OPPOSITION No B 2 743 873

Magmatech Ltd, 110 Gloucester Avenue, London NW1 8HX, United Kingdom (opponent), represented by Michael Ellis, 53/4 George Street, Edinburgh, Edinburgh, City of, EH2 2HT, United Kingdom (professional representative)

a g a i n s t

Oikos S.r.l., Via Cherubini 2, 47043 Gatteo Mare (FC), Italy (applicant), represented by Studio Moradei Snc, Via Sanvito 43, 21100 Varese, Italy (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 743 873 is upheld for all the contested goods, namely 

Class 19:        Coatings [building materials]; marble; stone; artificial stone; building stone; bituminous coatings for roofing; non-metal wainscotting; wood panelling; cladding, not of metal, for building; wall claddings, not of metal, for building; wall linings, not of metal, for building; quartz; silica [quartz]; cement; enamelled glass, for building; wall tiles, not of metal.

2.        European Union trade mark application No 15 364 748 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 364 748, namely against all the goods in Class 19. The opposition is based on, inter alia, European Union trade mark registration No 12 848 578. 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.

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 12 848 578.

1. The goods

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

Class 19:        Ties (Non-metallic -) for cavity walls; facades (non-metallic -); window facades (non-metallic); non-metallic building facade elements; facades of non-metallic materials; cladding (non-metallic -) for facades; facade elements of non-metallic materials; facade construction components of non-metallic materials; concrete walls; reinforced concrete; building materials of concrete reinforced with plastics and glass fibres; reinforcing bars, not of metal; structural timber; structural elements of glass; structural support members (non-metallic -); structural frameworks (non-metallic -) for buildings; structural reinforcement (non-metallic -) for construction purposes; structural sections (non-metallic -) for construction purposes; structural elements (non-metallic -) for use in building; structural support joists (non-metallic -) for the construction of floors.

The contested goods are the following:

Class 19:        Coatings [building materials]; marble; stone; artificial stone; building stone; bituminous coatings for roofing; non-metal wainscotting; wood panelling; cladding, not of metal, for building; wall claddings, not of metal, for building; wall linings, not of metal, for building; quartz; silica [quartz]; cement; enamelled glass, for building; wall tiles, not of metal.

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.

The contested cladding, not of metal, for building includes, as a broader category the opponent’s cladding (non-metallic -) for facades. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wall claddings, not of metal, for building overlap with the opponent’s cladding (non-metallic -) for facades, as far as they are both claddings for the wall being the facade of the building. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

It is common that the contested enamelled glass, for building are shaped and provided in the form of the opponent´s structural elements of glass (e.g. glass panels, being cut and shaped glass for construction purposes). Therefore, there is an overlap between the goods in comparison. It follows that these are identical.  

The contested non-metal wainscoting; wall tiles, not of metal; wood panelling; coatings [building materials]; wall linings, not of metal, for building are all building materials that share similar nature (being non-metallic covering materials used for the facades and walls of buildings) and coincide in the purpose (to cover the outer and/or the inner wall surface of the building for protection, insulation, decoration, etc.) with the opponent’s cladding (non-metallic -) for facades. They also coincide in producer, end user and distribution channels. It follows that these are similar to a high degree.

The contested bituminous coatings for roofing and the opponent’s cladding (non-metallic -) for facades have a similar purpose, namely for covering and protection against the elements of respectively the roof and the facade of a building. They also coincide in producer, end user and distribution channels. It follows that these are similar.

The contested cement is indispensable and one of the main ingredients of the opponent´s reinforced concrete. They both are building construction materials and share usually the same commercial origin. They furthermore target the same public and share the distribution channels. It follows that these are similar.  

The contested marble; stone; artificial stone; building stone; quartz; silica [quartz] and the opponent’s reinforced concrete are typical construction materials used in the building construction sector. These goods are also used at the same or similar industrial level. In view of this, it is very likely that the distribution channels, the usual commercial origins and the target public will be the same. Therefore, these goods are similar.

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 different degrees are directed at the public at large, but also at business customers with specific professional knowledge or expertise, such as the ones working in the construction sector. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, sophistication, and the frequency of purchase of the goods.

3. The signs

TEPLO                                        TIEPOLO

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 elements of the marks in comparison are not meaningful in certain territories, for example for the Polish-speaking part of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

Both signs are word marks. The earlier mark consists of the element ‘TEPLO’ and the contested sign consists of the element ‘TIEPOLO’. As it was explained above the elements ‘TEPLO’ of the earlier mark and ‘TIEPOLO’ of the contested sign have no particular meaning for the relevant part of the public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence (and the sounds) of letters ‘T*EP*LO’. They differ in the second letter (and sound) ‘I’ and the fifth letter (and sound) ‘O’ of the contested mark, which are not present in the earlier sign. However, due to the coinciding sequence of letters (and sounds), these differences are somewhat hidden and would not be that easily perceived by the relevant part of the public.

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

Conceptually, neither of the signs has a meaning for the relevant part of the public. 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 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

As has been concluded above, the contested goods are found to be identical, highly similar and similar to the opponent’s goods and must be assessed from the point of view of public whose degree of attention varies from average to higher than average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the signs are visually and aurally similar to an average degree, which similarity is based on the shared sequence ‘T*EP*LO’.

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).

Therefore, due to the coincidences between the signs, deriving from their visual and aural similarities, when consumers encounter the signs at different times, they maybe mistaken about the origin of the goods offered under the marks.  

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 848 578. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 12 848 578 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 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

André Gerd Günther BOSSE

Irina SOTIROVA

Natascha GALPERIN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.