OPPOSITION No B 2 399 296
Cirelius – Materiais para Gás e Aquecimento, Lda., Zona Industrial de Avintes, Nos 103 e 113, 4430-930 Avintes, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 – 6°. Dt°, 4000-432 Porto, Portugal (professional representative)
a g a i n s t
Lindab AB, 269 82 Båstad, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).
On 16/03/2017, the Opposition Division takes the following
1. Opposition No B 2 399 296 is upheld for all the contested goods.
2. European Union trade mark application No 12 758 462 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 758 462. The opposition is based on Portuguese national trade mark registration No 472 876. 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 goods
The goods on which the opposition is based are the following:
Class 11: Apparatus and installations of air conditioning; air conditioning apparatus and installations; ventilation apparatus (air-conditioning); heat pumps; heating boilers; particularly wood and biomass.
The contested goods are the following:
Class 11: Air supply beams; climate beams; apparatus for ventilation, cooling and heating and parts and accessories for the aforesaid goods ventilating, cooling- and heating systems, and parts and accessories for the aforesaid goods (air-conditioning); none of the aforementioned goods including solar panels.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘particularly’, used in the opponent’s list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 11
The contested apparatus for ventilation, cooling and heating; ventilating, cooling- and heating systems (none of the aforementioned goods including solar panels) are included in the broad category of the opponent’s apparatus and installations of air conditioning. Therefore, they are identical.
The contested air supply beams; climate beams (none of the aforementioned goods including solar panels) are types of heating, ventilation or air conditioning systems designed to heat or cool large buildings. Therefore, these goods fall within the opponent’s category of ventilation apparatus (air-conditioning). Therefore, they are identical.
The contested parts and accessories for the aforesaid goods (apparatus for ventilation, cooling and heating); parts and accessories for the aforesaid goods (air-conditioning) (none of the aforementioned goods including solar panels), which were found to be identical to the opponent’s apparatus and installations of air conditioning and ventilation apparatus (air-conditioning) have the same producers and are sold by the same undertakings that manufacture the abovementioned goods of the opponent. Furthermore, they target the same purchasing public. Therefore, they are similar.
- 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 (where smaller domestic installations are concerned) and at business consumers (where larger systems are concerned). The degree of attention will vary from average to higher than average, depending on the particular products in question and their complexity and price.
- The signs
Earlier trade mark
The relevant territory is Portugal.
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 sign is a word mark, ‘SOLIUS’
The contested sign is a word mark, ‘SOLUS’.
Neither of the marks has a meaning in Portuguese. Neither of the marks has any element that could be considered more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the string of letters ‘SOL(*)US’. They differ only in the additional letter ‘I’ of the earlier mark, ‘SOLIUS’. Therefore, the marks are visually highly similar.
Aurally, the marks coincide in the sound of the letters ‘SOL*US’ and differ merely in the sound of the fourth letter of the earlier mark, which has no counterpart in the contested sign. Therefore, the signs are aurally highly similar.
Conceptually, the signs have no meaning for the relevant part of the public. 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.
- 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.
- 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 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).
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).
Some of the contested goods are identical and some similar to the opponent’s goods. The similarity between the signs results from the fact that they differ only insofar as the earlier sign has an additional letter ‘I’ in the middle of the mark. Moreover, as explained in section c) of this decision, the verbal elements from which the similarity arises are distinctive to an average degree.
Considering the above, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in relation to all the goods found to be identical or similar.
Therefore, the opposition is well founded on the basis of the opponent’s Portuguese national trade mark registration No 472 876.
It follows from the above that the contested trade mark application must be rejected in its entirety.
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
André Gerd Günther BOSSE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.