OPPOSITION No B 2 811 217

Flexcomp d.o.o., Ul. Sarajevska Bb, Gradacac  76250, Bosnia y Herzegovina (opponent), represented by Jacobacci & Partners S.P.A., Piazza della Vittoria, 11

25122 Brescia, Italy (professional representative)

a g a i n s t

CNBM International Engineering Co. Ltd., 19th Floor, Building 4, Interwest Business Centre, No.9 Shou Ti South Road, Haidian Dist, Beijing, People's Republic of China, (applicant), represented by Zhaoffice Sprl, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 811 217 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 747 736 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 747 736 for the figurative mark. The opposition is based on, inter alia, European Union trade mark registration No 13 520 721 for the word mark ‘GREENFLEX’. 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.

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 European Union trade mark registration No 13 520 721.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 19:        Cladding panels, not of metal, for building, namely panels of plywood, concrete and glass for use in building, wall panels, not of metal; panels for cladding or covering walls; wood-fibre reinforced cement boards (cement-excelsior boards); plastic wallboards; multilayer panels of plastic for use in building; prefabricated, non-metal storage sheds; prefabricated architectural column elements, not of metal.

Class 37:        Installation of cladding panels; construction, maintenance and repair of transportable and prefabricated buildings.

The contested goods and services are the following:

Class 19:        Concrete building elements; cement slabs; tiles, not of metal, for building; pantiles, not of metal; wall tiles, not of metal; pillars, not of metal, for building; window frames, not of metal; door frames, not of metal; buildings, transportable, not of metal; cabanas, not of metal; prefabricated houses [kits], not of metal.        

Class 37:        Construction information; construction consultation; factory construction; building insulating; building sealing; masonry; construction; upholstering.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods 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 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 19

The contested concrete building elements include as a broader category the opponent’s panels of concrete for use in building. 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 buildings, transportable, not of metal; prefabricated houses [kits], not of metal include, as broader categories or overlap with the opponent’s prefabricated, non-metal storage sheds because they include wooden or plastic constructions easily transportable. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Since the contested cabanas, not of metal can also be used for storage purposes, therefore, these goods overlap with the opponent’s prefabricated, non-metal storage sheds. Consequently, they are considered identical. 

The contested cement slabs and the opponent’s wood-fibre reinforced cement boards (cement-excelsior boards) have some relevant points in common. They are both made of cement with a glass-fibre mesh on the surfaces and they are designed as an underlayment for tile floors. These goods coincide in the same nature, distribution channels, sales outlets, producers, method of use and end users. Furthermore, they may be in competition to each other. Consequently, they are highly similar. 

The contested wall tiles, not of metal and the opponent’s wall panels, not of metal have some important points of contact because they both serve to cover a wall or other surface. These goods can coincide in the same nature, distribution channels, sales outlets, producers, method of use and end users. Furthermore, they may be in competition to each other. Consequently, they are highly similar. 

The remaining contested tiles, not of metal, for building; pantiles, not of metal; pillars, not of metal, for building; window frames, not of metal; door frames, not of metal are similar to the opponent’s multilayer panels of plastic for use in building. These goods have the same nature, as they all belong to building materials. Furthermore, they can coincide in the same purpose, method of use, producer and distribution channels. Furthermore, they can be complementary.

Contested services in Class 37

The contested construction includes, as a broader category the opponent’s construction of transportable and prefabricated buildings. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested factory construction; building insulating; building sealing; masonry; upholstering include, as broader categories or overlap with the opponent’s construction, maintenance and repair of transportable and prefabricated buildings. Since the Opposition Division cannot dissect ex officio broad categories of the contested services, they are considered identical to the opponent’s services.

The remaining contested construction information; construction consultation is similar to the opponent’s construction of transportable and prefabricated buildings as it is a very common practice in the construction market that the construction companies provide information/consultation to their clients together with their main services (construction services). These services target the same public and may also be rendered in combination by the same undertakings.

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 identical and similar to various degrees are directed at the public at large and at the professional public. The level of attention is considered to vary from average to higher than average, depending on the price and frequency of purchase and sophistication/specialised nature of these goods and services.

3. The signs

GREENFLEX
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 earlier mark is a word mark ‘GREENFLEX’, written in uppercase letters. In word marks, it is the word as such that is protected; therefore, it is irrelevant if the sign is depicted in lower or upper case letters, or in combination thereof.  

The contested sign is a figurative mark composed of the slightly stylised word, written partially in upper- and partially in lowercase letters ‘FlexGreen’.

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. Since the signs in question are composed of terms which are meaningful in certain territories, for example in those countries where English is understood, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Therefore, the relevant public will perceive the words ‘green’ and ‘flex’ in the signs in question.  

The signs as a whole have no clear univocal meaning for the relevant public. However, as mentioned above, the common words ‘green’ and ‘flex’, although written in one word and represented in an altered order in both signs will have a clear meaning for the relevant public.  The term ‘green’, refers to a colour or to someone or something that harm the environment as little as possible (environment friendly). The word ‘flex’ will be associated by the relevant public, inter alia, with a short version of the words ‘flexible’ or ‘flexibility’, meaning elastic or able to adapt to different conditions, adaptable, adjustable (both definitions extracted from Collins online dictionary on 14/09/2017).

In the context of the relevant goods and services, both elements will be associated, as analysed above, with something being environment friendly and adjustable, (adaptable) and, therefore, they are weak in relation to them. Consequently, the inherent distinctiveness of these elements is limited.

The signs have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Visually and aurally the signs coincide to the extent that they are composed of one word of the same length, in which the same terms ‘flex’ and ‘green’ are represented in an inverted order. Furthermore, from the visual point of view the signs differ in the slight stylisation of these terms in the contested sign. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In the case at issue, the stylisation of the contested sign is rather basic overall and limited to one letter ‘G’ written in capital letter and placed in the middle of the sign. All the letters are portrayed in a slightly stylised letters. Furthermore, these graphic elements do not play an aural role, as they will not be pronounced.

Therefore, it must be considered that the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole have no clear meaning for the relevant public in the relevant territory they are composed of the same two meaningful terms ‘flex’ and ‘green’, although their order is inverted in both marks.

Consequently, from the conceptual perspective the signs are similar to a high degree.

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. Considering, what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average in relation to the goods and services in question.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, however the identity and similarity of the goods and services covered by the respective marks, combined with a visual, phonetic and conceptual similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1) (b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (see judgment of 12/01/2006, T-147/03 ‘Quantum’).

In the present case, the contested goods and services have been found partly identical and partly similar to various degrees to the ones covered by the earlier mark.

Regarding the similarity between the marks, they have been found visually and aurally similar to an average degree and conceptually even highly similar.  From the visual and aural perspective, the signs contain identical terms ‘flex’ and ‘green’, although they are represented in inverted order in them. The remaining figurative elements limited to the slight stylisation of the contested sign are rather commonplace and will not catch much attention of the relevant public. More important though is, as mentioned above, that the marks are highly similar from the conceptual point of view. In the case at issue, the limited distinctiveness of the separate elements in the marks ‘Flex’ and ‘Green’ does not counteract the fact that the marks as a whole, given their visual, aural and conceptual similarities, are confusingly similar for the relevant public in the relevant territory.

Account should be taken to the visual similarity which arises from identical terms being reproduced in both signs albeit, as previously mentioned in a different order. In this regard, it is important to bear in mind that the average consumer 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). Furthermore, 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). With this in mind, it is likely that the relevant consumer easily can imperfectly recollect ‘GREENFLEX’ as ‘FlexGreen’ and vice versa, especially taking into account the conceptual connection between the signs.

Furthermore, likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. This principle applies to the present case because the goods and services are identical and similar to various degrees.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 520 721. 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.

It follows from the above that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 13 520 721 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 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

Marzena MACIAK

Monika CISZEWSKA

Boyana NAYDENOVA

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.