BASE | Decision 2693904
Date Published: Sep 28, 2017
OPPOSITION No B 2 693 904
BASF SE, Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)
a g a i n s t
Krispol Sp. z o.o., ul. Budowlana 1, Psary Małe 62-300 Września, Poland (applicant).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 693 904 is upheld for all the contested goods.
2. European Union trade mark application No 14 771 232 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 14 771 232. The opposition is based on European Union trade mark registration No 5 458 518. 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, inter alia, the following:
Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores; advertisement columns of metal; alloys of common metal; aluminium; aluminium foil / aluminium foil; aluminium wire; anchor plates / tie plates; anchors; angle irons; anti-friction metal; anvils; anvils [portable]; armour plate; armour plating; aviaries of metal [structures]; badges of metal for vehicles; balls of steel; bands of metal for tying-up purposes / wrapping or binding bands of metal; barbed wire; barrel hoops of metal; barrels of metal; bars for metal railings; baskets of metal; beacons of metal, non-luminous; beak-irons [bick-irons] / beak irons [bick-irons]; bed casters of metal; bells; belt stretchers of metal; beryllium [glucinium] / glucinium [beryllium]; bicycle parking installations of metal; binding screws of metal for cables; binding thread of metal for agricultural purposes; bindings of metal; bird baths [structures of metal]; blooms [metallurgy]; boarding stairs of metal, mobile, for passengers; bolts; bolts [flat]; bolts of metal; bottle caps of metal / capsules of metal for bottles / sealing caps of metal for bottles; bottle closures of metal / bottle fasteners of metal; bottles [metal containers] for compressed gas or liquid air; box fasteners of metal; boxes of common metal; braces of metal for handling loads / braces of metal for load handling / harness of metal for load handling / harness of metal for handling loads; brackets of metal for building; branching pipes of metal; brass, unwrought or semi-wrought; brazing alloys; bronze; bronzes [works of art]; bronzes for tombstones / monuments of bronze for tombs; broom handles of metal; buckles of common metal; building boards of metal / building panels of metal; building materials of metal; building or furniture fittings of nickel-silver; buildings of metal; buildings, transportable, of metal; busts of common metal; cabanas of metal; cable joints of metal, non-electric / cable linkages of metal [non-electric]; cables of metal, non-electric; cadmium; casement windows of metal; cashboxes of metal; casings of metal for oilwells; cask stands of metal; casks of metal; cast iron, unwrought or semi-wrought; cast steel; cattle chains; ceilings of metal; celtium [hafnium] / hafnium [celtium]; cermets; chains for dogs; chains of metal; chests of metal / bins of metal; chests of metal for food / meat safes of metal; chicken-houses, of metal; chill-moulds [foundry] / chill-molds [foundry]; chimney cowls of metal; chimney pots of metal; chimney shafts of metal; chimneys of metal; chrome iron; chrome ores; chromium; clips of metal for cables and pipes; closures of metal for containers; clothes hooks of metal; cobalt [raw]; collars of metal for fastening pipes / clips of metal for pipes / wall hooks of metal for pipes; common metals, unwrought or semi-wrought; containers of metal [storage, transport]; containers of metal for compressed gas or liquid air; containers of metal for liquid fuel; containers of metal for storing acids; copper rings; copper wire, not insulated; copper, unwrought or semi-wrought; cornices of metal; cotter pins / pins for wheels, etc.; couplings of metal for chains; crampons [climbing irons] / ice nails [climbing irons]; cramps of metal [crampons] / crampons of metal [cramps]; crash barriers of metal for roads; diving boards of metal; door bells [non-electric]; door bolts; door closers [non-electric] / door springs [nonelectric]; door fittings, of metal; door frames of metal / door cases of metal; door handles of metal; door knockers; door openers, non-electric; door panels of metal; door scrapers / foot scrapers; door stops of metal / gate stops of metal; doors of metal; drain pipes of metal; drain traps [valves] of metal; duckboards of metal; ducts of metal for ventilating and air conditioning installations; ducts of metal, for central heating installations / ducts and pipes of metal for central heating installations / pipes of metal, for central heating installations; elbows of metal for pipes; enclosures of metal for tombs; eye bolts / screw rings; fences of metal; ferrules of metal; ferrules of metal for handles; ferrules of metal for walking sticks; figurines [statuettes] of common metal / statuettes of common metal; filings of metal; fire-dogs [andirons]; fish plates [rails]; fittings of metal for beds; fittings of metal for building / fittings of metal for buildings; fittings of metal for coffins; fittings of metal for compressed air ducts; fittings of metal for furniture; fittings of metal for windows; flanges of metal [collars]; flashing of metal, for building; floating containers of metal; floating docks of metal for mooring boats / floating docks of metal, for mooring boats; floor tiles, of metal; floors of metal; foils of metal for wrapping and packaging; foundry molds [moulds] of metal; frames of metal for building; framework of metal for building; furnace fire screens / furnace screens; furnace fireguards; furniture casters of metal; galena [ore]; gates of metal; German silver; germanium; girders of metal; gold solder; gratings of metal / grilles of metal; gravestone slabs of metal / gravestones of metal / tombstones of metal; grease nipples; greenhouse frames of metal; greenhouses of metal, transportable; guard rails of metal; gutter pipes of metal; gutters of metal; handcuffs; handling pallets of metal; hinges of metal; hooks [metal hardware]; hooks for slate [metal hardware]; hooks of metal for clothes rails; hoppers [non-mechanical] of metal; horseshoe nails; horseshoes of metal; house numbers of metal, non-luminous; ice moulds of metal; identification bracelets of metal, for hospitals / identification bracelets of metal for hospitals; identity plates of metal; indium; ingots of common metal; insect screens of metal; iron ores; iron slabs; iron strip / hoop iron; iron wire; iron, unwrought or semi-wrought; ironmongery / hardware of metal [small]; ironwork for doors; ironwork for windows; jalousies of metal; jets of metal; joists of metal; junctions of metal for pipes; keys; knife handles of metal; knobs of metal; ladders of metal; latch bars of metal; latches of metal; laths of metal; latticework of metal / trellis of metal; lead seals; lead, unwrought or semi-wrought; letter boxes of metal; letters and numerals [of common metal], except type; limonite; linings of metal [building] / cladding of metal for construction and building; lintels of metal; loading gauge rods, of metal, for railway waggons / loading gauge rods, of metal, for railway wagons; loading pallets, of metal / loading pallets of metal; lock bolts; locks [other than electric] of metal; locks of metal for bags; locks of metal for vehicles; machine belt fasteners of metal; magnesium; manganese; manhole covers of metal; manifolds of metal for pipelines; masts of metal; materials of metal for funicular railway permanent ways; memorial plates of metal / memorial plaques, of metal; molybdenum; molybdenum iron; money boxes of metal; money clips of common metal; monuments of metal; monuments of metal for tombs; mooring bollards of metal; mooring buoys of metal; mouldings of metal for cornices / moldings of metal for cornices; nails; nickel; nickel-silver; niobium; nozzles of metal; nuts of metal; ores of metal; outdoor blinds of metal; packaging containers of metal; padlocks; paint spraying booths, of metal / booths of metal for spraying paint; palings of metal; partitions of metal; paving blocks of metal; pegs of metal; penstock pipes [of metal]; pillars of metal for buildings; pins [hardware]; pipe muffs of metal; pipework of metal; pitons of metal [mountaineering equipment]; platforms, prefabricated, of metal; plugs of metal / bungs of metal; poles of metal; porches of metal [building]; posts of metal; posts of metal for electric lines / poles of metal, for electric lines; pot hooks of metal; preserving boxes of metal / preserve tins / tin cans; props of metal; pulleys of metal [other than for machines]; pyrophoric metals; rails of metal; railway material of metal; railway points / railway switches; railway sleepers of metal / railroad ties of metal; reels of metal, non-mechanical, for flexible hoses; registration plates, of metal / numberplates, of metal / registration plates of metal; reinforcing materials of metal for building; reinforcing materials of metal for machine belts; reinforcing materials of metal for pipes; reinforcing materials, of metal, for concrete; rings of common metal for keys; rings of metal / stop collars of metal; rivets of metal; rocket launching platforms of metal; rods of metal for brazing; rods of metal for brazing and welding; rods of metal for welding; roller blinds of steel; roof coverings of metal; roof flashing of metal; roofing of metal; rope thimbles of metal; ropes of metal; runners of metal for sliding doors; safes [strong boxes]; safety cashboxes / safety cash boxes; safety chains of metal; scaffolding of metal; screws of metal; scythe handles of metal; sealing caps of metal; sheaf binders of metal; sheet piles of metal / pilings of metal; sheets and plates of metal; shims; shuttering of metal for concrete; shutters of metal; signalling panels, non-luminous and non-mechanical, of metal; signboards of metal; signs, non-luminous and non-mechanical, of metal; signs, non-luminous and non-mechanical, of metal, for roads; silicon iron; sills of metal; silos of metal; silver plated tin alloy; silver solder; skating rinks [structures of metal]; sleeves [metal hardware]; slings of metal for handling loads; soldering wire of metal; spring locks; springs [metal hardware]; spurs; stair treads [steps] of metal; staircases of metal; statues of common metal; steel alloys; steel buildings; steel masts; steel sheets; steel strip / hoop steel; steel tubes / steel pipes; steel wire; steel, unwrought or semi-wrought; steps [ladders] of metal; stirrups of metal; stops of metal; strap-hinges of metal; straps of metal for handling loads / belts of metal for handling loads / straps of metal for load handling; stretchers for iron bands [tension links]; stretchers for metal bands [tension links]; stringers [parts of staircases] of metal; swimming pools [metal structures]; tacks [nails] / brads; tanks of metal; tantalum [metal]; taps for casks [of metal] / taps for casks of metal; telegraph posts of metal; telephone booths of metal / telephone boxes of metal; telpher cables; tension links; tent pegs of metal; thread of metal for tying-up purposes; tile floorings of metal; tiles of metal; tiles of metal for building; tin; tinfoil; tinplate; tinplate packings / tin-plate packings; tins; titanium; titanium iron / ferrotitanium; tombac; tombs of metal; tombstone plaques of metal; tombstone stelae of metal; tool boxes of metal [empty]; tool chests of metal [empty]; tool handles of metal; towel dispensers, fixed, of metal; transport pallets of metal; traps for wild animals; tree protectors of metal; troughs of metal for mixing mortar; tubbing of metal; tubes of metal / pipes of metal; tungsten; tungsten iron; turnstiles, non-automatic; turntables [railways]; valves of metal [other than parts of machines]; vanadium; vats of metal; vaults of metal [burial]; vice benches of metal; vice claws of metal; wainscotting of metal; wall claddings of metal [building]; wall linings of metal [building]; wall plugs of metal; washers of metal; water-pipe valves of metal; water-pipes of metal; weather- or wind- vanes of metal / weather vanes of metal / wind vanes of metal; wheel clamps [boots]; white metal; winding keys of metal; winding spools of metal, non-mechanical, for flexible hoses; window casement bolts; window fasteners of metal; window frames of metal; window pulleys / sash pulleys; window stops of metal / sash fasteners of metal for windows; windows of metal; wire cloth / wire gauze; wire for aerials; wire of common metal; wire of common metal alloys [except fuse wire]; wire rope; wire stretchers [tension links]; works of art of common metal; zinc; zirconium; none of the afore-mentioned goods including bells for animals.
Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal; advertisement columns [not of metal] / advertisement columns, not of metal; agglomerated bagasses of cane [building material]; alabaster; alabaster glass; angle irons, not of metal; aquaria [structures]; aquarium gravel; aquarium sand; arbours [structures]; artificial stone; asbestos cement; asbestos mortar; asphalt; asphalt paving; aviaries, not of metal [structures]; balustrading; beacons, not of metal, non-luminous; beams, not of metal / girders, not of metal; bicycle parking installations, not of metal / installations, not of metal, for parking bicycles; binding agents for making briquettes / binding agents for making stones; binding material for road repair; bitumen; bituminous coatings for roofing; bituminous products for building; blinds [outdoor], not of metal and not of textile; branching pipes, not of metal; bricks; building cardboard [asphalted]; building glass; building materials, not of metal / construction materials, not of metal; building panels, not of metal / building panels not of metal; building paper; building stone; building timber / lumber; buildings, not of metal; buildings, transportable, not of metal; busts of stone, concrete or marble; cabanas not of metal; caissons for construction work under water; calcareous marl; casement windows, not of metal; cask wood / stave wood; ceilings, not of metal; cement for blast furnaces; cement for furnaces; cement posts; cement slabs; cement; chicken-houses, not of metal; chimney cowls, not of metal; chimney pots, not of metal; chimney shafts, not of metal; chimneys [not of metal]; clay; clinker ballast; coal tar; coatings [building materials]; concrete; concrete building elements; cork [compressed]; cornices, not of metal; crash barriers, not of metal, for roads; diving boards, not of metal; door frames, not of metal / door casings, not of metal; door panels, not of metal; doors, not of metal; drain pipes, not of metal / drain pipes not of metal; drain traps [valves], not of metal or plastic; ducts, not of metal, for ventilating and airconditioning installations; earth for bricks; fair huts; felt for building; fences, not of metal; figurines [statuettes] of stone, concrete or marble / statuettes of stone, concrete or marble; fire burrs; fireclay / grog [fired refractory material]; fireproof cement coatings; flashing, not of metal, for building; floating docks, not of metal, for mooring boats; floor tiles, not of metal / tile floorings, not of metal; floors, not of metal; folding doors, not of metal; foundry molds [moulds], not of metal; framework, not of metal, for building / framework for building, not of metal; furrings of wood; gates, not of metal; geotextiles; glass granules for road marking / glass granules for marking out roads; granite; gravel; gravestone slabs, not of metal / tombstone plaques, not of metal; gravestones / tombstones; greenhouse frames, not of metal / horticultural frames, not of metal; greenhouses, transportable, not of metal; gutter pipes, not of metal / gutter pipes not of metal; gutters, not of metal; gypsum; hips for roofing; huts; insect screens not of metal; insulating glass [building]; jalousies, not of metal; joists, not of metal; laths, not of metal; latticework, not of metal / trellises, not of metal; lengthening pieces, not of metal, for chimneys; letter boxes of masonry; lime; limestone / calcareous stone; linings, not of metal, for building / cladding, not of metal, for building / coverings, not of metal, for building / facings, not of metal, for building / surfacings, not of metal, for building; lintels, not of metal; luminous paving / lighting slabs; macadam; magnesia cement; manhole covers, not of metal; mantlepieces; manufactured timber; marble; masts [poles], not of metal; materials for making and coating roads; memorial plaques, not of metal; monuments, not of metal; mooring bollards, not of metal; mortar for building / grout; mosaics for building; mouldable wood / moldable wood; mouldings, not of metal, for building / moldings, not of metal, for building; mouldings, not of metal, for cornices / moldings, not of metal, for cornices; non-luminous and non-mechanical signs, not of metal; olivine for building; paint spraying booths, not of metal; palings, not of metal / palisading, not of metal; paperboard for building / building cardboard; parquet floor boards; parquet flooring; partitions, not of metal; paving blocks, not of metal; paving slabs, not of metal / slabs, not of metal; penstock pipes [not of metal]; perches; pigsties; pilings, not of metal / sheet piles, not of metal; pitch; planks [wood for building]; plaster; plate glass [windows], for building; platforms, prefabricated, not of metal; plywood; porches, not of metal, for building; posts, not of metal; posts, not of metal, for electric power lines / poles, not of metal, for electric power lines; potters’ clay; potters’ clay [raw material]; props, not of metal; railway sleepers, not of metal / railroad ties, not of metal; raw chalk; reeds, for building; refractory materials; reinforcing materials, not of metal, for building; rigid pipes not of metal [building]; road coating materials; road marking sheets and strips of synthetic material; rock crystal / quartz; rocket launching platforms, not of metal; roof coverings, not of metal; roof flashing, not of metal; roofing slates; roofing, not of metal; rubble; safety glass; sand [except foundry sand]; sandstone for building; sandstone tubes; sawn timber; scaffolding, not of metal; scantlings [carpentry]; schists; shingle; shuttering, not of metal, for concrete; shutters, not of metal; signalling panels, non-luminous and non-mechanical, not of metal; signs, non-luminous and non-mechanical, not of metal, for roads; silica [quartz]; sills, not of metal; silos, not of metal; silver sand; skating rinks [structures, not of metal]; slag [building material]; slag stone / clinker stone; slate; slate powder; stables; stained-glass windows; staircases, not of metal; stair-treads [steps], not of metal; statues of stone, concrete or marble; stone; stringers [parts of staircases], not of metal; swimming pools [structures, not of metal]; tanks of masonry; tar; tarred strips, for building; telegraph posts, not of metal; telephone booths, not of metal / telephone boxes, not of metal; terra cotta; tiles, not of metal / pantiles; tiles, not of metal, for building / wall tiles, not of metal, for building; tomb or grave enclosures, not of metal / grave or tomb enclosures, not of metal; tombs [monuments], not of metal; tombs, not of metal; tombstone stelae, not of metal; tufa; vaults, not of metal [burial]; veneer wood; vinyl siding; wainscotting, not of metal; wall claddings, not of metal, for building; wall linings, not of metal, for building; water-pipe valves, not of metal or plastic; water-pipes, not of metal / water-pipes not of metal; window frames, not of metal; window glass [except glass for vehicle windows]; window glass, for building; windows, not of metal; wood for making household utensils / worked timber; wood panelling / floor boards; wood paving; wood pulp board, for building; wood veneers / veneers; wood, semi-worked; works of art of stone, concrete or marble; works of stonemasonry; xylolith; none of the afore-mentioned goods including bird baths [structures, not of metal].
The contested goods are the following:
Class 6: Blackout blinds [outdoor] of metal; Blinds of metal; Mullions of metal; Doors of metal for buildings; Door locks; Door handles of metal; Sun louvres of metal for buildings; Door panels of metal; Roller doors (Metal -) having insulating properties; Window hinges of metal; Roller blinds of steel; Metal window jambs; Aluminium doors; Window guards of metal; Door sections of metal; Knobs of metal; Outer doors of metal; Glazing beads of metal; Safety doors of metal; Window pulleys; Metal locks for windows; Metal bolts for locking doors; Sash pulleys of metal; Cremone bolts of metal for windows; Aluminium windows; Metal components for doors; Door openers, non-electric; Door closers, non-electric; Door hinges of metal; Garage doors of metal; Metal window trim; Latches (Metal -) being fittings for doors; Louvre window assemblies (Metal -); Metal door frames; Roller doors of metal; Wall windows of metal; Window blinds [outdoor] of metal; Fire resistant doors of metal; Latches of metal; Door fittings, of metal; Door fasteners of metal; Window sashes of metal; Door pulls of metal; Window facades of metal; Ventilation grilles of metal for fitting in doors; Outdoor blinds of metal; Sills of metal; Shutter doors of metal; Hinges for doors and windows (Metal -); Metal window pulleys; Fittings of metal for windows; Window protection devices of metal; Metal door units; Insulating doors of metal; Iron gates; Metal window frames; Window furniture of metal; Safety fittings of metal for doors; Metal roller shutter doors for security purposes; Window surrounds of metal; Grids of metal; Metal sash lifts; Metal vertical blinds [external]; Window sashes of aluminium; Windows of metal; Metal window frames; Door friction stays of metal; Metal door trim; Metallic frames for sliding doors; Handles of metal for windows; Door jambs of metal; Latches (Metal -) being fittings for windows; Aluminium residential doors; Metal roll shutters; Doors and windows of metal; Window seals of metal; Catches (Window -) of metal; Door knobs of common metal; Metal rolling window shutters; Self-adhesive lead strips for making a pattern on windows; Sash window pulls of metal; Gates of metal; Ironwork for windows; Door pushes of metal; Ventilation grilles of metal for fitting in windows; Architectural louvres of metal; Runners of metal for sliding doors; Metal doors; Metallic insect screens for doors; Roller shades [outdoor] of metal; Doors of metal for indoor use; Sliding doors of metal for buildings; Rollers (Metal -) for sliding windows; Metal exterior roller blinds for guiding light; Ironwork for doors.
Class 19: Doors made of plastic for buildings; Window glass, except glass for vehicle windows; Horizontal slatted blinds [outdoor], not of metal or textile; Fireproof doors, not of metal; Doors (Non-metallic -) for use in garages; Glazing units (Non-metallic framed -); Non-metal windows; Window guards (Non-metallic -); Plastic window frames; Door casings, not of metal; Roller blinds for external use [not of metal or textile]; Thermal blinds (non-metallic -) [slatted outdoor]; Insulating doors of non-metallic materials; Sliding doors, not of metal; Security door frames (Non-metallic -) for buildings; Cladding (Non-metallic -) for windows; Door casings, not of metal; Glass in sheet form for use in windows; Shutter doors (Non-metallic -); Window facades (non-metallic); Glass panels; Non-metal gates; Glass doors; Jalousies, not of metal; Glass elements for windows; Non-metal window frames; Frames (Non-metallic -) for glazed doors; Door casings, not of metal; Flyscreens (non-metallic); Glass panels for doors; Non-metal doors; External shutters (Non-metallic -) for windows; Garage doors (Non-metallic -) for domestic use; Insect screens (Non-metallic -) for windows; Glass in sheet form for use in doors; Non-metal window screens; Roller doors (Non-metallic -) having insulating properties; Door panels, not of metal; Roller shades [outdoor] of plastic; Insect screens, not of metal; Vertically raisable rolling doors [non-metallic]; Frames (Non-metallic -) for skylights; Non-metal window jambs; Insect screens (Non-metallic -) for doors; Security shutters of non-metallic materials; Non-metal exterior blinds; Latticework, not of metal.
Contested goods in Class 6
All the contested goods are included in one of the following general categories for which the earlier mark is registered: metal building materials; ironmongery, small items of metal hardware; goods of common metal not included in other classes; therefore, all the contested goods are identical to the opponent’s goods.
Contested goods in Class 19
All the contested goods are included in the general category building materials (non-metallic), for which the earlier mark is registered and, therefore, all the contested goods are identical to the opponent’s goods.
- 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 directed at the public at large and at business customers with specific professional knowledge or expertise.
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. For example, it will be lower for handles of metal for windows, which can be purchased by the general public for carrying out repairs and are not expensive, and it will be higher for fireproof doors, which are usually purchased by specialists and require due care in their acquisition and installation.
- The signs
BASF | |
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 opponent’s mark is a word mark and, therefore, it lacks any dominant elements. The word ‘BASF’, which has no meaning in the relevant territories, is distinctive for the goods at issue.
The contested mark is composed of the word ‘BASE’ in black and green letters; the first two letters (‘BA*’) are black and the last two letters (*SE) are green. The word ‘BASE’ has a meaning in some of the relevant languages and some consumers, for example English, German, French, Italian and Spanish speakers, will therefore recognise it as meaning, inter alia, ‘the lowest part or edge of something, especially the part on which it rests or is supported’ (information extracted from the Oxford Dictionaries at https://en.oxforddictionaries.com/definition/us/base). Other consumers, such as Latvian and Dutch speakers, will also be able to understand the meaning of this word because of the similarity of the equivalent word in their language (‘bāze’ in Latvian and ‘basis’ in Dutch). For other consumers, for example Lithuanian, Bulgarian and Finnish speakers, the word is meaningless.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division will evaluate the risk of confusion in relation to the part of the public that does not understand the word ‘BASE’.
Visually, the signs coincide in the three letters ‘BAS*’ and differ in their last letters (‘*F’ in the earlier trade mark and ‘*E’ in the contested mark) and in the colours of the contested sign. Taking into account the fact that the marks consist of four letters, of which three are identical and placed at the beginning of the marks (the part of the signs that will catch the primary attention of the reader and remain longer in the memory), and considering that the figurative elements consist only of the use of two colours, the degree of visual similarity is average.
Aurally, three of the four letters of the marks, ‘BAS*’, are in the same order and will be pronounced identically. However, the earlier mark will be pronounced in one syllable whereas the contested mark will be pronounced in two. Therefore, the degree of aural similarity is average.
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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
In the present case, the goods are identical and the relevant public is made up of average consumers and specialists. The degree of attention varies from average to high. However, 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).
The marks are visually and aurally similar to an average degree because they coincide in three out of their four letters, the identical letters are in the same order and the differing letters are at the ends of the signs. Therefore, even taking into account the use of different colours to separate the elements ‘BA’ and ‘SE’ in the contested sign, and also taking into account that, conceptually, in the relevant territories, the signs have no meaning and, therefore, this aspect does not help to differentiate the marks, there is a risk that consumers might think that the goods originated from the same undertaking or economically linked undertakings. In the present case, it must also be borne in mind that the goods are identical, and 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).
Considering all the above, there is a likelihood of confusion on the part of the Lithuanian-, Bulgarian- and Finnish-speaking parts 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 fully successful and the contested application must be rejected entirely.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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
Angela DI BLASIO | María Belén IBARRA DE DIEGO | Ana MUÑIZ RODRÍGUEZ |
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.