OPPOSITION No B 2 780 651

Sansetsu (U.K.) Limited, Akira House, 16-17 Brunleys, Milton Keynes MK11 3EW, United Kingdom (opponent), represented by Pure Ideas Limited, 25 Meer Street, Stratford-upon-Avon, Warwickshire CV37 6QB, United Kingdom (professional representative)

a g a i n s t

TART s.r.o., Vinohradská 91, 618 00 Brno, Czech Republic (applicant).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 780 651 is upheld for all the contested goods.

2.        European Union trade mark application No 15 128 201 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 128 201. The opposition is based on European Union trade mark registration No 1 945 013. 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

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

Class 17:        Insulating materials; thermal insulating materials; insulating materials made from plastics and/or metallic foil; insulating material made from plastics bubble film and aluminium foil; accessories for the aforesaid goods, but not including adhesive tapes and adhesive films.

The contested goods are the following:

Class 17:        Insulation and barrier articles and materials; seals, sealants and fillers.

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.

Insulation materials are identically contained in both lists of goods (including synonyms).

The contested insulation articles are included in the broad category of, or overlap with, the opponent’s insulating materials. Therefore, they are identical.

The word ‘barrier’ refers to ‘anything that prevents or obstructs passage, access, or progress’ (Collins Dictionary online on 24/07/2017 at https://www.collinsdictionary.com/dictionary/english/barrier). Depending on how this word will be perceived exactly, the contested barrier articles and materials could either be included in or overlap with the opponent’s insulating materials. For example, they can be a type of insulating barrier that stops or retards corrosive elements from reaching the materials of a contacting surface. Therefore, these goods are identical.

The contested seals, sealants and fillers are substances that are used to seal holes, cracks or gaps, while the opponent’s insulating materials are building (or refurbishing) materials. These goods have the same purpose and nature, in that they are both construction and repairing materials. They can have the same commercial origin. Moreover, they are distributed through the same distribution channels and target the same relevant public. Therefore, these goods are highly 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 highly similar are directed at both the public at large and business customers with professional knowledge and expertise.

The degree of attention varies from average (in relation to inexpensive goods whose purchase does not require much involvement on the part of the public at the moment of choosing them, e.g. some types of sealants and fillers) to above average (in relation to goods that are bought infrequently and are expected to last for a long time, e.g. some types of insulating materials).

3. The signs

SANFLEX
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 part of the public for whom the verbal elements of the marks have no meaning, such as the Bulgarian-speaking part of the relevant public.

The earlier mark is a word mark. It consists of the word ‘SANFLEX’. As this word has no meaning for the relevant public, it is, therefore, distinctive. Word marks are protected as such independently of the typeface used and by definition they have no elements that could be regarded as more dominant than others.

The contested sign is a figurative mark consisting of the word ‘SUNFLEX’ in slightly stylised orange letters, which are outlined in red. As this element has no meaning for the relevant public, it is, therefore, distinctive. There are no elements in the mark that can be deemed more dominant than others.

Visually and aurally, the signs coincide in the letters ‘S*NFLEX’ and have the same length and number of syllables. However, they differ in the second letter (‘A’ versus ‘U’) and, visually, in the stylisation of the contested sign.

Therefore, the signs are visually and aurally highly similar.

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 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

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 goods are partly identical and partly similar to a high degree. They target the public at large and business customers, and the degree of attention is considered to vary from average to above average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.

The signs are similar to a high degree from both a visual and an aural perspective because they coincide in six out of seven letters and have the same structure. The differing letter at the beginning of the words ‘S*NFLEX’ and the fact that the contested sign is figurative and depicted in orange (outlined in red) are not sufficient to counteract the significant similarity between the signs. The earlier mark is a word mark, which is protected as such independently of the typeface used.

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 Bulgarian-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 1 945 013. It follows that the contested trade mark must be rejected for all the contested 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.

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

Andrea VALISA

Birgit FILTENBORG

María Belén IBARRA DE DIEGO

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.