Gecomat | Decision 2726555 - GEOMAT s.r.o. v. ORIGINAL LIFE CO., LTD.
Date Published: Sep 28, 2017
OPPOSITION No B 2 726 555
Geomat s.r.o., Pražákova 1008/69, 639 00 Brno, Czech Republic (opponent), represented by Dobroslav Musil, Zábrdovická 801/11, 615 00 Brno, Czech Republic (professional representative)
a g a i n s t
Original Life Co., Ltd., Rm. 9 A, No. 357, Yongchun E. Rd., Nantun Dist., Taichung City 40855, Taiwan (applicant), represented by LangPatent Anwaltskanzlei, Rosenheimer Str. 139, 81671 München, Germany (professional representative).
On 18/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 726 555 is upheld for all the contested goods, namely:
Class 19: Felt for building; geotextiles; trellises, not of metal; latticework, not of metal; concrete building elements; binding material for road repair; building panels, not of metal.
2. European Union trade mark application No 15 243 967 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 15 243 967, namely against some of the goods in Class 19. The opposition is based on Czech trade mark registration No 281 465. 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 and services
The goods and services on which the opposition is based are the following:
Class 19: Building materials not of metal; geosynthetic products, mainly geomatts, geogrids and geotextiles.
Class 42: Consultancy and project services in the field of building relating to applying of geosynthetic products.
The contested goods are the following:
Class 19: Felt for building; geotextiles; trellises, not of metal; latticework, not of metal; concrete building elements; binding material for road repair; building panels, not of metal.
The contested felt for building; geotextiles; trellises, not of metal; latticework, not of metal; concrete building elements; binding material for road repair; building panels, not of metal are included in the broad category of the opponent’s building materials not of metal. Therefore, they are identical.
- 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 general public and business customers with specific professional knowledge or expertise.
The degree of attention of the relevant public is considered, on the whole, average, as the goods at issue are not particularly expensive materials and they do not imply a high degree of purchase involvement.
- The signs
Gecomat | |
Earlier trade mark | Contested sign |
The relevant territory is the Czech Republic.
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 comprises the word ‘GEOMAT’, depicted in a fairly standard typeface. Its figurative element is a fanciful arrangement of three grey triangles to the left of the verbal element.
On the one hand, when perceiving the word ‘GEOMAT’, a part of the relevant public may recognise the prefix ‘GEO’ as pointing to a kind of building materials, as it is used in Czech expressions such as ‘geosyntetické výrobky’ (geosynthetic products) and ‘geomřiže a geotextilie’ (geogrids and geotextiles). On the other hand, another part of the public will not discern this prefix and will perceive the earlier mark’s verbal element in its entirety without artificially dissecting it. For that part of the public, the word ‘GEOMAT’ as a whole has no meaning and is distinctive to an average degree.
The assessment will proceed on this basis.
The contested sign consists of the word ‘Gecomat’, which, taken as a whole, has no clear meaning for the relevant public and is distinctive to an average degree.
Conceptually, neither of the signs has a clear 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.
In the earlier mark, given the rather decorative role of the figurative element and its subordinate depiction (in terms of its smaller size and fainter colour), the verbal element is the most distinctive and dominant component. Moreover, 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).
Visually, the signs coincide in the sequence of letters ‘GE*OMAT’. The contested sign differs in the letter ‘C’ appearing in the middle. The earlier mark differs in its figurative element and the almost imperceptible stylisation of the verbal element, both of which have a limited impact in the overall impression produced by the mark.
Therefore, the signs are visually highly similar.
Aurally, the pronunciations of the signs coincide in the sequence of phonemes ‘GE*OMAT’. The figurative element of the earlier mark will not be pronounced. Therefore, the pronunciations differ in only the consonant ‘C’ in the middle of the contested sign. This additional phoneme does not render the pronunciation of the contested sign longer than that of the earlier mark. Both words will be enunciated in three syllables.
Therefore, the signs are aurally highly similar.
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 part of the relevant public on which the present assessment is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods at issue are identical and target the general public and business customers. The degree of attention is average. The degree of inherent distinctiveness of the earlier mark is average. The signs are considered visually and aurally highly similar, and this impression is not altered by any conceptual perception from the perspective of the part of the public that perceives the word of the earlier mark as a whole as fanciful.
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). It is considered that the coincidence in almost all of the letters of the verbal elements and the difference in only one letter is not sufficient to safely dispel likelihood of confusion.
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 covered are from the same or economically linked undertakings.
The figurative element of the earlier mark is rather decorative and, although the verbal elements of the signs differ in one letter and the minimal stylisation of the earlier mark, the relevant public may overlook these differences in the verbal elements and perceive the contested sign as a configuration of the earlier mark without the graphical embellishments. Therefore, a likelihood of confusion still exists, as the differences between the signs are not sufficient to counteract the similarities and, consequently, the public could believe that the identical goods come from the same undertaking or from an economically linked undertaking.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the part of the public that perceives the earlier mark’s verbal component as fanciful as a whole.
Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 281 465. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is entirely successful for all the contested goods, it is unnecessary to proceed to a further assessment in relation to the remaining part of the public.
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
Keeva DOHERTY | Biruté SATAITE-GONZALEZ | Solveiga BIEZA |
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.