OPPOSITION DIVISION
OPPOSITION No B 2 832 726
Flexiplas S.A., Pol. Ind. SEAT – Vial Centro Técnico, s/n, 08760 Martorell
(Barcelona), Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21,
08006 Barcelona, Spain (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 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 832 726 is partially upheld, namely for the following
contested goods:
Class 17: 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.
2. International registration No 1 308 858 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 international registration
designating the European Union No 1 308 858 . The opposition
is based on Spanish trade mark registration No 2 035 994 ‘GARDENFLEX’. The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 832 726 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 17: Flexible tubes, not of metal.
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.
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 rubber hoses and non-metallic tubes and pipes (including flexible
tubes and pipes, reinforced flexible tubes and pipes and polyethylene tubes and
pipes) are included in the opponent’s broad category of flexible tubes, not of metal. It
should thereby be noted that tubes, hoses and pipes in common usage are
interchangeable words. Therefore, these goods are identical.
The contested parts and accessories (for rubber hoses and non-metallic tubes and
pipes (including flexible tubes and pipes, reinforced flexible tubes and pipes and
polyethylene tubes and pipes) are complementary items used for the assembly of
tubes which, once installed, serve to e.g. transport gas or liquid over long distances.
The necessary parts logically target the same public and follow the same distribution
channels. Consequently, these goods are considered similar to the opponent’s
goods.
The contested plastic materials (semi-finished products) for use in manufacture are
semi processed materials used for further manufacturing of plastic products.
Although the opponent’s goods can be made of plastic, their nature and purpose of
use is very different because the contested goods are semi-processed whereas the
opponent’s goods are final products used for example to convey e.g. liquids or
gases. Moreover, the degree of transformation of the semi-finished plastic material
into the opponent’s final products, namely tubes, is high. The relevant public is quite
different because the contested goods target factories producing various plastic
products whereas the opponent’s goods target e.g. construction or installation
companies and/or the public at large. The method of use of the goods is very
Decision on Opposition No B 2 832 726 page: 3 of 5
different and they cannot be considered to be in competition or complementary. It
follows that the contested plastic materials (semi-finished products) for use in
manufacture are considered dissimilar to the opponent’s flexible tubes, not of metal.
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 are directed at the
public at large and at the professional public in the field of construction and
installation.
The degree of attention may vary from average to high, depending on the price and
frequency of purchase and sophistication or specialised nature of the goods.
c) The signs
GARDENFLEX
Earlier trade mark Contested sign
The relevant territory is Spain.
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 ‘GARDENFLEX’. Although the sign contains the
element ‘FLEX’ which may be understood in Spanish as the abbreviation of ‘flexible’
alluding to the characteristic of the goods being ‘capable of bending easily without
breaking’ (see http://dle.rae.es/?id=I5IQtvP), which is considered weak in relation to
the relevant goods, the sign as a whole has no meaning for the relevant public in the
relevant territory.
The same goes for the contested sign, a figurative mark composed of thick black
standard lower case type letters, ‘flexigarden’. The prefix ‘flexi’ may also be perceived
as allusive of the characteristic ‘flexible’ of some of the relevant goods, but taken as a
whole the sign has no meaning for the public in the context of the relevant goods.
Visually and aurally, the signs coincide to the extent that they are composed of one
word of practically the same length, in which the similar terms ‘flex’ and ‘flexi’,
differing one letter, and the identical terms ‘garden’ are represented in an inverted
order. The signs differ in the stylisation of the contested sign, although the letter type
is basic.
Therefore, it must be considered that the signs are similar to an average degree.
Decision on Opposition No B 2 832 726 page: 4 of 5
Conceptually, as mentioned above, even though the signs as such do not have a
clear meaning for the public in the relevant territory in relation to the relevant goods,
the public may perceive in both signs a reference to the “flexible” characteristic of the
goods. Since both signs refer – in part – to the same, although weak, concept, they
are conceptually similar to a low degree.
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 despite the presence of a weak element.
e) 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).
The goods are partly identical, partly similar and partly dissimilar. The distinctiveness
of the earlier mark is normal and the signs are visually and aurally similar and
conceptually similar to a low degree.
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). As a consideration, is must be noted that the simple inversion is generally
insufficient to make the marks different since the signs still coincide in their verbal
components. In the present case, all the letters that comprise the earlier mark are
included in the contest sign and differ only in one additional letter ‘i’ and the thicker,
but rather basic, depiction of the contested sign.
Clearly these small differences are not sufficient to overcome the similarities between
them, even considering that the relevant public will exercise above average attention
since this public also needs to rely on their imperfect recollection of trade marks
(21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Decision on Opposition No B 2 832 726 page: 5 of 5
Considering all the above, there is a likelihood of confusion on the part of the public
and therefore the opposition is partly well founded on the basis of Spanish trade
mark registration No 2 035 994.
It follows that the contested trade mark must be rejected for the goods found to be
identical and similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and/or services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on the Article and directed at these goods cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some 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
Zuzanna STOJKOWICZ Cynthia DEN DEKKER Cristina CRESPO MOLTO
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.