OPTIMAH! | Decision 2785411
Date Published: Sep 24, 2017
OPPOSITION No B 2 785 411
José Maria Marques Ferreira, Aldeamento Pinhal da Foz, Nº 3, 4740-325 Fão, Portugal (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)
a g a i n s t
Unlimited Perspective SA, Route de la Pâte, 14, 1026 Denges, Switzerland (holder), represented by A.G. Da Cunha Ferreira, LDA, Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 785 411 is upheld for all the contested goods and services.
2. International registration No 1 282 502 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of international trade mark registration designating the European Union No 1 282 502, for the figurative mark . The opposition is based on Portuguese trade mark registration No 523 562, for the figurative mark . 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 6: Aluminium; metal window frames; ironwork for windows; windows of metal; metal window cranks; shutters of metal; metal door frames; greenhouse frames of metal; metal window frames; frames of metal for building; casement windows of metal; shutters of metal; doors of metal; metal building materials.
Class 19: Building materials [non-metallic]; wood window frames and structures; non-metal window frames; window frames of wood clad; non-metal windows; shutters, not of metal; interior non-metal window shutters; doors, not of metal; shutters, not of metal; door frames, not of metal; door frames, not of metal; door panels, not of metal; plate glass [windows], for building; window glass, except glass for vehicle windows; insulating glass [building]; building glass; safety glass; plate glass [windows], for building.
Class 37: Building construction; installation of glass in conservatories, windows, doors and greenhouses; installation and repair of window frames; installation of insulating glass in conservatories, windows, doors and greenhouses; providing information relating to window cleaning services; installation of doors and windows; installation, maintenance and repair of automatic apparatus for opening and closing semicircular windows; installation, maintenance and repair of automatic apparatus for opening and closing windows; installation, maintenance and repair of automatic apparatus for opening and closing windows, semicircular windows, skylight windows and ventilation flaps; installation, maintenance and repair of machine operated apparatus for opening and closing windows, semicircular windows, skylight windows and ventilation flaps; installation, maintenance and repair of machine operated apparatus for opening and closing windows; installation, maintenance and repair of machine operated apparatus for opening and closing semicircular windows; installation of doors and windows; installation and repair of window frames.
In relation to the contested good and services, the Opposition Division notes that on 10/05/2016 the holder confirmed the description of the list of goods and services proposed by the Office on 30/03/2016. Therefore, the contested goods and services are the following:
Class 6: Goods made of metal included in this class, namely metal building materials, in particular windows, doors, roof windows, jalousies, roller shutters, parts and accessories of the aforesaid goods included in this class; door handles of metal; locks of metal.
Class 19: Non-metallic building materials, in particular windows, doors, roof windows, jalousies, roller shutters, parts and accessories of the aforesaid goods not included in other classes; cladding, not of metal, for construction and building.
Class 37: Construction, repair and installation services of windows, doors, roof windows, jalousies, roller shutters, parts and accessories of the aforesaid goods.
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 ‘in particular’, used in the holder’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that 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).
However, the term ‘namely’, used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 6
The contested goods made of metal included in this class, namely metal building materials, in particular windows, doors, roof windows, jalousies, roller shutters are included in the broad category of metal building materials. Therefore, they are identical.
The contested parts and accessories of the aforesaid goods included in this class [metal building materials, in particular windows, doors, roof windows, jalousies, roller shutters] include, as a broader category, the opponent’s metal window frames. 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 door handles of metal; locks of metal are highly similar to the opponent’s doors of metal. They have the same purpose: to allow access to an enclosed space. Furthermore, they target the same relevant public, are provided by the same undertakings, have the same distribution channels and can be complementary.
Contested goods in Class 19
The contested non-metallic building materials, in particular windows, doors, roof windows, jalousies, roller shutters, are identically included in both lists of goods (despite minor differences in wording).
The contested cladding, not of metal, for construction and building is included in the broad category of the opponent’s building materials [non-metallic]. Therefore, they are identical.
The contested parts and accessories of the aforesaid goods not included in other classes [non-metallic building materials] include as a broader category the opponent’s wood windows frames and structures. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 37
The contested construction services of windows, doors, roof windows, jalousies, roller shutters, parts and accessories of the aforesaid goods are included in, or overlap with, the broad category of the opponent’s building construction. Therefore, they are identical.
The contested installation services of windows, doors are identically contained in both lists of services (despite minor differences in wording).
The contested installation services of roof windows are included in, or overlap with, the broad category of the opponent’s installation of windows.
The contested installation services of parts and accessories of the aforesaid goods [windows, roof windows] are included in, or overlap with, the broad category of the opponent’s installation services of windows. Therefore, they are identical.
The contested installation services of parts and accessories of the aforesaid goods [doors] are included in, or overlap with, the broad category of the opponent’s installation services of doors. Therefore, they are identical.
The contested installation services of jalousies, roller shutters, parts and accessories of the aforesaid goods are highly similar to the opponent’s installation of windows. They have the same purpose: to install building elements as windows or shutters. Furthermore, they target the same relevant public, are provided by the same undertakings, have the same distribution channels and can be complementary.
The contested repair services of windows, doors, roof windows, jalousies, roller shutters, parts and accessories of the aforesaid goods are highly similar to the opponent’s repair of window frames. They have the same purpose: to repair building elements such as windows or doors. Furthermore, they target the same relevant public, are provided by the same undertakings, have the same distribution channels and can be complementary.
- 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 to a high degree are directed at the public at large and also at business customers with specific professional knowledge or expertise in the construction industry, such as building contractors or architects.
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.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Portugal.
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 mark consisting of the verbal element ‘OTIMAH’, followed by an exclamation mark. The letters ‘OTIMA’ are depicted in a standard black typeface, with the letter ‘A’ slightly overlapping the letter ‘H’. The letter ‘H’ is depicted in a standard red typeface. The exclamation mark is also in red and has a small white cross inside the dot.
The contested sign is a figurative mark consisting of the verbal element ‘OPTIMAH’, followed by an exclamation mark. The letters ‘OPTIM’ are depicted in a standard black typeface, whereas the letters ‘AH’ and the exclamation mark are depicted in red. In the letter ‘H’ the first stroke extends slightly above the rest of the letters.
The words ‘OTIMA/OPTIMA’ will be understood by the relevant public as ‘optimum’ or ‘optimal’, which means, inter alia, the best or most favourable degree, condition, amount. Therefore, the distinctiveness of this element is weak, as it relates to the quality of the relevant goods and services. The combination of letters ‘AH’ and the exclamation mark, present at the end of both signs, is an interjection used to denote admiration or surprise, serve to attract the consumer’s attention to the verbal element. Given the meaning of ‘AH!’ as an exclamation, its main function is to complement the verbal element in the sign.
The figurative elements present in both signs, namely the small white cross of the earlier mark and the slightly higher ‘H’ in the contested sign, are of a purely decorative nature and hardly perceptible unless a detailed assessment of the signs is carried out. In this regard, 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). Therefore, these aspects of the signs are indeed secondary in the overall impression created by the marks.
Visually, the signs coincide in the string of letters ‘O*TIMAH’ and the final exclamation mark. The signs also coincide in the standard stylisation of the letters and the colour combination (black and red), which permits the verbal elements present in the signs to be visually distinguished.
However, the signs differ in the additional letter ‘P’, present in the contested sign, the decorative elements of the signs, which are secondary, as explained above, and the colour of the letter ‘A’.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘O*TIMAH’. In Portuguese, the additional letter ‘P’ in second position in the contested sign is almost not pronounced, and the exclamation mark, present in both signs, is not pronounced.
Therefore, the signs are aurally nearly identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both marks convey the meaning of ‘optimal’ or ‘optimum’, with the interjection ‘AH!’ at the end denoting admiration or surprise, the signs are conceptually nearly identical.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- 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).
In the present case, the contested goods and services are identical or similar to a high degree to the opponent’s goods and services. The signs are visually highly similar, aurally nearly identical and conceptually nearly identical. The degree of attention may vary from average to high and the degree of distinctiveness of the earlier mark is normal.
Although the elements ‘OTIMA’/‘OPTIMA’ are weak for the goods and services at issue, the finding that an element that marks have in common has a low degree of distinctive character does not automatically prevent a likelihood of confusion. Although the distinctive character of the earlier mark and the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, these are only individual factors involved in that assessment. Therefore, even in a case involving a coinciding element with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and the identity or similarity between the goods in question.
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). 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). This applies particularly to the present case, as the signs are visually highly similar on account of the letter sequence ‘O*TIMAH!’ and the colour combination of the letters, in which the initial part is in black and the final part is in red.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 523 562. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 holder 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
Marta GARCÍA COLLADO | Jorge ZARAGOZA GOMEZ | Richard BIANCHI |
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.