OPPOSITION DIVISION
OPPOSITION No B 2 816 968
Basalt-Actien-Gesellschaft, Linzhausenstr. 20, 53545 Linz am Rhein, Germany
(opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333
Munich, Germany (professional representative)
a g a i n s t
Misturas Milenares Lda., Rua Nova nº.4, 3770-410 Oliveira do Bairro, Portugal
(applicant), represented by Tiago Rodrigues, Avenida Fernão de Magalhães 458 –
1º, Esquerdo, 3000-173 Coimbra, Portugal (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 816 968 is upheld for all the contested goods.
2. European Union trade mark application No 15 749 088 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 749 088 . The opposition is based on, inter
alia, German trade mark registration No 30 715 480 . 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
Decision on Opposition No B 2 816 968 page: 2 of 5
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 German trade mark registration No 30 715 480.
a) The goods
The goods on which the opposition is based are the following:
Class 19: Building materials (non-metallic and/or non-plastic); non-metallic and/or
non-plastic rigid pipes for building; asphalt, pitch and bitumen; non-metallic
transportable buildings; monuments, not of metal.
The contested goods are the following:
Class 19: Building materials, not of metal.
Building materials, not of metal are identically contained in both lists of goods despite
the minor changes in wording.
b) 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 are directed at the public at large
and business customers with specific professional knowledge or expertise. Given
that the general public is more prone to confusion, the examination will proceed on
this basis. The degree of attention will be average.
c) The signs
Earlier trade mark Contested sign
Decision on Opposition No B 2 816 968 page: 3 of 5
The relevant territory is 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 earlier mark is a figurative mark composed of the verbal element ‘BAG’ inscribed
in a square. Although the verbal element ‘BAG’ will be understood by at least part of
the relevant German public in the sense of the English word ‘bag’, that is, a usually
flexible container that may be closed for holding, storing, or carrying something
(information extracted on 06/10/2017 from Merriam-Webster dictionary at
https://www.merriam-webster.com/dictionary/bag), it has no relation to the relevant
goods. Consequently, regardless whether the term ‘BAG’ would be understood by the
German public, it has – in the present case – an average degree of distinctiveness.
The figurative elements of the earlier mark are limited to the squared frame and the
stylisation of the word ‘BAG’. Given that their function is purely decorative, the word
element ‘BAG’ is clearly the most distinctive element of the earlier mark.
The contested sign is a figurative mark composed of two verbal elements ‘BAG’ and
‘INERTE’ arranged on one line, separated with a hyphen and written in rather
standard font. The findings concerning the distinctiveness of the verbal element
‘BAG’ in the earlier mark apply equally to the contested sign. The other verbal
element ‘INERTE’ is meaningless for the relevant public, and, therefore, it is
distinctive to an average degree. Insofar as the hyphen included in the contested
mark is concerned, consumers will not attach any trade mark significance to it, since
it is merely a punctuation mark used to join words and/or to separate syllables of a
single word and therefore not capable of functioning as a badge of origin.
Visually, the signs coincide in the verbal element ‘BAG’ being the only verbal
element of the earlier mark and the first verbal element of the contested sign. They
differ in the square and stylisation of the earlier mark, the hyphen and additional
verbal element ‘INERTE’ of the contested sign. However, account is taken of the fact
that the square of the earlier mark is only an ordinary geometrical figure which will
attract less attention than the verbal element ‘BAG’ in the earlier mark 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). Account is taken also of
the fact that consumers generally tend to focus on the beginning of a sign when they
encounter a trade mark. This is because the public reads from left to right, which
makes the part placed at the left of the sign (the initial part) the one that first catches
the attention of the reader. Therefore, the fact that the common element ‘BAG’ is
placed at the beginning of the contested sign is particularly important. Overall, the
signs are visually similar to an average degree.
Aurally, the pronunciation of the entire earlier mark coincides with the pronunciation
of the first word of the contested sign, ‘BAG’. The marks’ pronunciation differs in the
word ‘INERTE’ which is the second word element of the contested sign. It is
considered that the signs are aurally similar to an average degree because the aural
coincidence is at the beginning of the contested sign and because the pronunciation
of the differentiating word ‘INERTE’ is not particularly long or striking.
Decision on Opposition No B 2 816 968 page: 4 of 5
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For the part of the public, for which the common
element ‘BAG’ is meaningless, neither of the signs has a meaning, the conceptual
comparison is not possible and it does not influence the assessment of the similarity
of the signs. For the part of the public which understands the common element
‘BAG’, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of the likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
In the present case the goods are identical and the signs visually and aurally similar
to an average degree and conceptually highly similar for part of the public. For the
remaining part of the public the conceptual comparison of the signs is not possible.
The earlier mark enjoys normal degree of distinctiveness and the degree of attention
of the relevant public is average. Moreover, 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).
Further, considering that the entire verbal element of the earlier mark is identical to
the first verbal element of the contested sign and it plays an independent and
distinctive role within the contested sign, it is highly conceivable that the relevant
consumer will perceive the contested mark as a sub-brand, a variation of the earlier
mark, configured in a different way according to the type of goods or services that it
designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the general
public. Given that a likelihood of confusion for only part of the relevant public is
sufficient to reject the contested application, there is no need to analyse the
remaining part of the public.
Decision on Opposition No B 2 816 968 page: 5 of 5
Therefore, the opposition is well founded on the basis of the opponent’s German
trade mark registration No 30 715 480. It follows that the contested trade mark must
be rejected for all the contested goods.
As the earlier right No 30 715 480 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 rights invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Birgit Holst
FILTENBORG
Zuzanna
STOJKOWICZ
Ioana
MOISESCU
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.