OPPOSITION No B 2 269 291

Guhl Beat, Unterholzstrasse 21, 8561 Ottoberg, Switzerland (opponent), represented by Forresters, Port of Liverpool Building, Pier Head, Liverpool, Merseyside, L3 1AF, United Kingdom (professional representative)

a g a i n s t

Patrick McHugh, c/o The Folding Door Company of Ireland Grants Drive Greenogue Business Park, Rathcoole Dublin, Ireland (applicant), represented by Michael O'Connor, c/o O'Connor Intellectual Property, Suite 207, Q House, Furze Road, Sandyford, Dublin 18, Ireland (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 269 291 is partially upheld, namely for the following contested goods and services:

Class 6:                Doors, gates, windows and window coverings of metal; Aluminium windows; casement windows of metal; fitted windows of metal; fittings of metal for windows; frames of metal for windows; handles of metal for windows; hinges for doors and windows (metal – ); ironwork for windows; latches (Metal – ) being fitted for windows; metal sash fasteners for windows; metal sash windows; rollers (Metal -) for sliding windows; roof fanlights [windows] of metal; roof lights [windows] of metal; roof windows of metal; sash balances of metal for windows; skylight windows (Metal -) for use in buildings; wall windows of metal; roof windows; skylights; sliding doors; folding doors of metal; folding, sliding doors of metal; mullions of metal; Fittings for Doors, gates, windows and window coverings of metal; double glazing panels (Metal -); double glazing panels (Metal -) incorporating insulating glass; triple glazing panels (Metal -); triple glazing panels (Metal -) incorporating insulating glass; roof light abutments of metal; mechanisms (Metal -) for locking windows; mechanisms (Metal -) for lifting windows; mechanisms (Metal -) for opening windows; mechanisms (Metal -) for rolling windows; mechanisms (Metal -) for sliding windows; rollers (Metal -) for sliding windows; ventilation grilles (Metal -) for fitting in windows; sliding doors; Mechanisms (Metal -) for sliding doors; Metal tracks for sliding doors; Rails (Metal -) for sliding doors; Rollers (Metal -) for sliding doors; Runners (Metal -) for sliding doors; rails (Metal -) for folding doors.

Class 19:        Doors, gates, windows and window coverings, not of metal; Casement windows, not of metal; coloured glass for windows; frames (Non-metallic -) for windows; glass for windows; glass windows; roof fanlights [windows] of non-metallic materials; roof windows made of plastic; roof windows (non-metallic -); vinyl windows; window glass except glass for vehicle windows; roof windows; skylights; folding doors, not of metal; sliding doors not of metal; folding, sliding doors not of metal; floors, not of metal; mullions (Non-metallic -); Fittings for Doors, gates, windows and window coverings, not of metal; double glazing panels (Non-metallic -); double glazing panels (Non-metallic -) incorporating insulating glass; triple glazing panels (Non-metallic -); triple glazing panels (Non-metallic -) incorporating insulating glass; glass panes; solar control glazing; self-cleaning glass; roof light abutments (not of metal -).

Class 20:                 Hinges for doors and windows (non-metallic -); mechanisms (non-metallic, non-electric -) for locking windows; mechanisms (non-metallic, non-electric -) for lifting windows; mechanisms (non-metallic, non-electric -) for opening windows; mechanisms (non-metallic, non-electric -) for rolling windows; mechanisms (non-metallic, non-electric -) for sliding windows; rollers (non-metallic -) for sliding windows; ventilation grilles (Non-metallic -) for fitting in windows; sliding doors; Mechanisms (Non-metallic, non-electric -) for sliding doors; Non-metallic tracks for sliding doors; Rails (Non-metallic -) for sliding doors; Rollers (Non-metallic -) for sliding doors; Runners (Non-metallic -) for sliding doors; rails (Non-metallic -) for folding doors.

Class 37:                 Glazing, installation, maintenance and repair of glass, windows; Windows (Installation of -); replacement of windows; Double glazing installation; triple glazing installation

2.        European Union trade mark application No 12 000 006 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 000 006 for the word mark ‘SKYFRAME’. The opposition is based on International trade mark registration No 868 910 designating Spain, Czech Republic, Portugal, Austria, Slovakia, Poland, Italy, Hungary, Greece, Germany, France and Slovenia for the word mark ‘SKY-FRAME’ and International trade mark registration No 915 105 designating Spain, Czech Republic, Ireland, Austria, Italy, Benelux, Slovenia, Sweden, Portugal, Slovakia, Denmark, Poland, Hungary, Greece, Germany, Finland and France for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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

The date of filing of the contested application is 19/07/2013. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain, Czech Republic, Ireland, Austria, Italy, Benelux, Slovenia, Sweden, Portugal, Slovakia, Denmark, Poland, Hungary, Greece, Germany, Finland and France from 19/07/2008 to 18/07/2013 inclusive.

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

International trade mark registration No 868 910

Class 6:        Metal windows.

Class 19:        Non-metallic windows.

International trade mark registration No 915 105

Class 6:        Windows of metal, door and window fittings of metal.

Class 19:        Windows not of metal, window frames not of metal, window glass.

Class 20:        Window fittings not of metal.

According to Rule 22(3) EUTMIR, the evidence of use must 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 09/12/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/02/2015 to submit evidence of use of the earlier trade marks. On 16/02/2015, the opponent submitted evidence of use. This was within the time limit in view of the fact that 14/02/2015 corresponded to a Saturday, which is not a working day.

On 10/09/2015, after expiry of the time limit, the opponent submitted additional evidence.

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (Fishbone, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (Fishbone, § 36).

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T 415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C 621/11 P, Fishbone, EU:C:2013:484, § 36).

For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Office, therefore, decides to take into account the additional evidence submitted on 10/09/2015.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is the following:

• Table of sales figures: the table has been drawn up by the opponent itself. For confidentiality reasons, figures will not be mentioned here. However the sales are comprised between 2011 and 2014, and cover Austria, Belgium, Germany, Spain, France, the United Kingdom, Ireland, Italy, the Netherlands, Poland, and to a much lesser extent, Luxembourg and Slovakia. The amounts in Swiss Francs are considerable.

• List of distributors of ‘SKY-FRAME’ products drawn up by the opponent. Distribution companies are mentioned in almost all the relevant territories.

• Product catalogue entitled ‘WORKING WITH SKY-FRAME’: The catalogue is dated in 2014 and is provided to distributors throughout the EU. It displays ‘SKY-FRAME’ branded windows and doors and projects are mentioned which took place in Austria, Germany, the Netherlands and the United Kingdom. Both of the earlier marks appear throughout the document. A description of the opponent’s products is given as follows:

‘Sky-Frame sliding window systems comprise freely combinable elements that breathe life into any style of residential architecture’.

An example of a house incorporating the opponent’s products is as follows:

        

        A description of a window is given as follows:

‘SKY-FRAME CLASSIC: […] The sliding windows comprise insulating glass units with perimeter aluminium or glass-fibre-reinforced plastic (GRP) sections. Mounted in aluminium frames that are fitted flush with floor and ceiling, the sliding units offer minimum rolling resistance when operated’.

• Product catalogue entitled ‘LIVING WITH SKY-FRAME’. Projects are mentioned which took place in Austria, Germany and the Netherlands.

• Export documents: approximately six documents have been filed which have been issued by the ‘Federal Department of Finance FDF’ in Switzerland. These documents are dated between 2011 and 2013. The documents bear addresses in Italy, France, Austria, the United Kingdom, Germany and Belgium. The documents make reference to the transport of goods such as ‘Doors, windows and their frames’ or ‘Sliding window’ or ‘Extruded aluminium profile’. However, none of them bear the earlier trade marks.

• Extracts from the website www.sky-frame.ch discussing a number of projects which were undertaken during the relevant period and displaying photographs of buildings.

Further evidence filed on 10/09/2015:

• Invoices: Numerous invoices are filed mostly falling within the relevant period. All of the invoices bear the earlier marks, with the figurative mark  appearing in the header and mention is made of ‘SKY-FRAME’ in the text of the invoices. The invoices bear delivery addresses in Italy, France, Germany, Austria, Poland, Spain, the United Kingdom, Sweden, Belgium, Luxembourg and the Netherlands. The majority of the invoices are in German and no translation has been provided. However, the format of the documents makes it clear that they are invoices for ‘SKY-FRAME’ products. In addition, the invoices supplied in some territories, for example, Poland, Spain and Belgium, are in English and provide descriptions in their itemisation such as:

This description appears in an invoice made out to a client in Belgium on 14/11/2008.

The exact monetary amounts appearing in the invoices cannot be mentioned due to the confidentiality request. They are, however, substantial.

• Catalogues: four catalogues used to promote the opponent’s business at trade shows throughout the European Union. They are dated in 2007, 2010 and 2012.

The earlier marks are mentioned throughout. Descriptions are given of the products sold by the opponent such as:

‘SKY-FRAME is a unique system for large-surface sliding doors with a frame that can be installed flush with the walls, ceiling and floor’.

‘Large frameless windows configure the room and create a ray of hope in new and old buildings’.

• Evidence showing the mark affixed to metal fittings for doors and windows. Two photographs are filed of a screw and a sealing sheet bearing the mark. The quality of the photographs is poor, but the mark can be seen on the sealing sheet.

• Further screenshots from the website www.skyframe.ch. The screenshots bear dates between 2008 and 2012.

• Witness Statement by Mr Beat Guhl, owner of the earlier marks, dated 6 July 2015. He states that his company began to actively market the self-developed slim line panoramic sliding window system in 2002 using the trade mark ‘Sky-Frame’.

• Witness Statement by Mr Christian Brandt, Business Development Executive for Beat Guhl, dated 6 July 2015. He confirms use of the earlier marks and states that ‘Sky-Frame’ are insulated sliding windows. The opponent’s products have been used in close to 5 000 projects worldwide on all five continents.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Opposition Division notes that the earlier marks have been refused protection in the United Kingdom. Consequently, the evidence filed pertaining to the United Kingdom will not be taken into account in the assessment below.

Place, time and nature of use

The invoices and the catalogues show that the place of use covers Italy, France, Germany, Austria, Poland, Spain, Sweden, Belgium, Luxembourg and the Netherlands. This can be inferred from the addresses mentioned. Therefore, the evidence relates to some of the territories designated by the earlier marks.

Most of the evidence is dated within the relevant period.

The evidence shows that the earlier marks have been used as registered.

Extent of use

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

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices are spaced throughout the relevant period and are made out to different companies throughout Italy, France, Germany, Austria, Poland, Spain, Sweden, Belgium, Luxembourg and the Netherlands. The earlier marks are mentioned in all of the invoices. Although the opponent has not translated the invoices, a number of them have been filed in English anyway. Since the format of the invoices is standard and does not vary at all in all of the examples filed, the Opposition Division finds it is reasonable to assume that the details given in English regarding the products appearing in the invoices may be presumed to apply to the invoices filed in other languages such as the ones in German. Most of the other evidence filed such as the witness statements, catalogues and screenshots, has a slightly lower probative value as it derives from the opponent itself. Nevertheless, all of these documents taken together with the invoices paint a picture of sufficient extent of use of the earlier marks. The Opposition Division does not agree with the applicant’s claims that the sales are minimal. They are in fact consistent over time and considerable in monetary terms. The applicant also mentions that the invoices are not backed up by any other documents from distributors. The Opposition Division does not see this as a flaw since many different addresses are mentioned in the invoices which also appear in the list of distributors provided.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in some of the relevant territories designated by the earlier marks.

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

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 will, 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.

In the present case the evidence shows genuine use of the trade marks for the following goods:

International trade mark registration No 868 910

Class 6:        Metal windows.

Class 19:        Non-metallic windows.

International trade mark registration No 915 105

Class 6:        Windows of metal.

Class 19:        Windows not of metal, window frames not of metal, window glass.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition. The territories which will be taken into account are Italy, France, Germany, Austria, Poland, Spain, Sweden, Belgium, Luxembourg and the Netherlands.

The applicant goes to some lengths to argue that the opponent, in its advertising, makes statements to the effect that its goods ‘are not a window’ or that they are frameless or that they ‘are a view, not a window’. The opponent replies that this is mere advertising puffery serving to emphasise the fact that the products offered by the opponent are windows or doors with a difference. Furthermore, the windows and doors it produces are obviously not frameless, but rather the frames are minimal and hidden giving the appearance of being frameless. The Opposition Division is satisfied with the explanations of the opponent and would suggest that the photographs and descriptions provided in the evidence bear this reasoning out.

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:

International trade mark registration No 868 910

Class 6:                Metal windows.

Class 19:                Non-metallic windows.

International trade mark registration No 915 105

Class 6:                Windows of metal.

Class 19:                Windows not of metal, window frames not of metal, window glass.

The contested goods and services are the following:

Class 6:        Doors, gates, windows and window coverings of metal; Aluminium windows; casement windows of metal; fitted windows of metal; fittings of metal for windows; frames of metal for windows; handles of metal for windows; hinges for doors and windows (metal – ); ironwork for windows; latches (Metal – ) being fitted for windows; metal sash fasteners for windows; metal sash windows; rollers (Metal -) for sliding windows; roof fanlights [windows] of metal; roof lights [windows] of metal; roof windows of metal; sash balances of metal for windows; skylight windows (Metal -) for use in buildings; wall windows of metal; roof windows; skylights; sliding doors; folding doors of metal; folding, sliding doors of metal; mullions of metal; Fittings for Doors, gates, windows and window coverings of metal; double glazing panels (Metal -); double glazing panels (Metal -) incorporating insulating glass; triple glazing panels (Metal -); triple glazing panels (Metal -) incorporating insulating glass; roof light abutments of metal; mechanisms (Metal -) for locking windows; mechanisms (Metal -) for lifting windows; mechanisms (Metal -) for opening windows; mechanisms (Metal -) for rolling windows; mechanisms (Metal -) for sliding windows; rollers (Metal -) for sliding windows; ventilation grilles (Metal -) for fitting in windows; sliding doors; Mechanisms (Metal -) for sliding doors; Metal tracks for sliding doors; Rails (Metal -) for sliding doors; Rollers (Metal -) for sliding doors; Runners (Metal -) for sliding doors; rails (Metal -) for folding doors.

Class 19:        Doors, gates, windows and window coverings, not of metal; Casement windows, not of metal; coloured glass for windows; frames (Non-metallic -) for windows; glass for windows; glass windows; roof fanlights [windows] of non-metallic materials; roof windows made of plastic; roof windows (non-metallic -); vinyl windows; window glass except glass for vehicle windows; roof windows; skylights; folding doors, not of metal; sliding doors not of metal; folding, sliding doors not of metal; floors, not of metal; mullions (Non-metallic -); Fittings for Doors, gates, windows and window coverings, not of metal; double glazing panels (Non-metallic -); double glazing panels (Non-metallic -) incorporating insulating glass; triple glazing panels (Non-metallic -); triple glazing panels (Non-metallic -) incorporating insulating glass; glass panes; solar control glazing; self-cleaning glass; roof light abutments (not of metal -).

Class 20:        Hinges for doors and windows (non-metallic -); mechanisms (non-metallic, non-electric -) for locking windows; mechanisms (non-metallic, non-electric -) for lifting windows; mechanisms (non-metallic, non-electric -) for opening windows; mechanisms (non-metallic, non-electric -) for rolling windows; mechanisms (non-metallic, non-electric -) for sliding windows; rollers (non-metallic -) for sliding windows; ventilation grilles (Non-metallic -) for fitting in windows; sliding doors; Mechanisms (Non-metallic, non-electric -) for sliding doors; Non-metallic tracks for sliding doors; Rails (Non-metallic -) for sliding doors; Rollers (Non-metallic -) for sliding doors; Runners (Non-metallic -) for sliding doors; rails (Non-metallic -) for folding doors.

Class 37:        Glazing, installation, maintenance and repair of glass, windows and blinds; Doors and Windows (Installation of -); installation of draft proofing for sash windows; replacement of windows; construction of floors; Double glazing installation; triple glazing installation.

        

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 6

The contested windows of metal are identical to the earlier goods in Class 6 covered by both marks.

The contested Aluminium windows; casement windows of metal; fitted windows of metal; metal sash windows; roof fanlights [windows] of metal; roof lights [windows] of metal; roof windows of metal; skylight windows (Metal -) for use in buildings; wall windows of metal; roof windows; skylights are all specific sorts of windows of metal which fall under the broader terms of Class 6 of both earlier marks. These goods are, therefore, identical.

The remaining contested goods:

Doors, gates, and window coverings of metal; fittings of metal for windows; frames of metal for windows; handles of metal for windows; hinges for doors and windows (metal – ); ironwork for windows; latches (Metal – ) being fitted for windows; metal sash fasteners for windows; rollers (Metal -) for sliding windows; sash balances of metal for windows; sliding doors; folding doors of metal; folding, sliding doors of metal; mullions of metal; Fittings for Doors, gates, windows and window coverings of metal; double glazing panels (Metal -); double glazing panels (Metal -) incorporating insulating glass; triple glazing panels (Metal -); triple glazing panels (Metal -) incorporating insulating glass; roof light abutments of metal; mechanisms (Metal -) for locking windows; mechanisms (Metal -) for lifting windows; mechanisms (Metal -) for opening windows; mechanisms (Metal -) for rolling windows; mechanisms (Metal -) for sliding windows; rollers (Metal -) for sliding windows; ventilation grilles (Metal -) for fitting in windows; sliding doors; Mechanisms (Metal -) for sliding doors; Metal tracks for sliding doors; Rails (Metal -) for sliding doors; Rollers (Metal -) for sliding doors; Runners (Metal -) for sliding doors; rails (Metal -) for folding doors.

are all sorts of doors and gates of metal, coverings, frames and fittings of metal for windows and doors, glazing panels, and mechanisms for opening and closing windows and doors.

The earlier goods are metal windows/windows of metal. The remaining contested goods should be considered at least similar to the earlier goods. It is clear that the manufacturers of metal windows may plausibly extend their manufacturing capabilities to metal doors and gates, and all the accessories and fittings required for metal windows, doors and gates. These goods will be distributed via the same channels and aimed at the same consumers. In many cases, they are also complementary.

Contested goods in Class 19

The contested Windows not of metal are included identically in the earlier goods.

The contested casement windows, not of metal; glass windows; roof fanlights [windows] of non-metallic materials; roof windows made of plastic; roof windows (non-metallic -); vinyl windows; roof windows; skylights are covered by the earlier broader terms Non-metallic windows/ Windows not of metal. These goods are, therefore, identical.

The contested frames (Non-metallic -) for windows are identical to the earlier window frames not of metal, albeit with a slightly different wording.

The contested glass for windows is identical to the earlier window glass.

The contested coloured glass for windows; window glass except glass for vehicle windows; double glazing panels (Non-metallic -); double glazing panels (Non-metallic -) incorporating insulating glass; triple glazing panels (Non-metallic -); triple glazing panels (Non-metallic -) incorporating insulating glass; glass panes; solar control glazing; self-cleaning glass are covered by the earlier broader term window glass. These goods are, therefore, identical.

The remaining contested goods:

 

Doors, gates, and window coverings, not of metal; folding doors, not of metal; sliding doors not of metal; folding, sliding doors not of metal; floors, not of metal; mullions (Non-metallic -); Fittings for Doors, gates; window coverings, not of metal; roof light abutments (not of metal -).

are all sorts of doors and gates not of metal, coverings, frames and fittings not of metal for windows and doors.

The earlier goods are windows and window frames not of metal and window glass. The contested goods should be considered at least similar to the earlier goods. It is clear that the manufacturers of non-metallic windows may plausibly extend their manufacturing capabilities to non-metallic doors and gates, and all the accessories and fittings required for non-metallic windows, doors and gates. These goods will be distributed via the same channels and aimed at the same consumers. In many cases, they are also complementary.

Contested goods in Class 20

The contested goods are all sorts of non-metallic accessories, fittings and mechanisms for windows and doors. The earlier goods include non-metallic windows, window frames not of metal and window glass. The contested goods should be considered at least similar to the earlier goods. It is clear that the manufacturers of non-metallic windows and frames may plausibly extend their manufacturing capabilities to non-metallic accessories, fittings and mechanisms for windows and doors. These goods will be distributed via the same channels and aimed at the same consumers. In many cases, they are also complementary.

Contested services in Class 37

The contested Glazing, installation, maintenance and repair of glass, windows; Windows (Installation of -); replacement of windows; Double glazing installation; triple glazing installation are services connected with installing, maintaining and repairing windows and the glass contained in windows. There is a market tendency for these services to be provided also by the manufacturer of the windows and window glass themselves. The earlier goods include metallic and non-metallic windows and window glass. The Opposition Division finds that there is similarity between the contested services and the earlier goods as they may be provided by the same companies, aimed at the same consumers and supplied via the same channels.

The remaining contested services installation, maintenance and repair of blinds; Doors (Installation of -); installation of draft proofing for sash windows; construction of floors are dissimilar to all the earlier goods. The opponent’s goods are windows, window frames and glass for windows. The contested services relate specifically to blinds, doors, floors and the installation of draft-proofing for windows. The Opposition Division does not believe that the producer of the earlier goods will also provide these services, which are not directly connected with the earlier goods. As a rule, services are not similar to goods as they are intangible, while goods are not. No exception may be made to this rule here as the company which produces the earlier goods will not also supply contested services. Therefore, there is no complementarity between them and they will be aimed at different consumers.

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 or similar are directed at the public at large and also at specialists in the construction industry such as building contractors or architects.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

SKY-FRAME IR No 915 105 IR No 915 105	SKYFRAME
Earlier trade marks	Contested sign

The relevant territories are Italy, France, Germany, Austria, Poland, Spain, Sweden, Belgium, Luxembourg and the Netherlands.

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 marks are word marks except for IR No 915 105, which is a depiction of ‘SKY-FRAME’ in a stylised manner to make the letters appear in three dimensions.

The word ‘SKY’ contained in all of the marks is an English word referring to ‘the space above the earth that you see when you look up into the air’. It might be perceived and understood by members of the relevant public due to the fact that it is a fairly simple English word. Whether it is understood or not, it is distinctive in connection with the goods and services at issue.

The word ‘FRAME’ of the earlier mark and the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the words ‘SKY’ and ‘FRAME’. In fact, they only differ in the hyphen contained in the earlier marks and the slight stylisation of one of them.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will be identical. The hyphen in the earlier marks will not have a perceptible impact on their pronunciation.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Where ‘SKY’ conveys a meaning, the marks are conceptually highly similar.

Where none of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services at issue are identical, at least similar and dissimilar. The level of attention varies from average to high and the earlier marks have a normal degree of distinctiveness.

The signs have been found highly similar visually, aurally identical and conceptually highly similar where ‘SKY’ is understood or the conceptual aspect does not influence the assessment of the similarity of the signs.

In simple terms, the signs at issue are nearly identical – the only difference between them residing in the hyphen in the earlier signs and the slight stylisation of one of them. There can be little doubt that the relevant consumers will confuse the earlier marks and the contested sign when applied to identical or similar goods and services, and also taking into account a higher degree of attention on the part of the consumer for some goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registrations. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and at least similar to those of the earlier trade marks.

The rest of the contested services 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 services 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 services because the signs and the goods and services are obviously not identical.

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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 opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Lucinda CARNEY

Richard BIANCHI

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.