OPPOSITION No B 2 725 250

Portinox, S.A., Ctra. Pulianas, Km. 6, 18197 Pulianas, Spain (opponent), represented by Díaz Ungría, S.L., Avda. Concha Espina nº 8 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Tillmann Verpackungen GmbH, Dieselstraße 46-52, 63165 Mühlheim, Germany (applicant), represented by Knapp, Lanio, Gesser & Partner, Herrnstr. 53, 63065 Offenbach, Germany (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 250 is upheld for all the contested goods, namely:

Class 6:        Transport pallets of metal; Chests of metal; Cables, wires and chains, of metal; Metal hardware; Small items of metal hardware; Packaging containers of metal.

2.        European Union trade mark application No 15 215 361 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 215 361, namely against all the goods in Class 6. The opposition is based on Spanish trade mark registration No 3 503 295. 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

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

Class 6:        Barrels of metal, containers of metal for beers and carbonated beverages; metal containers for compressed gas or liquid air; refrigeration tanks of metal; drain valves of metal.

The contested goods are the following:

Class 6:        Transport pallets of metal; Chests of metal; Cables, wires and chains, of metal; Metal hardware; Small items of metal hardware; Packaging containers of metal.

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 packaging containers of metal overlap with the opponent’s containers of metal for beers and carbonated beverages, insofar as both categories include packaging containers of metal for beer or soft drinks. Therefore, they are identical.

The contested transport pallets of metal; chests of metal are goods of metal used to contain, store and transport articles. They are similar to the opponent’s metal containers for compressed gas or liquid air. They have the same purpose (transport or storage of goods), target the same relevant public (e.g. technicians in logistics companies) and have the same distribution channels. Moreover, such goods are usually offered by the same undertakings.

The contested cables, wires and chains, of metal; metal hardware; small items of metal hardware are articles that can be used for various purposes, such as fastening, fixing, holding and closing. Articles such as these are commonly used with the opponent’s metal containers for compressed gas or liquid air for securing cargo in transportation, etc. These goods target the same relevant public (e.g. technicians dealing with the maintenance of containers for beverages, gas or liquid air) and have the same distribution channels. However, these goods differ in their methods of use and are neither interchangeable nor in competition with each other. It follows that these goods are similar to a low degree.

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 relevant goods of the earlier mark target the professional public exclusively and the contested goods found to be identical or similar to those of the earlier mark target the general and professional publics. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

As the degree of specialisation of these goods, as well as their cost, may vary significantly (from small items of metal hardware to storage tanks of metal), it is considered that the degree of attention also varies from average to high.

3. The signs

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 figurative mark composed of the verbal elements ‘THIELMANN’ in dark-blue upper case letters and ‘Leading in Containers’ in grey lower case letters, the latter being much smaller than and placed below the former. At the top left-hand side of the mark is a figurative element depicting a grey circle crossing which are some curved lines.

The word ‘THIELMANN’ is the most eye-catching and therefore dominant element of the earlier mark. It is meaningless for the relevant public and therefore distinctive. Although the other word elements, ‘Leading in Containers’, lack any evident meaning as a whole, the word ‘Containers’ will be understood by the relevant public as the plural of ‘container’ meaning ‘a large metal box of a standard design and size used for the transport of goods by road, rail, sea, or air’, given the similar equivalent words in Spanish, ‘contenedor’ and ‘contáiner’. Therefore, this word is non-distinctive for the relevant goods, which are containers or goods commonly used in relation thereto. Moreover, the impact of the expression ‘Leading in Containers’ as a whole is very low on account of its clearly subordinate position and inconspicuous depiction.

The earlier mark’s figurative element is not descriptive, allusive or otherwise weak for the relevant goods and it is therefore distinctive, but due to its size and pale colour it has a limited impact on the overall impression of the mark. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign is a figurative mark composed of the words ‘Tillmann’ in red lower case letters and ‘VERPACKUNGEN’ in black upper case letters, the latter being smaller than and placed underneath the former. The dot of the ‘i’ of the word ‘Tillmann’ is depicted as a small grey square. The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The word elements of the contested sign are meaningless for the relevant public and are therefore distinctive. However, the more eye-catching and dominant element of the contested sign is the word ‘Tillmann’.

The figurative element of the contested sign, namely the grey square, is of a purely decorative nature and has a very limited impact on the overall impression created by the mark due to its size.

Visually, the signs coincide in the sequence of letters ‘T*I*LMANN’ contained in the dominant and distinctive elements of both signs. In this element, they differ in the letters ‘H’ and ‘E’ in the earlier mark and the second letter ‘L’ of the contested sign. Therefore, the signs have seven letters in common out of nine in the earlier mark and eight in the contested sign.

Although the signs differ in their other verbal and figurative components, considering these components have limited visual impact, for the abovementioned reasons, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘T*I*MANN’. In Spanish, the differing letter ‘H’ in the earlier mark in the second position of this element will not be pronounced, and the sound of the letters ‘ILL’ of the contested sign will be similar to the pronunciation of the letters ‘IEL’ of the earlier mark.

It can be reasonably assumed that the secondary element ‘Leading in Containers’ will be omitted from the pronunciation when referring to the earlier mark. Moreover, the figurative elements are not aurally relevant. However, the contested sign differs from the earlier mark in the pronunciation of the element ‘VERPACKUNGEN’. Overall, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Although the earlier mark contains the word ‘Containers’, this element cannot establish a point of conceptual difference between the signs, given that it is non-distinctive and cannot indicate the commercial origin of the goods. The relevant public will focus its attention on the other fanciful elements, which have no meaning. For this reason, a conceptual comparison is not possible and therefore 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 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 in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical, partly similar and partly similar to a low degree. The signs are visually and aurally similar to an average degree, and this impression is not altered by any relevant conceptual perception.

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). 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).

In an overall assessment of the relevant factors of the case, the differences identified between the signs are insufficient to counteract the similarities between them and to enable the relevant public to safely distinguish between them in the context of identical or similar goods. When encountering the signs at issue, the public may overlook the differences in the verbal and figurative elements and assume that they denote goods produced by the same undertaking, or economically linked undertakings, and that the marks simply have different graphic depictions.

Considering all the above, there is a likelihood of confusion on the part of the professional public. Given that a likelihood of confusion for only part of the relevant public in the pertinent territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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, the similarity between the signs is sufficient to offset the low degree of similarity between some of the goods and therefore a likelihood of confusion exists also in relation to those goods.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 503 295. It follows that the contested trade mark must be rejected for all the contested goods.

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 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

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

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.