FIX FLEX | Decision 2755224
Date Published: Oct 1, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 755 224
Selena Iberia S.L.U., Marie Curie, 19 – Planta 6.1, 28521 Rivas (Madrid), Spain
(opponent), represented by Anna Rokicka, ul. Żeglarska 23, 53-213 Wrocław, Poland
(professional representative)
a g a i n s t
Waridelta s.r.o., Úvalno 353, 793 91 Úvalno, Czech Republic (applicant), represented
by Hák, Janeček & Švestka, U Průhonu 5, 170 00 Praha 7, Czech Republic
(professional representative).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 755 224 is upheld for all the contested goods, namely
Class 1: Chemicals used in industry and construction; Adhesives, Binding-
Agents, Silicones and sealants included in this class; Sealants and silicones for
protection against fire; Adhesives used in industry and construction;
Agglutinants for concrete and adhesives, included in this class; Adhesive
cement substances for building.
Class 16: Glues for office use; Adhesives for stationery or household purposes.
Class 17: Polyurethane-based, acrylic-based and silicone-based sealants;
Joint packings; Gasket material and stuffing materials; Sealants for joints.
Class 19: Building materials (non-metallic); Connector materials, not of metal;
Other building materials, not of metal; Building materials for flooring work,
including levelling materials, finishing trims, not of metal; Masonry agglutinates.
2. European Union trade mark application No 15 410 129 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 410 129 ‘FIX FLEX’, namely against some of the goods in
Classes 1, 17 and 19 and all the goods in Class 16. The opposition is based on
Spanish trade mark registrations No 138 919 and No 2 851 800, both for the word
mark ‘FIX’. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 755 224 page: 2 of 8
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.
a) The goods
The goods on which the opposition is based are the following:
ES No 138 919
Class 1: Adhesives of all classes, such as liquid rubber, glue, white pasta and similar
products; putties of rubber, glycerin, for leather, footwear, tires, applied in hot and
cold form and, in general, all kinds of sealants fillers for home and industry.
Class 16: Adhesives of all classes, such as liquid rubber, glue, white pasta and
similar products.
ES No 2 851 800
Class 17: Sealant compounds for joints, including those made of metal.
Class 19: Sealant mastics for building purposes.
The contested goods are the following:
Class 1: Chemicals used in industry and construction; Adhesives, Binding-Agents,
Silicones and sealants included in this class; Sealants and silicones for protection
against fire; Adhesives used in industry and construction; Agglutinants for concrete
and adhesives, included in this class; Adhesive cement substances for building.
Class 16: Glues for office use; Adhesives for stationery or household purposes.
Class 17: Polyurethane-based, acrylic-based and silicone-based sealants; Joint
packings; Gasket material and stuffing materials; Sealants for joints.
Class 19: Building materials (non-metallic); Connector materials, not of metal; Other
building materials, not of metal; Building materials for flooring work, including
levelling materials, finishing trims, not of metal; Masonry agglutinates.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘such as’ and ‘including’, used in the parties’ lists of goods, indicate that
the specific goods are only examples of items included in the category and that
Decision on Opposition No B 2 755 224 page: 3 of 8
protection is not restricted to them. In other words, it introduces a non-exhaustive list
of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 1
The contested chemicals used in industry and construction include, as a broader
category, or overlap with, the opponent’s adhesives of all classes, such as liquid
rubber, glue, white pasta and similar products in Class 1. Since the Opposition
Division cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested adhesives; adhesives, included in this class are identical to the
opponent’s adhesives of all classes, such as liquid rubber, glue, white pasta and
similar products since the specific goods are only examples of items included in the
opponent’s category adhesives of all classes.
The contested adhesives used in industry and construction; adhesive cement
substances for building are included in the broad category of, or overlap with, the
opponent’s adhesives of all classes, such as liquid rubber, glue, white pasta and
similar products. Therefore, they are identical.
The contested sealants included in this class; sealants for protection against fire are
included in the opponent’s all kinds of sealants fillers for home and industry.
Therefore, they are identical.
The contested agglutinants for concrete, included in this class; binding-agents and
silicones included in this class; silicones for protection against fire are similar to the
opponent’s adhesives of all classes, such as liquid rubber, glue, white pasta and
similar products. These goods can have the same purposes and methods of use and
they coincide in their manufacturers, distribution channels, outlets and consumers.
Contested goods in Class 16
The contested glues for office use; adhesives for stationery or household purposes
are included in the broad category of, or overlap with, the opponent’s adhesives of all
classes, such as liquid rubber, glue, white pasta and similar products. Therefore, they
are identical.
Contested goods in Class 17
The contested polyurethane-based, acrylic-based and silicone-based sealants
overlap with the opponent’s sealant compounds for joints, including those made of
metal. Therefore, they are identical.
Decision on Opposition No B 2 755 224 page: 4 of 8
The contested sealants for joints are identical to the opponent’s sealant compounds
for joints, including those made of metals since they designate the same goods.
Gasket material is a piece of rubber, asbestos, metal, etc. placed at a joint to make it
leakproof. Therefore, the contested gasket material includes, as a broader category,
or overlaps with, the opponent’s sealant compounds for joints, including those made
of metal. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
The contested joint packings are similar to the opponent’s sealant compounds for
joints, including those made of metal. These goods are complementary, they have
the same distribution channels, outlets and manufacturers and they target the same
consumers.
The contested stuffing materials may be used for building purposes, for instance for
insulation. They are similar to the opponent’s sealant compounds for joints, including
those made of metal to the extent that these goods have the same distribution
channels, outlets and manufacturers and they target the same consumers.
Contested goods in Class 19
The contested building materials (non-metallic); other building materials, not of metal;
building materials for flooring work, including levelling materials, finishing trims, not of
metal include, as broader categories, or overlap with, the opponent’s sealant mastics
for building purposes. Therefore, they are identical.
The contested connector materials, not of metal; masonry agglutinates are similar to
the opponent’s sealant mastics for building purposes. All these goods are used for
building purposes, they coincide in their distribution channels, outlets, manufacturers
and they target the same consumers (professionals of the building sector and/or DIY
enthusiasts).
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 and services found to be identical or similar 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.
c) The signs
FIX FIX FLEX
Earlier trade mark Contested sign
Decision on Opposition No B 2 755 224 page: 5 of 8
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).
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
The coinciding element ‘FIX’ is not devoid of distinctive character, contrary to the
applicant’s allegations. Indeed, the word ‘FIX’ does not exist in the Spanish language.
Even if some consumers may guess that ‘FIX’ is the equivalent of ‘fijar’, the word
‘FIX’ will still be perceived as a fanciful term. This is also supported by the fact that a
final ‘X’ is not commonly used in Spanish. Therefore, the coinciding element ‘FIX’ is
distinctive.
However, the element ‘FLEX’ of the contested sign will be associated by the public
with ‘flexible’, ‘flexibility’ due to its similarity with the Spanish words ‘flexible’,
‘flexibilidad’. In relation to the goods (building materials, sealants, adhesives,
silicones, joints, etc.), this element is weak since it indicates that the goods are
flexible objects or material that can be bent easily or that can be easily adjustable.
Visually, the signs coincide in the distinctive element ‘FIX’ which is the sole element
of the earlier mark and the first element of the contested sign. The earlier mark is
entirely included at the beginning of the contested sign as an independent element.
This is particularly relevant since 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 signs differ in the weak element
‘FLEX’ of the contested sign. Therefore, the signs are visually similar to an average
degree.
Aurally, the pronunciation of the signs coincides in the syllable /fix/, present identically
in both signs and differs in the syllable /flex/ of the contested sign, which has no
counterpart in the earlier sign. Given that the coinciding distinctive element is placed at
the beginning of the contested sign where the attention of the public is focussed, 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. Since one of the signs (the earlier mark) will not be
associated with any meaning, the signs are not conceptually similar, albeit the concept
conveyed by the element ‘FLEX’ is weak.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 755 224 page: 6 of 8
d) Distinctiveness of the earlier marks
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 marks are particularly distinctive by
virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
their distinctiveness per se.
In its observations, the applicant argues that the earlier trade marks are devoid of
any distinctiveness since the word ‘fix’ describes gluing, attaching and/or adhering.
Furthermore, it argues that there are many trade marks registered by EUIPO that
include the word element ‘FIX’.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of data concerning a register only, it cannot
be assumed that all such trade marks have been effectively used. It follows that the
evidence filed does not demonstrate that consumers have been exposed to
widespread use of, and have become accustomed to, trade marks that include the
element ‘FIX’.
Furthermore, the earlier Spanish marks are not devoid of distinctive character.
Indeed, as explained above, the word ‘FIX’ does not exist in the Spanish language
and it will be perceived as a fanciful term (17/06/2013, R 2343/2011-2, ‘FIX/Montafix’,
§ 40). Since the earlier trade marks have no meaning for any of the goods in
question from the perspective of the public in the relevant territory, the distinctiveness
of the earlier marks must be seen as normal.
Under these circumstances, the applicant’s claims must be set aside.
e) Global assessment, other arguments and conclusion
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).
The goods are identical or similar. The earlier marks have an average degree of
distinctiveness.
The signs are visually and aurally similar to an average degree on account of the
coinciding, distinctive, element ‘FIX’, which is also the initial element of the contested
sign. Therefore, the Opposition Division considers that the difference lying in the
additional weak element ‘FLEX’ of the contested sign is not sufficient to counteract
the similarities existing between the signs.
Decision on Opposition No B 2 755 224 page: 7 of 8
In addition, 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. In the present case, 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public,
even when it displays a high degree of attention, without it being necessary to
consider the opponent’s arguments based on its family of marks.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registrations. 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
Sandra IBANEZ
Frédérique SULPICE
Pedro JURADO
MONTEJANO
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.
Decision on Opposition No B 2 755 224 page: 8 of 8
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.