OPPOSITION No B 2 773 441

Schüco International KG, Karolinenstr. 1-15, 33609 Bielefeld, Germany (opponent), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

Aluk S.A., 42-44 avenue de la Gare, 1610 Luxembourg, Luxembourg (applicant), represented by Juan Navas Glembotzky, 42-44 Avenue de la Gare, 1610 Luxembourg, Luxembourg (employee representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 441 is upheld for all the contested goods.

2.        European Union trade mark application No 15 539 406 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 539 406. The opposition is based on, inter alia, European Union trade mark registration No 11 596 541. 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 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 11 596 541.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 6:        Metal building materials, in particular profiles, pipes, panels, sheets and films for windows, doors, gates, balconies, facades and frames; Windows, doors, gates, partitions, wall linings of metal for facades, windows, doors and gates; Frames for use in construction, window sills, rain deflection profiles; Mechanical closing and opening devices for windows, doors and gates; All the aforesaid goods of metal, including combined with glass, wood or plastic, included in class 6.

After limitation the contested goods are the following:

Class 6:        Metallic profiles; Aluminium profiles; Profiles of metal; Metal profiles; Metal profiles with thermic isolation; Profiled metal sections [semi-finished]; Metal profiles for thermal insulation purposes; Aluminium profiles for use with information or display apparatus; Metal door bolts; Metal doors; Metal door frames; Metal folding doors; Metal sliding doors; Metal patio doors; Metallic fire doors; Door frames of metal; Door jambs of metal; Door bolts of metal; Door handles of metal; Door sections of metal; Door hinges of metal; Metal panels for doors; Patio doors of metal; Roll doors of metal; Roller doors of metal; Shutter doors of metal; Door casings of metal; Metal locks for doors; Doors of metal for buildings; Rollers (Metal -) for sliding doors; Metal door viewers [non-magnified]; Metal bolts for locking doors; Handles of metal for doors; Metal runners for sliding doors; Frames of metal for doors; Sliding doors of metal for buildings; Metal door handles; Window blinds [outdoor] of metal; Rollers (Metal -) for sliding windows; None of the aforementioned goods being windows, flashing windows, frames and constructions of metal for windows, window fasteners, or parts and accessories (not included in other classes) for the said goods, all the said goods being wholly or mainly of metal.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The applicant restricted its scope of protection by adding at the end of Class 6 in the specification none of the aforementioned goods being windows, flashing windows, frames and constructions of metal for windows, window fasteners, or parts and accessories (not included in other classes) for the said goods, all the said goods being wholly or mainly of metal.

The opponent indicated that the goods on which the opposition is based are goods of metal, including combined with glass, wood or plastic, included in class 6.

Since these specifications do not change the nature of the goods in the respective list, they will not be repeated in the comparison.

Contested goods in Class 6

The contested metallic profiles; aluminium profiles; profiles of metal; metal profiles; metal profiles with thermic isolation; profiled metal sections [semi-finished]; metal profiles for thermal insulation purposes; aluminium profiles for use with information or display apparatus; door sections of metal; metal panels for doors; window blinds [outdoor] of metal are included in the broad category of, or overlap with, the opponent’s metal building materials. Therefore, they are identical.

The contested metal door bolts; door bolts of metal; door handles of metal; door hinges of metal; metal door handles; metal bolts for locking doors; handles of metal for doors; metal locks for doors; metal door viewers [non-magnified] are included in the broad category of, or overlap with, the opponent’s mechanical closing and opening devices for doors. Therefore, they are identical.

The contested metal doors; metal folding doors; metal patio doors; metallic fire doors; metal sliding doors; patio doors of metal; roll doors of metal; roller doors of metal; shutter doors of metal; doors of metal for buildings; sliding doors of metal for buildings are included in the broad category of the opponent’s doors. Therefore, they are identical.

The contested metal door frames; door frames of metal; door jambs of metal; metal runners for sliding doors; frames of metal for doors; rollers (metal -) for sliding doors;

door casings of metal; rollers (metal -) for sliding windows are included in the broad category of, or overlap with, the opponent’s frames for use in construction. Therefore, they are identical.

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 found to be identical are merely directed at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, as the goods are specialised and rather expensive (e.g. windows or doors).

3. The signs

VENTO	Venta
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).

Both signs are word marks, namely ‛VENTO’ (earlier mark) and ‛Venta’ (contested sign). In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is irrelevant.

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, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs under comparison are not meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United Kingdom.

The marks under comparison, both being one word signs, have no elements that could be considered clearly more dominant or distinctive than other elements.

Visually, the signs coincide in the first four letters ‘vent’. However, they differ in their last letters, namely ‛o’ (earlier mark) and ‛a’ (contested sign). They both consist of five letters.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the first letters ‛vent’, present identically in both signs. The pronunciation differs in the sound of the last letters, that is, ‛o’ (earlier mark) and ‛a’ (contested sign). The accent, length and pronunciation will be almost the same.

Therefore, the signs are aurally highly similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. According to the opponent ‛due to its special form of use a serial trademark has an improved degree of distinctiveness’.

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.

5. Global assessment, other arguments and conclusion

As has been concluded above, the goods are identical, and the signs are visually and aurally highly similar. The conceptual comparison is not possible. Furthermore, the earlier mark as a whole is of normal distinctiveness in relation to the relevant goods, and the relevant public’s attention can vary from average to high.

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).

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.

The first four letters, ‘vent’, of the earlier mark are identically included in the contested sign. Consequently, the Opposition Division finds that the dissimilarities between the signs are insufficient to counteract the visual and aural similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 596 541. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, that is, European Union trade mark registration No 11 596 541 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Jessica LEWIS

Michal KRUK

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.