlier mark is average. This common element is the most distinctive part of the contested sign and the only element of the earlier mark. The remaining, differentiating element ‘EURO’ is weak for the public in the relevant territory because it describes the origin or place of provision of the goods or indicates that they are in compliance with the European Union standards, as explained above.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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 Polish-speaking part of the relevant public and, therefore, the opposition is partially well founded on the basis of the earlier European Union trade mark registration No 1 013 697. 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 similar (including similar to a low degree) to those covered by the earlier mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Finally, the opponent has also based its opposition on the following earlier trade marks:

•  International Registration No  662 522 for the word mark ‘SPIRO’, designating the Czech Republic, Spain, Portugal, Romania, Slovakia and Poland.

• European Union trade mark registration No 6 458 269 for the figurative mark ;

•  International Registration No 523 521 for the figurative mark, designating Portugal, Austria, Italy, Benelux and Germany.

Since these marks cover identical (to the one which has been compared) or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

The Opposition Division

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Monika CISZEWSKA

Gueorgui 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.