OPPOSITION No B 2 537 986

Rautaruukki Oyj, Panuntie 11, 00620 Helsinki, Finland (opponent), represented by Awapatent AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative)

a g a i n s t

Werner Figlhuber, Wagnerstraße 12, 2371 Hinterbrühl, Austria (applicant), represented by Peter Vögel, Stadiongasse 4, 1010 Wien, Austria (professional representative).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 537 986 is partially upheld, namely for the following contested goods:

Class 2:        Coatings.

Class 17:        Flexible pipes, tubes, hoses, and fittings therefor, including valves, non-metallic; flexible tubes, not of metal.

Class 19:        Building and construction materials and elements, not of metal; pipes made of cement; structures and transportable buildings, not of metal.

2.        European Union trade mark application No 13 910 609 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 910 609, namely against all the goods in Classes 2, 17 and 19. The opposition is based on European Union trade mark registration No 8 495 913. 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:

Class 6:        Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 40:        Coating of metals and construction materials, wires and tubes of metal.

The contested goods are the following:

Class 2:        Coatings; dyes, colorants, pigments and inks; raw natural resins; thinners and thickeners for coatings, dyes and inks.

Class 17:        Insulation and barrier articles and materials; seals, sealants and fillers; latex [rubber]; guttapercha; asbestos; mica; plastic substances, semi-processed; flexible pipes, tubes, hoses, and fittings therefor, including valves, non-metallic; elastomers; plastics in extruded form for use in manufacture; flexible tubes, not of metal.

Class 19:        Building and construction materials and elements, not of metal; pipes made of cement; statues and works of art made of materials such as stone, concrete and marble, included in the class; structures and transportable buildings, not of metal.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘such as’ and ‘including’, used in the applicant’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce 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 2

The contested coatings are substances which are applied to a wide variety of material and surfaces (e.g. metals, walls, floors, ceilings, wood) for decorative and/or specific protective purposes. Even though they have a different nature from the opponent’s services of coating of metals and construction materials, wires and tubes of metal in Class 40, given that the contested goods are tangible, whereas the opponent’s services are intangible, they can have the same relevant public and distribution channels. Furthermore, they are complementary to each other. Therefore, these goods and services are similar to a low degree.

The contested dyes, colorants, pigments and inks are products added to something else to cause a change in colour; the contested raw natural resins are a raw material used for the production of some products used, inter alia, in the painting industry; and the contested thinners and thickeners for coatings, dyes and inks are solvents used to thin coatings, dyes and ink or to clean up after their use. When comparing all of these goods with the opponent’s goods and services in Classes 6 and 40, the Opposition Division notes that there is no connection between them that could lead to a finding of similarity. Apart from being different in nature (intangible opponent’s services versus tangible contested goods), the goods and services under comparison differ in their purpose, given that the opponent’s goods and services mainly concern the building industry and coating related thereto, while the contested goods refer to the production of paintings, coatings or colorants. It also follows that they have different producers/providers (building companies versus chemical factories producing colorants and additives for paintings, coatings and colorants), relevant public, distribution channels and method of use. In addition, they are not in competition nor complementary to each other. Considering all the above, the contested goods are dissimilar to all of the opponent’s goods and services in Classes 6 and 40.

Contested goods in Class 17

The contested flexible pipes, tubes, hoses, non-metallic; flexible tubes, not of metal can have the same purpose, producers, relevant public, distribution channels and method of use as the opponent’s pipes and tubes of metal in Class 6. Furthermore, they can be in competition with each other. Therefore, these goods are similar to a high degree.

The contested fittings therefor (i.e. for flexible pipes, tubes, hoses, non-metallic), including valves, non-metallic can have the same producers, relevant public and distribution channels as the opponent’s pipes and tubes of metal in Class 6. Furthermore, they are complementary to each other. Therefore, these goods are similar.

The contested insulation and barrier articles and materials; seals, sealants and fillers are various types of insulators, sealants and fillers and the contested latex [rubber]; guttapercha; asbestos; mica; plastic substances, semi-processed; elastomers; plastics in extruded form for use in manufacture are raw or semi-raw substances which are manufactured to be used in other industrial processes. Although some of the opponent’s goods in Class 6, e.g. common metals and their alloys are also raw or semi raw materials, this mere connection is insufficient to find them similar to the above contested goods. The goods have a clearly different nature and purpose and do not have the same producers, relevant public and distribution channels. Moreover, they are not in competition nor complementary to each other. As regards the opponent’s services in Class 40, the Opposition Division cannot see any relevant points of contact between these services and the abovementioned contested goods either. Apart from being different in nature, given that the opponent’s services are intangible, whereas contested goods are tangible, they differ in purpose, producers/providers, relevant public, distribution channels and method of use. In addition, they are not in competition nor complementary to each other. Considering all the above, the contested goods are dissimilar to all of the opponent’s goods and services in Classes 6 and 40.

Contested goods in Class 19

The contested building and construction materials and elements, not of metal can have the same purpose, producers, relevant public, distribution channels and method of use as the opponent’s metal building materials in Class 6. Furthermore, they can be in competition. Therefore, these goods are similar to a high degree.

Likewise, the contested structures and transportable buildings, not of metal can have the same purpose, producers, relevant public, distribution channels and method of use as the opponent’s transportable buildings of metal in Class 6. Furthermore, they can be in competition. Therefore, these goods are similar to a high degree.

The contested pipes made of cement can have the same purpose, producers, relevant public, distribution channels and method of use as the opponent’s pipes and tubes of metal in Class 6. Furthermore, they can be in competition with each other. Therefore, these goods are similar to a high degree.

The contested statues and works of art made of materials such as stone, concrete and marble, included in the class have no points of contact with the opponent’s goods and services in Classes 6 and 40. Apart from being different in nature (the intangible services of the opponent versus the tangible contested goods), the goods and services under comparison differ in their purpose, given that the opponent’s goods and services mainly concern the building industry and coating related thereto, while the contested goods refer to artistic (decorative) non-metallic products. It also follows that they have different producers/providers (building companies versus artists), relevant public, distribution channels and method of use. In addition, they are not in competition nor complementary to each other. Considering all the above, the contested goods are dissimilar to all of the opponent’s goods and services in Classes 6 and 40.

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 (to different degrees) are directed at the public at large and professionals with specific professional knowledge or expertise in the building industry.

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

PUREX	APUREX
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 signs under comparison are word marks, each of which is composed of one verbal element. The earlier mark consists of the word ‘PUREX’ and the contested sign consists of the word ‘APUREX’.

The element ‘PUREX’ of the earlier mark may be understood, at least by a part of the relevant public (mainly by some professionals), as an acronym standing for ‘Plutonium Uranium Redox Extraction’, i.e. a chemical method used to purify fuel for nuclear reactors or nuclear weapons. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive to an average degree.

The element ‘APUREX’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive to an average degree for the relevant goods.

Each being composed of a single verbal element, neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters/sounds ‘*PUREX’ which, in fact, means that the earlier mark is completely included in the contested sign. However, the signs differ in the initial letter/sound of the contested sign, namely the letter/consonant ‘A’, which has no counterpart in the earlier mark.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, as seen above the contested sign has no meaning throughout the relevant territory, and the earlier mark has no meaning for the majority of the public in the relevant territory. Since a conceptual comparison is not possible in such event, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, at least a part of the public may perceive the abovementioned meaning of the word ‘PUREX’ of the earlier mark. However, since one of the signs will not be associated with any meaning (the contested sign), the signs are not conceptually similar for this part of the public.

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 relevant goods and services 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account must be also 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 with 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).

As concluded above, the contested goods are partly similar (to different degrees) and partly dissimilar to the opponent’s goods and services; the relevant public consists of the public at large and professionals; the degree of attention ranges from average to high; the earlier mark has a normal degree of inherent distinctiveness.

The signs in conflict are visually and aurally similar to a high degree, as explained in detail above in section c) of this decision. Conceptually, they are not similar for a part of the public, while for the remaining part of the public a conceptual comparison is not possible. The only difference between the signs is confined to the first letter of the contested sign which is, in the Opposition Division’s opinion, not sufficient to counteract the similarities between the signs especially as the earlier sign in its entirety appears in the contested sign. Even professionals with a high degree of attention may be confused as to the origin of the goods and services in question.

 

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 8 495 913. 

It follows from the above that the contested sign must be rejected for all the goods found to be similar (to different degrees) to those of the earlier trade mark, even for the contested goods that are only similar to a low degree to the opponent’s goods and services, since, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods and services is clearly offset by the high degree of visual and aural similarity between the signs.

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) EUTMR, the opposition based on this article and directed at these goods 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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Martin MITURA

Ric WASLEY

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.