OPPOSITION No B 2 529 801

Holcim (Süddeutschland) GmbH, Dormettinger Str. 23, 72359 Dotternhausen, Germany (opponent), represented by Mitscherlich, Patent – und Rechtsanwälte, Partmbb, Sonnenstraße 33, 80331 Munich, Germany (professional representative)

a g a i n s t

Atlas Spółka z ograniczoną odpowiedzialnością, ul. Świętej Teresy od Dzieciątka Jezus 105, 91-222 Łódź, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 529 801 is partially upheld, namely for the following contested goods:

Class 17: Insulating materials, insulating mortars, insulating tape, putty, insulating fabrics, insulating paints and lacquers, metal foil for insulation, substances for insulating buildings against moisture; Sealing materials, draught excluder strips for doors and windows; Packing materials, cotton wool for packing (caulking), mineral wool, glass wool, non-conducting materials for retaining heat; Padding materials of rubber or plastics; Flexible pipes, not of metal, gaskets and junctions for pipes; Synthetic resins, acrylic resins.

Class 19: Building materials (non-metallic); Asphalt, tar and bitumen, bituminous products and coatings for building; Concrete, grout, plaster; Surfacings, not of metal, for building; Filler grout; Mortars and compounds for building, including for masonry, plastering and pointing cladding; Non-metallic rigid pipes for building; Cement for binding elements and filling joints; Cement mortars for binding elements and filling joints.

2.        European Union trade mark application No 13 254 115 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 all the goods of European Union trade mark application No 13 254 115. The opposition is based on German trade mark registration No 1 102 335. The opponent invoked Article 8(1)(a) and (b), as well as  Article  8(5)EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark registration No 1 102 335.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 02/03/2015. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 02/03/2010 to 01/03/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 19:        Building materials (non-metallic), hydraulic binding agents, mortar, concrete, asphalt, pitch, bitumen, expanded clay, pumice, fillers for cement or bitumen-bound forms of construction.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/04/2016 to submit evidence of use of the earlier trade mark. Said time limit was extended on 27/04/2016 until 12/06/2016, upon request of the opponent. On 06/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Affidavit: given on 11/05/2016 by Mr. Arnold Uttenweiler, member of the opponent company’s staff, in German, together with its translation into English, in which it is stated that the mark ‘DOROFLOW’ was used between 2010 and 2015 especially in Germany in relation to building materials, namely hydraulic binding agents. The declaration also contains information on the pertinent turnover between the years 2011 and 2014 and references to the other documents submitted by the opponent.

• Enclosure A1: two undated photographs, showing packaging samples, including the mark at issue and the name of the opponent, namely

• Enclosure A2: a selection of undated brochures in German partially translated into English. The documents include the trade mark ‘DOROFLOW’ and the reference to hydraulic binding agents, used in particular for cavity filling.

• Enclosures A3 and A4: a selection of invoices issued between 2005 and 2015 showing substantial sale figures and amounts of several thousands of Euros referring to the trade mark ‘DOROFLOW’. The opponent submitted ten invoices referring to the relevant period and 12 invoices out of the mentioned time lapse.

Assessment of evidence of use

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, the affidavit is accompanied by brochures and invoices.

The mentioned documentation shows that the place of use is Germany. This can be inferred from the language of the documents (German), and some addresses in Germany displayed on the brochures and invoices submitted. Therefore, since the earlier right is a German trade mark registration, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period (02/03/2010 – 01/03/2015). The remaining evidence (i.e. a part of the invoices) is dated outside of the relevant period; however, they were furnished only as examples. In fact, when assessed in its entirety, the evidence contains sufficient proof of the opponent’s transactions with external customers that took place within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence furnished by the opponent is, on principle, sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territoriy.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The Opposition Division observes that the invoices furnished do not present any reference to the relevant goods. Nonetheless, it is considered that the evidence as a whole, in particular due to the explicit mention of the goods contained in the affidavit and in the brochures provided, shows genuine use of the trade mark for the following goods:

Class 19:        Hydraulic binding agents.

The Opposition Division notes that the documents provided do not contain any reference to the rest of goods in Class 19, nor any information from which it could be inferred that the mark was used in relation to these products.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 19:        Hydraulic binding agents.

The contested goods are the following:

Class 1: Chemical products and semi-products used in industry; Unprocessed artificial resins, unprocessed plastics; Unprocessed chemical substances; Binders, adhesives and adhesive mortars; Impregnating agents and preservatives, including those resistant to moisture, silicones; Degreasing preparations for use in manufacturing processes, solvents for varnishes; Polish-removing preparations and substances; Glaziers' putty; Chemical additives for concrete; Plasticizers, Inoculants, Hardeners, Chemical compositions for reinforcing concrete, Adhesives, Bonding agents and Agglutinants for concrete, chemical agents for concrete aeration; Compositions for dust proofing concrete; Retarders for use with concrete; Chemical compositions for curing concrete; Concrete preservatives, except paints and oils.

Class 2: Preservatives against rust; Decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes, paints, lacquers, mordants, varnishes; Mordants, undercoatings, primers, coatings and paints for priming and reinforcing bases; Primers for painting wood, wood preservatives, wood stains and dyes; Binding preparations for paints and lacquers; Coatings for roofing felt, coatings for roofing; Thinners, thickeners and fixatives for dyes, paints, lacquers, stains, oils; Colorants for concrete; Water dispersed pigments for use in colouring concrete, Industrial paints for use on concrete surfaces, Concrete sealing agents (paints), Concrete sealers (paints), Coatings for the finishing of concrete, Radiation curable coatings for concrete; Coating compositions for preserving concrete [paints or oils].

Class 17: Insulating materials, insulating mortars, insulating tape, putty, insulating fabrics, insulating paints and lacquers, metal foil for insulation, substances for insulating buildings against moisture; Sealing materials, draught excluder strips for doors and windows; Packing materials, cotton wool for packing (caulking), mineral wool, glass wool, non-conducting materials for retaining heat; Padding materials of rubber or plastics; Flexible pipes, not of metal, gaskets and junctions for pipes; Synthetic resins, acrylic resins.

Class 19: Building materials (non-metallic); Asphalt, tar and bitumen, bituminous products and coatings for building; Concrete, grout, plaster; Surfacings, not of metal, for building; Filler grout; Mortars and compounds for building, including for masonry, plastering and pointing cladding; Non-metallic rigid pipes for building; Cement for binding elements and filling joints; Cement mortars for binding elements and filling joints.

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 applicant’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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 1

The contested chemical products and semi-products used in industry; unprocessed artificial resins, unprocessed plastics; unprocessed chemical substances; binders, adhesives and adhesive mortars; impregnating agents and preservatives, including those resistant to moisture, silicones; degreasing preparations for use in manufacturing processes, solvents for varnishes; polish-removing preparations and substances; glaziers' putty; chemical additives for concrete; plasticizers, inoculants, hardeners, chemical compositions for reinforcing concrete, adhesives, bonding agents and agglutinants for concrete, chemical agents for concrete aeration; compositions for dust proofing concrete; retarders for use with concrete; chemical compositions for curing concrete; concrete preservatives, except paints and oils consist of semi-processed goods and chemical products used in industry and in the making of several goods, such as building materials. These goods and the opponent’s goods in Class 19 have different natures, purposes and methods of use. They are manufactured by means of different processes and do not have the same producers. They are not in competition with each other. Furthermore, they cannot be found in the same distribution channels, in particular because they do not target the same public. In any case, even if they were offered in the same large building material outlets (which present an extremely vast choice of products), they would be found in different sections. Therefore, the contested goods are dissimilar to all the opponent’s goods. It is true that some of the opponent’s goods may be contained in the contested goods (i.e. unprocessed chemical substances can be used in the production of hydraulic binding agents) or they may be used in combination with the opponent’s goods, which are building materials. Nonetheless, the mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts. Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, be fulfilled.

Contested goods in Class 2

The contested preservatives against rust; decorative and protective, permanent or temporary agents and compositions for covering surfaces of various types, namely dyes, paints, lacquers, mordants, varnishes; mordants, undercoatings, primers, coatings and paints for priming and reinforcing bases; primers for painting wood, wood preservatives, wood stains and dyes; binding preparations for paints and lacquers; coatings for roofing felt, coatings for roofing; thinners, thickeners and fixatives for dyes, paints, lacquers, stains, oils; colorants for concrete; water dispersed pigments for use in colouring concrete, industrial paints for use on concrete surfaces, concrete sealing agents (paints), concrete sealers (paints), coatings for the finishing of concrete, radiation curable coatings for concrete; coating compositions for preserving concrete [paints or oils] are essentially paints and colorants with protective or decorative purposes, as well as anti-corrosion preparations. These goods and the opponent’s goods in Class 19 have different natures, purposes and methods of use. They do not have the same producers, they are not complementary to or in competition with each other. Furthermore, they cannot be found in the same distribution channels. As the already analysed goods in Class 1, some of goods may be used in combination with the opponent’s goods in Class 19; however, this factor does not counterbalance the already mentioned differences and the fact that these goods are manufactured in different ways and target different publics. Therefore, the contested goods are dissimilar to all the opponent’s goods.

Contested goods in Class 17

The contested insulating materials, insulating mortars, insulating tape, putty, insulating fabrics, insulating paints and lacquers, metal foil for insulation, substances for insulating buildings against moisture; sealing materials, draught excluder strips for doors and windows; packing materials, cotton wool for packing (caulking), mineral wool, glass wool, non-conducting materials for retaining heat; padding materials of rubber or plastics; synthetic resins, acrylic resins consist of articles and materials for cushioning, stuffing, sealing, arresting the flow of liquids or gas and insulating (insulation for thermal purposes, acoustic insulation, fire insulation, impact insulation). The contested flexible pipes, not of metal, gaskets and junctions for pipes are tubes and accessories therefor. These goods and the opponent’s hydraulic binding agents are similar to a high degree, as they have the same nature and purpose, that is to be used in the construction sector. Moreover, they can coincide in producers, end user and distribution channels.

Contested goods in Class 19

The contested building materials (non-metallic); compounds for building, including for masonry, plastering and pointing cladding include, as a broader category the opponent’s hydraulic binding agents. 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 grout, plaster; filler grout; mortars; cement for binding elements and filling joints; cement mortars for binding elements and filling joints overlap with, the opponent’s hydraulic binding agents, to the extent that hydraulic grout, plaster, mortar and cement are, indeed, hydraulic binding agents. Therefore, they are identical.

The contested asphalt, tar and bitumen, bituminous products and coatings for building; concrete; surfacings, not of metal, for building; non-metallic rigid pipes for building; consist of non-metallic building materials are similar to a high degree to the opponent’s hydraulic binding agents. These goods have the same nature and purpose, as they are all used for construction and building purposes. Furthermore, they can be used in combination with each other and target the same public. They are produced by the same undertakings and distributed through the same channels; moreover, unlike the contested goods in Classes 1 and 2, they can be found in the same departments of building material outlets.

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, some of the goods of the earlier mark target professionals, and another part target both the general and professional public (e.g. packing materials in Class 17), while the contested goods target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). The public’s degree of attentiveness will be average.

3. The signs

DOROFLOW	DURUFLOW
Earlier trade mark	Contested sign

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).

Both the earlier mark and the contested sign are word marks with no identifiable components. Each sign is formed of a verbal element that has no meaning for the public in the relevant territory. The degree of inherent distinctiveness of both marks is average.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘D*R*FLOW’. However, they differ in their second and fourth letters/sounds, namely the two Os of the earlier mark and the two Us of the contested sign. The lengths and structures of the signs are also extremely similar, as they are both composed of a single word of eight letters, six of which coincide and are in identical positions. Consequently, the mentioned differences are insufficient to counteract the identity between the letter/sounds ‘D*R*FLOW’.

Therefore, the signs are visually and 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.

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 reputation 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 must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar to a high degree and partly dissimilar to the opponent’s goods. The earlier trade mark enjoys a normal degree of inherent distinctiveness and the degree of attention of the relevant public is average.

The signs in dispute are visually and aurally similar to a high degree, due to the fact that they have an extremely similar structure, and since they differ only in their second and fourth letters, as observed in section c) of this decision. The conceptual aspect does not influence the present comparison.

Account must be 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). In the present case, when encountering the conflicting signs, the relevant public may overlook the differences between the signs and perceive them as coming from the same undertaking, thus attributing the same commercial origin to the goods.

Considering all the above, there is a likelihood of confusion on the relevant public.

It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the remaining goods are obviously not identical.

With regard to dissimilar goods and services, the Opposition Division will continue the examination of the opponent’s claim based on Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of highly distinctive character of the earlier trade mark or reputation.

On 12/06/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 24/10/2015.

As already observed above under the grounds of Article 8(1)(b) EUTMR, the opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not fulfilled, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 shall 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

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.