OPPOSITION DIVISION
OPPOSITION No B 2 743 188
Sto SE & Co. KgaA, Ehrenbachstrasse 1, 79780 Stühlingen, Germany (opponent),
represented by Gottschalk Maiwald Patentanwaltsgesellschaft und
Rechtsanwaltsgesellschaft MBH, Jungfernstieg 38, 20354 Hamburg, Germany
(professional representative)
a g a i n s t
Novacolor S.R.L., Via Ulisse Aldrovandi 10, 47122 Forli', Italy (applicant),
represented by D'Agostini Group, Rivale Castelvecchio 6, 31100 Treviso, Italy
(professional representative).
On 03/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 743 188 is upheld for all the contested goods.
2. European Union trade mark application No 15 561 897 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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2868/95 have been repealed and replaced by Regulation (EU) 2017/1001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 15 561 897 ‘CALCECRUDA’. The opposition is based on European
Union trade mark registration No 11 544 641 ‘Calcetura’. 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.
Decision on Opposition No B 2 743 188 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 2: Colours, Lacquers, Glazes for construction.
Class 19: Finishing coats of plaster, undercoats of plaster, decorative plaster, all
being for building; Spatulas, decorating spatulas, fillers, all being for building; Lime
for building.
The contested goods are the following:
Class 2: Dyestuffs; Varnish; Varnish; Varnishes; Paints and washes.
Class 17: Insulating paints; Insulating varnish.
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 dyestuffs are substances that yield a dye or that can be used as a
dye, especially when in a solution. The contested paints are defined as a coloured
substance which is spread over a surface and dries to leave a thin decorative or
protective coating. The opponent’s colours are substances used to give something a
particular colour (definitions extracted on 28/09/2017 from Oxford Dictionaries at
https://en.oxforddictionaries.com). Therefore, the contested dyestuffs, paints are
included in the broad category of the opponent’s colours and are identical.
The opponent’s lacquer is defined as a special liquid which is painted on wood or
metal in order to protect it and to make it shiny. The contested varnish; varnish;
varnishes are defined as an oily liquid which is painted onto wood or other material to
give it a hard, clear, shiny surface (definitions extracted on 28/09/2017 from Collins
Dictionary at https://www.collinsdictionary.com). Since these terms can be considered
as synonyms, the goods are considered identical.
The contested washes are defined as a thin layer of water or paint mixed with water,
especially one that is brushed lightly over a painting to make the lines softer
(definition extracted on 28/09/2017 from Cambridge Dictionary at
http://dictionary.cambridge.org). They are similar to a high degree to the opponent’s
paints since these goods have the same purpose and method of use, they are
manufactured by the same companies, distributed through the same channels and
sold in the same outlets. Furthermore, they are complementary and they target the
same public.
Contested goods in Class 17
The contested insulating paints; insulating varnish are similar to a high degree to the
opponent’s colours and lacquers. Even though the contested goods are for
insulating, these goods have the same nature and method of use, they are
manufactured by the same companies, distributed through the same channels and
sold in the same outlets. They also target the same public and they are likely to be in
competition.
Decision on Opposition No B 2 743 188 page: 3 of 6
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 or similar to a high degree are
directed at the public at large (DIY enthusiasts) and at business customers with
specific professional knowledge or expertise (professionals of the building sector
such as painters).
The degree of attention may vary from average to higher than average, depending on
the specialised nature of the goods, the frequency of purchase and their price.
c) The signs
Calcetura CALCECRUDA
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The verbal elements of the signs will be perceived as meaningless terms by a large
part of the public such as the French, English and German-speaking publics.
Contrary to the applicant’s allegations, the Opposition Division does not consider that
the public will dissect the signs but perceive them as a whole since neither the
coinciding prefix ‘CALCE’ nor the suffixes ‘TURA’ and ‘CRUDA’ have a meaning in
those languages.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the French, English and German-speaking parts of the public.
Since the signs have no meaning for the relevant public, they are distinctive.
As the signs are word marks, it is irrelevant whether they are represented in lower or
upper case letters or a combination thereof. Therefore, contrary to the applicant’s
Decision on Opposition No B 2 743 188 page: 4 of 6
arguments, any difference in the use of capital or lower case characters is immaterial
since protection is sought for the word itself rather than the actual representation.
Case law has established the principle, which is relevant in this comparison, 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.
Visually, the signs coincide in the letters ‘C-A-L-C-E-*-U-*A’ placed in the same
order. In general, differences are less perceptible in long signs and in the present
case both signs are long (nine letters against ten). The signs differ in the letters ‘T’
versus ‘C-R’ placed in the middle in the signs where they are more likely to go
unnoticed and in the penultimate letters ‘R’ versus ‘D’. Since the signs are almost the
same length, coincide in their beginning ‘CALCE’ where the attention of the public is
focussed and also coincide in the final letter ‘A’, they are visually similar to a high
degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territories, the pronunciation of the signs coincides in the syllables /cal-ce/
placed identically at the beginning of the signs. Even though they differ in the
following syllables /tu-ra/ versus /cru-da/, the signs have the same vowel sequences
(‘A-E-U-A’) and the same rhythm (four syllables) and intonation. Therefore, they are
aurally similar to a high degree.
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.
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
The goods are identical or similar to a high degree. The inherent distinctiveness of
the earlier mark is normal and the degree of attention of the public is likely to vary
from average to higher than average.
Decision on Opposition No B 2 743 188 page: 5 of 6
The signs are visually and aurally similar to a high degree and conceptually they
have no concepts that could help to differentiate them.
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 French,
English and German-speaking parts of the public, even when the public displays a
higher than average degree of attention. 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.
The applicant argues that it is internationally known as a reference for high-end and
architectural coatings and interior paint effects and that it is the owner of various well-
known trade marks. It filed various pieces of evidence to substantiate this claim. This
claim is irrelevant to the present proceedings since the alleged reputation of the
applicant has no impact on the present opposition. Furthermore, the right to an
EUTM begins on the date when the EUTM is filed and not before, and from that date
on the EUTM has to be examined with regard to opposition proceedings. Therefore,
when considering whether or not the EUTM falls under any of the relative grounds for
refusal, events or facts which happened before the filing date of the EUTM are
irrelevant because the rights of the opponent, insofar as they predate the EUTM, are
earlier than the applicant’s EUTM.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 11 544 641. It follows that the contested trade mark
must be rejected for all the contested goods.
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.
Decision on Opposition No B 2 743 188 page: 6 of 6
The Opposition Division
Catherine MEDINA Frédérique SULPICE Boyana NAYDENOVA
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 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), 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.