CEWOOD | Decision 2695925
Date Published: Sep 28, 2017
OPPOSITION No B 2 695 925
Oceplast, Zone Industrielle des Blussières, 85190 Aizenay, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)
a g a i n s t
Aconsult, Vienības gatve 186 A-71, Rīga, 1058, Latvia (applicant), represented by Zvērinātu Advokātu Birojs ‘Vilgerts’, Elizabetes iela 33, Rīga, 1010, Latvia (professional representative).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 695 925 is partially upheld, namely for the following contested goods:
Class 17: Fibre board for use as insulation.
Class 19: Building materials, not of metal.
Class 27: Wall and ceiling coverings.
2. European Union trade mark application No 15 055 254 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 055 254. The opposition is based on French trade mark registration No 4 210 139. 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 wording of the opponent’s list of goods in the opposition notice is different from its wording in the translation from French to English sent to the Office on 03/05/2016. Therefore, the Office will take into account the wording of the translation, and consequently the goods on which the opposition is based are the following:
Class 6: Building materials of metal; metal building components; buildings, transportable, of metal; partitions, ceilings, tiles, metal panels and wall cladding; metal trellises; railings of metal; fences of metal.
Class 19: Building materials, not of metal; non-metallic building elements; buildings, transportable, not of metal; partitions, ceilings, tiles, panels and non-metallic wall cladding; non-metal claustras; railings, not of metal; fences, not of metal; non-metallic tiles for terrace, concrete slabs to terrace, floor tiles for terrace.
Class 20: Furniture, pieces of furniture, screens (furniture), freestanding partitions [furniture], planters (furniture).
The contested goods are the following:
Class 17: Fibre board for use as insulation.
Class 19: Building materials, not of metal.
Class 22: Padding and stuffing materials.
Class 27: Wall and ceiling coverings.
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 17
The contested fibre board for use as insulation is highly similar to the opponent’s building materials, not of metal in Class 19, as they have the same purpose (to obtain optimal thermal and acoustic insulation) and nature (belonging to the field of construction). They can have the same producers, end users and distribution channels.
Contested goods in Class 19
Building materials, not of metal are identically contained in both lists of goods.
Contested goods in Class 22
The contested padding and stuffing materials are intended for sale to manufacturers for further processing before becoming components of finished goods. Even though such finished goods could be found in the opponent’s goods, this is not enough to justify a finding of similarity, as they serve completely different purposes, are not usually manufactured by the same undertakings and target different consumers. Furthermore, their methods of use are different, they have different distribution channels and sales outlets, and they are neither interchangeable nor in competition with each other. Therefore, they are dissimilar to the opponent’s goods.
Contested goods in Class 27
The contested wall coverings are similar to the opponent’s non-metallic wall cladding in Class 19, as they consist of different materials used to cover the floor and walls during the construction or renovation of buildings or houses. They have the same purpose and, therefore, they are in competition. They can have the same end users and distribution channels.
The contested ceiling coverings are similar to the opponent’s ceilings non-metallic cladding in Class 19, as they consist of different materials used to cover the floor and walls during the construction or renovation of buildings or houses. They have the same purpose and, therefore, they are in competition. They can have the same end users and distribution channels.
- 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 and similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of building construction and/or civil engineering. The degree of attention may vary from average to higher than average, depending on the price of the goods, their nature (specialised or not) and the frequency of their purchase.
- The signs
OCEWOOD | CEWOOD |
Earlier trade mark | Contested sign |
The relevant territory is France.
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).
Visually and aurally, the signs coincide in the sequence of letters ‘CEWOOD’, constituting the entirety of the contested sign and present identically in the earlier mark. They differ in the additional first letter, ‘O’, of the earlier mark. Therefore, the signs are visually and aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. As the relevant public will not understand the non-basic English word ‘WOOD’ incorporated in both signs, there is no reason why this public would break down the signs into separate elements. 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
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the good/services covered are from the same or economically linked undertakings.
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).
As concluded above, the relevant goods are partly identical, partly similar to different degrees and partly dissimilar. They target the public at large and business customers with specific professional knowledge or expertise, whose degree of attention varies from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree because the contested sign is entirely included in the earlier mark and they differ in only one additional letter in the earlier mark.
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). Furthermore, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56; 06/09/2010, R 1419/2009-4, Hasi).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 4 210 139. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark.
The rest of the contested goods 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 goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Katarzyna ZANIECKA | Alexandra APOSTOLAKIS | Martina GALLE |
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.