OPPOSITION No B 2 752 619

Huntsman International LLC, 500 Huntsman Way, Salt Lake City, Utah 84108, United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)

a g a i n s t

Heliflex Tubos e Mangueiras, S.A., Estrada da Mota, Apartado 525, Ilhavo, 3834-906 Gafanha da Encarnação, Portugal (holder), represented by Raquel Pinheiro Ramalho da Costa França, Av. Duque d’Avila, 32, 1°, 1000-141 Lisboa, Portugal (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 619 is upheld for all the contested goods.

2.        International registration No 1 295 471 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 295 471 . The opposition is based on European Union trade mark registration No 44 362 for the word mark ‘KRYSTALFLEX’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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: Plastic film; namely, polyurethane film for use in glass and plastic laminations in Class 17.

The contested goods are the following:

Class 17: Plastic materials (semi-finished products) for use in manufacture; rubber hoses and non-metallic tubes and pipes (including flexible tubes and pipes, reinforced flexible tubes and pipes and polyethylene tubes and pipes), their parts and accessories included in this class.

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

The term ‘including’, used in the holder’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 plastic materials (semi-finished products) for use in manufacture include, as a broader category, or overlap with, the opponent’s plastic film; namely, polyurethane film for use in glass and plastic laminations in Class 17. 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 rubber hoses and non-metallic tubes and pipes (including flexible tubes and pipes, reinforced flexible tubes and pipes and polyethylene tubes and pipes), their parts and accessories included in this class are hollow cylindrical objects used, for example, to convey liquids or gases or as a protective conduit through which, for instance, wires can be pulled, as well as parts and accessories thereof. The opponent’s plastic film; namely, polyurethane film for use in glass and plastic laminations in Class 17 refers to very thin layers of plastic that may be used for various industrial or building purposes. Although the goods differ in their natures and specific intended purposes, they may still belong to the same market niche, in the case, for instance, of goods used for the purposes of building/engineering, and, furthermore, they may have the same relevant public and distribution channels. It cannot be ruled out that they might originate from the same manufacturers specialising in insulating materials and various forms of plastics. For these reasons, the goods are considered similar to a low degree.

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 a low degree are directed at professionals in the construction and engineering fields, as well as at general consumers, for instance consumers involved in ‘DIY’ or ‘do-it-yourself’ activities. The degree of attention will vary between average and higher than average because some of the goods may be considered more specialised and may not be purchased on a frequent basis; their choice might have a significant impact on the building/construction in which they are used. By contrast, others of the relevant goods may be purchased quite often as standard building materials, to which an average degree of attention will be paid, for instance rubber hoses and non-metallic tubes and pipes.

3. The signs

KRYSTALFLEX
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.

The earlier mark is a word mark consisting of the verbal element ‘KRYSTALFLEX’, written in upper case letters, and the contested sign consists of the verbal element ‘cristalflex’, written in bold lower case letters. However, in the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial whether the earlier mark is in upper or lower case letters.

For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the verbal element ‘FLEX’ is meaningless, such as average Bulgarian-speaking consumers. This element will not be understood by this part of the relevant public (even if it is perceived as a separate element) and it is considered distinctive in relation to the goods in question.

The verbal elements ‘KRYSTAL’ and ‘CRISTAL’ will be naturally dissected and perceived by the relevant Bulgarian consumer as a clearly understandable misspelling or transliteration of the Bulgarian word ‘кристал’ (‘kristal’), which is a meaningful term, namely the equivalent of ‘crystal’, ‘a highly transparent and brilliant type of glass, often used in cut-glass tableware, ornaments, etc’ (information extracted from Collins English Dictionary on 06/09/2017 at https://www.collinsdictionary.com/dictionary/english/crystal).

Although this word is not directly descriptive of the goods in question (plastics, rubber hoses, non-metallic tubes and piper), it could be perceived as alluding to their possible application in the construction/engineering process. This possibility is increased by the specific nature of the opponent’s goods, which are, inter alia, plastic films used in glass laminations. Consequently, the verbal elements ‘KRYSTAL’ and ‘CRISTAL’ could be perceived as slightly less distinctive than the verbal elements following them, namely the distinctive verbal element ‘FLEX’, present in both signs.

For the sake of completeness, it should be mentioned that neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter string ‘*R*STALFLEX’. They differ only in their first letters, ‘K’ in the earlier mark and ‘C’ in the contested sign, and in their third letters, ‘Y’ and ‘I’, respectively. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs will be identical. This is because the letters ‘K’ and ‘C’ will be pronounced as [k] by the majority of the relevant public, and therefore the beginnings of the words will be pronounced identically; furthermore, the letters ‘Y’ and ‘I’ will be naturally pronounced as [i], and will, therefore, also be pronounced identically.

Conceptually, reference is made to the previous statements concerning the semantic content conveyed by the marks. Although less distinctive than the meaningless element ‘FLEX’, the concept of ‘crystal’, present in the beginning of each sign, combined with the presence of the identical verbal element at the end of each sign, will lead to conceptual identity between 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 as a whole 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).

In the present case, the goods are identical or similar to a low degree. They target the public at large and business customers with some expertise in the relevant field; the degree of attention is considered to vary between average and higher than average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark as a whole must be seen as normal.

The signs in conflict are visually highly similar and aurally and conceptually identical to the extent that they both convey the concept of ‘crystal’, through their first verbal elements, ‘KRYSTAL’ and ‘CRISTAL’, which are followed by the coinciding verbal element ‘FLEX’. The relevant consumers specified above will have no clear way of differentiating between the signs, as their only differences lie in two pairs of letters that are often used interchangeably (‘K’/‘C’ and ‘Y’/‘I’). Furthermore, these differing letters are interspersed among others that appear in both marks in the same positions and, therefore, this slight visual difference may even go unnoticed and is outweighed by the aural and conceptual identity between the signs. 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). This is true even where the consumer has a higher than average degree of attention. It has been confirmed by the Court that even consumers who pay a high degree of attention also have to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, with regard to the goods that are similar only to a low degree, the aural and conceptual identity between the signs is considered sufficient to outweigh the low degree of similarity found between the goods.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public, in particular average Bulgarian-speaking consumers. 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 44 362. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds invoked by the opponent.

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 holder 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

Patricia LOPEZ FERNANDEZ DE CORRES

Manuela RUSEVA

Ewelina SLIWINSKA

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.