evolution ultra | Decision 2467960 - VIRAG S.R.L v. CEMEX RESEARCH GROUP AG

Date Published: Sep 28, 2017

OPPOSITION No B 2 467 960

VIRAG S.R.L., Via della Moscova 46/9, 20121 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C.S.R.L., Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Cemex Research Group AG, Römerstr. 13, 2555 Brügg bei Biel, Switzerland (applicant), represented by Clarke Modet y Cia. S.L., Rambla de Méndez Núñez 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 467 960 is partially upheld, namely for the following contested goods:

Class 19: Building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen; non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal.

2. European Union trade mark application No 13 312 475 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 312 475. The opposition is based on European Union trade mark registrations No 2 533 230 ‘EVOLUTION’, No 6 819 791 and No 9 797 879 . The opponent invoked Article 8(1)(a) and (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 9 797 879.

a) The goods and services

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

Class 17: Thermal insulating or soundproofing materials for ceilings, walls and floors; expanded polystyrene and other materials for use in the insulation of walls, ceilings and floors of buildings; elastomeric sealants for use in tiling or with tiles or in plugging and filling joints and gaps; flexible sealing and jointing compounds for use in tiling, or for use in mounting and/or fixing materials onto walls, floors and other surfaces; insulating tiles, not of metal; gutta-percha; caoutchouc, balata and substitutes; goods made of gutta-percha and of rubber; foils; sheets and rods of plastics; mica and mica products; packing, stopping and insulating materials; flexible pipes not of metal; electric, thermal and acoustic insulators; insulating fabrics.

Class 19: Floors and tiles (non-metallic), building tiles, not of metal; vinyl flooring; floors (not of metal); floor coverings, parquet flooring, laminated flooring, laminated floorboards and profile strips for floor coverings, all made from coated and uncoated boards, of wood, wood materials and recycled wood substitute materials; ceramic, earthenware, enamel, clay, and wood floor, wall and ceiling tiles; building materials; natural and artificial stone; bricks; tiles, roof tiles; cement; lime; mortar; plaster and gravel; earthenware and cement tubes; road building materials; asphalt; pitch and bitumen; mobile homes; monuments of stone; chimneys; semi-worked timber; building timber; beams; planks; panels; plywood; building glass; sheets of glass; tiles of glass.

Class 27: Carpets, rugs, mats and matting, linoleum; materials for covering floors; wall hangings (non-textile); wallpapers; goods for covering walls; oilcloth.

The contested goods and services are the following:

Class 37: Construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying, plastering; remodelling of buildings.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 19

The contested building materials (non-metallic), namely cement, concrete, screed, stone, lime, gravel, gypsum, floor tiles, partitioning, bricks; asphalt, pitch and bitumen are included in the broad category of the opponent’s building materials. Therefore, these goods are identical.

The contested non-metallic transportable buildings, namely modules, panels, precast columns and monuments, not of metal are highly similar to the opponent’s mobile homes. They have the same nature, distribution channels, sales outlets, producers, method of use and end users. They are in competition with each other and complementary to each other.

Contested services in Class 37

The contested construction and repair of buildings; consultancy relating to building construction and to the use of materials for building construction (consultancy or information relating to building construction); road paving, installation of floors and benches; demolition and bricklaying, plastering; remodelling of buildings are not similar to the opponent’s goods. Although when providing construction and repair services or other installation services the provider does indeed use various materials such as the opponent’s goods in Classes 17, 19 and 27, it is not customary in trade for construction companies to manufacture specific goods used in the construction process. It is generally known that the materials used in building construction and in connection with repair and installation or demolition services have a completely different origin from those services. Therefore, the contested services are considered dissimilar to all the opponent’s goods.

b) 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 highly similar are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to higher than average, depending on the nature, price and frequency of purchase of the products in question.

c) The signs

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 earlier mark is a figurative sign composed of two words, ‘evolution’ and ‘panel’. The word ‘evolution’ is depicted in rather standard lower case italic letters and the word ‘panel’ is written in slightly stylised lower case bold letters. Furthermore, the earlier mark contains some figurative elements, that is, a rhombus containing a letter ‘e’ (left top part of the mark), a rectangle containing seven dots of the same size in an evenly spaced row (bottom part of the mark), and three semi-circular lines symbolising a signal (right part of the mark).

The contested sign is a figurative mark consisting of the verbal elements ‘evolution’ and ‘ultra’, written in rather standard lower case italic letters, except for the letters ‘t’ and ‘i’ in the word ‘evolution, which are slightly stylised. In addition, the contested sign contains a figurative device, namely two curved lines located just beneath the letter ‘e’ in the word ‘evolution’.

The word ‘evolution’, present in both signs, and the other verbal elements, ‘panel’ (earlier mark) and ‘ultra’ (contested sign), will be understood by English-speaking consumers. The word ‘evolution’ means ‘a gradual process of change and development’ (information extracted from Cambridge Dictionary on 03/05/2017 at www.dictionary.cambridge.org/dictionary/english/evolution), ‘panel’ is ‘a flat, usually rectangular part, or piece of wood, metal, cloth, etc., that fits into or onto something larger’ (information extracted from Collins Dictionary on 03/05/2017 at www.dictionary.cambridge.org/dictionary/english/panel) and ‘ultra’ means ‘extreme or extremely’ (information extracted from Cambridge Dictionary on 03/05/2017 at www.dictionary.cambridge.org/dictionary/english/ultra?a=british).

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 common element ‘evolution’ is 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 the public in the United Kingdom, Ireland and Malta.

The contested sign could be understood by the public in the relevant territory as referring to an extreme evolution – an evolution being ‘a process of gradual development in a particular situation or thing over a period of time’ (in the current case made intentionally).

The word ‘evolution’ has no relation to the goods in question and is therefore distinctive. On the other hand, the other verbal elements of the signs under comparison, ‘panel’ and ‘ultra’, are distinctive to a low degree, as they may be perceived as alluding to the goods in question and their allegedly extreme quality. Furthermore, the figurative elements in the contested sign, described above, are also distinctive to a low degree, as they are rather decorative.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The verbal element ‘EVOLUTION’ in the contested sign could be considered more dominant (visually eye-catching) than the other elements, as it is depicted in a slightly larger font than the other element.

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).

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.

Visually, the signs coincide in the word ‘evolution’, which is distinctive. However, they differ in the abovementioned additional verbal elements and some figurative devices, which have a low degree of distinctiveness or have a decorative nature.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛evolution’, present identically in both signs. As explained above, this coinciding element is distinctive. The pronunciation differs in the sound of the words ‘panel’ in the earlier mark and ‘ultra’ in the contested sign. These words are, however, distinctive to a low degree.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The concept of the word ‘evolution’ is clearly perceptible in both marks.

Therefore, as the signs will be associated with similar meanings, they are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 its ‘market share and the goodwill achieved in the course of the years are potentially impaired’ but did not file any evidence in order to prove such a claim concerning the goodwill obtained.

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.

e) 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 goods/services covered are from the same or economically linked undertakings.

The contested goods are identical or similar to a high degree and the contested services are dissimilar to the opponent’s goods, and they target the public at large and professionals, whose degree of attention may vary from average to higher than average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs have an average degree of visual, aural and conceptual similarity because they have in common the distinctive element ‘evolution’. Furthermore, this coinciding element constitutes the first verbal element of the signs at issue. The distinctive element of the earlier mark is wholly included in the beginning of the contested sign. The differences between the signs lie in their figurative elements and additional verbal elements, which are distinctive to a low degree.

The word ‘ULTRA’, which was found to have a low degree of distinctiveness, may be perceived by the public in the relevant territory as a verbal supplement to the word ‘EVOLUTION’. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The figurative elements in the contested sign, namely two curved lines, make the word ‘EVOLUTION’ more striking. They are merely decorative and, as such, they will not be remembered or perceived as a badge of origin by the relevant public.

The Opposition Division is of the opinion that the visual, aural and conceptual similarities caused by the coinciding element ‘evolution’ outweigh the differences between the marks under comparison, and may induce consumers to believe that the contested goods, which are identical or similar to a high degree to those of the opponent, come from the same undertaking or from economically-linked undertakings. Even highly attentive consumers may believe that the contested sign designates a particular line of goods.

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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to a high degree to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services under comparison are obviously not identical.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 2 533 230 for the word mark ‘EVOLUTION’,
European Union trade mark registration No 6 819 791 for the figurative mark .

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

It remains necessary to consider the opponent’s argument that the earlier trade mark belongs to a ‘family of marks’. In its view, ‘protection is strengthened’. Furthermore, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied. The Opposition Division will start by examining the first condition and, if it is fulfilled, will proceed to examine the second one.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’ (i.e. at least three marks).

In the present case, the opponent has referred to the following list of EUTM registrations that it holds:

EUTM No 2 533 230 ‘EVOLUTION’ (word mark), for goods in Classes 19 and 27.
EUTM No 6 819 791 (figurative mark), for goods in Classes 17 and 19.
EUTM No 9 797 879 (figurative mark), for goods in Classes 17, 19 and 27.

The Opposition Division will assume that the opponent is indeed the owner of these registrations. Now it must be decided whether the opponent uses the marks forming the alleged family in the marketplace to such an extent that the relevant public has become familiar with this family of marks as designating the goods of a particular undertaking.

After assessing the evidence, it is concluded that the opponent has failed to prove that it uses a family of ‘EVOLUTION’ marks. Although the opponent holds various trade mark registrations containing the word ‘EVOLUTION’, the evidence filed to prove use of these marks is lacking, as there is no evidence concerning European Union trade mark No 6 819 791 .

Considering all the above, the opponent’s argument concerning its family of marks must be set aside.

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

Loreto URRACA

Michal KRUK

Plamen IVANOV

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.

evolution ultra | Decision 2467960 - VIRAG S.R.L v. CEMEX RESEARCH GROUP AG

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