OPPOSITION No B 2 493 784

Alanod GmbH & Co. KG, Egerstr. 12, 58256 Ennepetal, Germany (opponent),

represented by Dr. Solf & Zapf, Schloßbleiche 20, 42103 Wuppertal, Germany

(professional representative)

a g a i n s t

Miroplast, Sobinova str. 1, Dnipro 49083, Ukraine (applicant), represented by UAB

“Brainera”, Savanorių pr. 217, 02300 Vilnius, Lithuania (professional

accessories for windows, doors and window sills of metal, included in

this class; guides of metal for making windows, doors and window

sills; fittings for windows and doors, namely reinforcing, installation

and fastening parts for construction purposes.

Class 17: Sealing strips of moulded rubber for windows and doors; producing

of strips of moulded rubber for windows and doors.

2. European Union trade mark application No 13 081 691 is rejected for all the

above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

Preliminary remark

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 13 081 691 for figurative mark

. The opposition is based on, inter alia, European Union trade

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mark registration No 397 091 for word mark ‘MIRO’. 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

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 397 091.

a) The goods and services

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

Class 6: Bands, strips and segments of metal, in particular of aluminium and alloys

The contested goods and services are the following:

Class 6: Profiles of metal for making windows, doors and window sills; accessories

Class 19: Profiles of plastic for making windows, doors and window sills; windows,

Class 37: Glazing, installation, maintenance and repair of windows and doors;

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An interpretation of the wording of the list of the applicant’s goods and services is

required to determine the scope of protection of these goods and services.

The Opposition Division notes that there is a slight discrepancy between the first and

the contested producing of strips of moulded rubber for windows and doors in the

English version (i.e. the 2nd language of the contested application), which does not

The term ‘in particular’, used in the opponent’s list of goods, indicates that the

specific goods in Class 6 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods in Class 6 to show

the relationship of individual goods to a broader category, is exclusive and restricts

the scope of protection only to the goods specifically listed.

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 6

doors, namely reinforcing, installation and fastening parts for construction purposes

bands, strips and segments of metal, in particular of aluminium and alloys thereof.

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 windows, doors and window sills of metal and the opponent’s bands,

strips and segments of metal, in particular of aluminium and alloys thereof differ in

their natures as the first group are rather finished products, and the latter are parts

and fittings. Bands and strips usually refer to narrow, flat pieces and segments

usually designate parts or pieces that fit with others to constitute a whole. These

goods do not have a specific purpose; they are intended to be used as parts in

different assemblies. Their main characteristic is their shape which makes them fit for

determined uses. On the other hand, the contested goods have a very specific

shops. The fact that they share the metallic nature of the earlier goods, as well as

competition with each other. Therefore, they are considered dissimilar.

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Contested goods in Class 17

(plastic versus metal, therefore the nature of the conflicting goods is different),

however, the main purpose is the same (sealing/reinforcing), and therefore they may

compete with the contested goods. They can be also used in door or window

production in combination with the contested goods. Consequently, they can be

complementary to, or in competition with each other. They may target the same

group of professional consumers, and be distributed through the same channels. For

these reasons they can be considered as goods similar to a low degree.

The contested profiles of plastic for making doors, window sills and blinds are semi-

finished goods and components intended for use in further door and window

production by manufacturers.

As can be seen from the above, these remaining contested goods in Class 17 have

nothing in common with the opponent’s goods, namely bands, strips and segments

of metal, in particular of aluminium and alloys thereof, including the aforesaid goods

with reinforced reflective surface coatings, included in class 6. They differ in their

natures, purposes, and methods of use. The contested goods are semi-finished

goods made of plastic/rubber (non-metal materials). Therefore they differ not only as

regards the material they are made of (plastic versus metal), but also in their form,

and the purpose, which in the case of the some of the contested goods is window

and door production. Furthermore, they are usually produced by different companies

and offered through different distribution channels. Moreover, they cannot be seen as

specifically some of them are intended for making windows, doors and window sills,

and therefore have a different purpose that the opponent’s bands, strips and

segments of metal, in particular of aluminium and alloys thereof, including the

aforesaid goods with reinforced reflective surface coatings, included in class 6.

Moreover, they are made of different materials (the applicant’s plastic goods versus

the opponent’s metallic goods), and thus have different natures. The opponent’s

goods are metallic building materials which can be further processed or directly used

for building and construction; consequently, the nature, purpose and method of use

of these goods is different. Hence, the contested and the opponent’s goods usually

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come from different producers, as well as, are distributed through different

distribution channels. Moreover, they are neither complementary to, or in competition

The contested glazing, installation, maintenance and repair of windows and doors;

used in the window/door repair or installation, in which rather ready made goods as a

whole are used. The natures (tangible goods versus intangible services), purposes,

and methods of use are different. The contested services and the opponent’s goods

come from different suppliers; they both target building and construction sector

however, they are considered to be supplied through different distribution channels.

Neither they are complementary to, or in competition with each other. Therefore, they

are considered dissimilar.

Contested services in Class 40

The contested lamination of building elements of plastic (moulds); laminating of

plastic; metal plating and laminating. The laminating process consists in improving

the strength, stability, sound insulation, appearance or other properties of composite

material by applying multiply layers. Similarly, plating is a process in which a metal

harden, to reduce friction, to alter conductivity, and for other reasons.

goods, even a low level of similarity cannot be established. These goods and

consist of professionals in building/construction sector. Moreover, they have different

natures, purposes and methods of use. Neither they are complementary to, or in

competition with each other. Therefore, they are dissimilar.

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.

specialised goods directed at business customers with specific professional

The degree of attention may vary from average to high, depending on the specialised

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the goods at issue are not frequent purchases as they are expected to be sustainable

and durable for the building/construction purposes, and as such consumers are

c) The signs

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,

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the consumer’s minds. Due to closeness of the element ‘PLAST’ to the word ‘plastic’

in the perception of professionals could be seen as allusive, if not weak for the goods

strips for window and door production (erroneously translated in the applicant’s list as

to this part of the goods, it is not normally distinctive as it is descriptive, allusive or

otherwise weak for the relevant goods.

The contested sign has no element that could be considered clearly more dominant

than other elements. It should be emphasised, that it is composed of a distinctive

verbal element ‘MIR(O)PLAST’ and a less distinctive stylisation of the letter ‘O’ of a

decorative nature. Therefore, the verbal element is more distinctive than the

figurative element.

In the present case the sole word element of the earlier mark ‘MIRO’ is reproduced at

the beginning of the contested sign. It should be pointed out 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.

Consequently, the common and distinctive word ‘MIRO’ will be instantly noted by the

consumers when encountering both signs, and it will be that attracting the most

the weak element (at least for some goods) ‘PLAST’ stands back vis-à-vis this

stylised and is depicted in the form of the blue-red whirlpool device. Therefore, the

As the commonalities in the signs are confined to the distinctive word ‘MIRO’ being

the sole element of the earlier mark, and the beginning of the contested sign, the

signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MIRO’,

present identically in both signs assuming, as explained above, that the vast majority

of the relevant public will pronounce the letter ‘O’ in the contested sign. The

pronunciation differs in the sound of the letters ‛-PLAST’ of the contested sign, which

have no counterpart in the earlier mark.

Therefore, the signs are considered aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant

not possible, the conceptual aspect does not influence the assessment of the

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similarity of the signs; however, if the concept of ‘plastic’ is perceived by some

consumers in the contested sign, the signs are considered not conceptually similar).

As the signs have been found similar in at least one aspect of the comparison, the

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

Likelihood of confusion covers situations where the consumer directly confuses the

trade marks themselves, or where the consumer makes a connection between the

conflicting signs and assumes that the goods/services covered are from the same or

economically linked undertakings.

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 some of the contested goods are found identical or similar to a

low degree, and the rest of the contested goods and services are found dissimilar to

the opponent’s goods. The similarity between the conflicting signs is established as

directed at professionals with the level of attendance that may vary from average to

high. Therefore, as regards the principle of imperfect recollection of the marks it

applies in both cases, when the relevant public’s attention is on normal level, or is

increased as 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).

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

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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. It must be

the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18;

all the relevant factors in the present case, that is to say, the repetition of the

distinctive element ‘MIRO’ constituting the earlier mark in the first part of the

mark as a sub-brand, a variation of the earlier mark, configured in a different way

according to the type of goods or services that it designates (23/10/2002, T-104/01,

Fifties, EU:T:2002:262, § 49).

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 partly well-founded on the basis of the opponent’s European Union

trade mark registration. 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 the

goods found to be identical or similar to a low degree to those of the earlier trade

mark.

The rest of the contested goods and services are dissimilar. As similarity of goods

The opponent has also based its opposition on the following earlier European Union

Bands, strips and segments of metal, in particular of aluminium and alloys thereof,

including the aforesaid goods with reinforced reflective surface coatings, included in

class 6.

As can be seen from the above, the other earlier right invoked by the opponent is

less similar to the contested sign. It contains further differing word element ‘SILVER’

and the hyphen which clearly divides the words joined together into two compounds.

Moreover, this earlier trade mark has no broader scope of protection in Class 6 than

the earlier trade mark that has been already compared with the contested sign.

Therefore, the outcome cannot be different with respect to goods and services for

which the opposition has already been rejected; no likelihood of confusion exists with