OPPOSITION No B 2 694 514

Pictor Valves S.L., Tres Rieres, 24-26, 08292 Esparreguera, Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)

a g a i n s t

P J Valves Holding Limited, 10 Merchant Drive, Mead Lane, Hertford, Hertfordshire SG13 7BH, United Kingdom (applicant), represented by Jensen & Son, 366-368 Old Street, London EC1V 9LT, United Kingdom (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 514 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 543 672. The opposition is based on European Union trade mark registration No 11 633 799. 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.

1. The goods and services

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

Class 7:        Pressure valves; control valves of metal; pressure control valves; pressure regulating valves.

Class 11:        Valves for controlling the pressure of water and gas apparatus; thermostatic valves; stopcocks for use as safety apparatus for water and gas.

Class 35:        Advertising; business management; business administration; office functions; import-export, all the aforesaid relating to valves for high pressure.

The contested goods and services are the following:

Class 6:        Valves; water pipe valves; drain traps [valves] of metal; floating ball valves; trunnion mounted ball valves; gate globe and check valves; double block and bleed valves; butterfly valves; wafer check valves; actuators for valves; valves and actuators for use in LNG applications, produced water treatment and desanding applications, high pressure applications, zero leakage and tight shutoff applications and for emergency shut down applications.

Class 37:        Repair, maintenance and installation services in relation to valves and actuators for valves.

Class 42:        Industrial design services; technical consultation services in relation to valves and actuators for valves and/or in the energy industry; technical consultation and research in relation to valves and actuators for valves and/or in the energy industry; research and development services; research and development for others.

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.

Although the goods and services in question are not identical, it is clear that some of the contested goods and services are similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were similar to those of the earlier mark.

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 deemed similar are directed at the public at large that has knowledge of plumbing and at business consumers and specialists with specific knowledge of fluid, gas, oil, steam and other supply systems and installations related to water processing, oil processing, power generation and other industries; the services deemed similar are directed at business consumers in the industries indicated above. The degree of attention may vary from average to higher than average depending on the price, specialised nature and application of the goods and services in question.

3. The signs

	PJ VALVES
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 figurative mark consisting of the words ‘Pictor Valves’ in slightly stylised dark blue letters, with the word ‘Valves’ underneath the word ‘Pictor’. The letters ‘TMB’ appear in standard, grey, upper case characters next to the word ‘Valves’, a figurative element of the stylised letters ‘PV’ in white against a circular, half grey and half dark blue background, with the letter ‘P’ placed above the letter ‘V’, precedes the words and a vertical blue line separates the figurative element from the verbal elements ‘Pictor Valves TMB’.

The contested sign is a word mark consisting of the letter and word combination ‘PJ VALVES’. The distinctiveness of the element ‘PJ’ is seen as average, since it does not directly describe or allude to any characteristics of the relevant goods and services. As it is a word mark, it does not have any element that could be considered more dominant (visually eye-catching) than other elements.

The English-speaking part of the public will perceive the word ‘VALVES’ in both signs as the plural of the word ‘valve’, meaning ‘any device that shuts off, starts, regulates, or controls the flow of a fluid’ (information extracted from Collins Dictionary on 03/08/2017 at https://www.collinsdictionary.com/dictionary/english/). As the relevant goods are a variety of valves and related repair, maintenance, installation and technical consultation services, this element is descriptive of the nature and intended purpose of these goods and services for this part of the public. For another part of the public, such as the Bulgarian-, Hungarian-, Lithuanian-, Polish- and Slovenian-speaking parts of the public, the word ‘VALVES’ is meaningless and therefore distinctive. Considering these possible perceptions, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that perceives the word ‘VALVES’ in the signs as meaningless and for which this word therefore has an average degree of distinctiveness. This part of the relevant public would be more likely to confuse the signs, and this scenario therefore constitutes the opponent’s best-case scenario.

The word ‘Pictor’ and the letters ‘TMB’ of the earlier mark will be meaningless for the relevant public and, therefore, each of them has an average degree of distinctiveness in relation to the relevant goods and services. The letters ‘PV’ may be perceived as a figurative combination of the first letters of the words ‘Pictor Valves’ or just as two random letters depicted figuratively. In any case, the element ‘PV’ does not describe or allude to any characteristic of the relevant goods and services and has an average degree of distinctiveness. The circular half grey and half dark blue background and the vertical blue line are more decorative in nature, with the line merely separating the figurative element from the verbal elements of the earlier mark.

Although the figurative element (containing the letters ‘PV’) is larger than the remaining elements of the earlier mark, the differences in size between the elements are not big enough to result in the dominance of one element. Therefore, the earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the earlier mark and the contested sign are similar to the extent that they coincide in the word ‘VALVES’. However, they differ in all other aspects. The earlier mark is composed of a figurative element containing the letters ‘PV’ and the verbal elements ‘Pictor Valves’ and ‘TMB’. It has 17 letters in total and is more than twice as long as the contested sign, ‘PJ VALVES’, which consists of 8 letters.

The opponent emphasises the similarity between the contested sign, ‘PJ VALVES’, and the verbal elements ‘Pictor Valves’ of the earlier mark. However, when assessing the similarity between two marks, overall similarity must be taken into account and not just the similarity between the contested sign and some elements of the earlier mark. In view of the size and position of the figurative element of the letters ‘PV’ against the circular, blue and grey background at the beginning of the earlier mark, it plays an independent role in the overall visual composition of the mark and will definitely be noticed by the relevant consumers. The same applies to the verbal element ‘TMB’ next to the word ‘Valves’, which is clearly perceptible in the overall composition of the earlier mark. The arrangement of these elements, together with their colours, forms a single unique composition, and so it is reasonable to assume that the earlier mark will be perceived as a whole, taking into account all its elements.

As regards the opponent’s claim that the beginnings of the signs are identical (‘P’ and ‘PICTOR’ versus ‘P’), the elements preceding the word ‘VALVES’ are ‘PV Pictor’ in the earlier mark versus ‘PJ’ in the contested sign. As ‘PJ’ consists of only two letters whereas ‘PV Pictor’ has eight letters in total and only one of them is the same, no similarity (let alone identity) can be found between these elements. Moreover, the very first element of the earlier mark encompassing the letters ‘PV’ is a distinctive figurative element, which will be the first element to catch consumers’ attention and, in addition, creates a significant visual difference at the beginning of the earlier mark. Therefore, the signs are considered visually similar to a low degree.

Aurally, the pronunciation of the earlier mark and the contested sign coincides in the sound of the letters /VALVES/ and in the sound of the first letter, /P/, of the first elements, /PV/ of the earlier mark and /PJ/ of the contested sign. The pronunciation differs in the sound of the second letters of the first elements, /V/ in the earlier mark and /J/ in the contested sign, as well as in the sound of the remaining elements, /PICTOR/ and /TMB/, of the earlier mark, which have no counterparts in the contested sign. Considering all these differences, the earlier mark, pronounced as /PV PICTOR VALVES TMD/, will have a different phonetic structure, rhythm and intonation from the contested sign, pronounced as /PJ VALVES/. Therefore, the signs are considered aurally similar to a low 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 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 and services 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

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/or 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).

As concluded above, the contested goods and services are deemed similar to the opponent’s goods and services, and they target the public at large and business consumers with an average and higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.

The earlier mark and the contested sign are similar insofar as they have the word ‘VALVES’ in common and their first elements (consisting of two-letter combinations) have the same first letter, ‘P’. However, the marks differ in the second letters of these first elements, in the remaining verbal elements and in the graphic composition of the earlier mark, so these commonalities, as explained in section c), only lead to a low degree of visual and aural similarity. As the signs under comparison do not have a conceptual link that would lead the public to associate them, it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the only element they have in common, namely ‘VALVES’.

Consequently, despite the similarities between the marks under comparison, the differences between them are sufficiently striking and will avoid a likelihood of confusion, including a likelihood of association, among the relevant public (even with an average degree of attention) in relation to the goods and services deemed similar.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

The opponent refers to a previous decision of the Office, namely 11/06/2010, B 1 485 632, ZIP / ZIP DELUXE. However, in this case referred to by the opponent, the earlier mark is fully included in the contested sign, which is clearly not the case in relation to the trade marks under comparison in the present case. Therefore, the opposition decision cited by the opponent is not comparable to the present case and is not relevant to the present proceedings.

For the sake of completeness, the Opposition Division points out that there is no need to proceed further to a comparison of the signs for the part of the public that will perceive the meaning of the word ‘VALVES’ in both marks, since the outcome would not be different. Indeed, if there is no likelihood of confusion for those consumers that do not perceive any meaning in the word ‘VALVES’, a fortiori there is no likelihood of confusion for those consumers who will perceive it as having the abovementioned meaning, since the relevant consumers will perceive it as descriptive in relation to the relevant goods and services in question and will pay very little attention to it. Since having a non-distinctive element in common would make a likelihood of confusion between two marks even less likely, the outcome of the present decision would not be different.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Janja FELC

Rasa BARAKAUSKIENE

Judit NÉMETH

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.