PUREVER | Decision 2419359 - PUREVER - NEGÓCIOS E GESTÃO, SGPS, S.A. v. REPSOL, S.A.
Date Published: Sep 28, 2017
OPPOSITION No B 2 419 359
Purever - Negócios E Gestão, SGPS, S.A., Vale do Vinagre, Lugar do Poço Forrado, 3520-225 Vilar Seco Nls, Portugal (opponent), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative)
a g a i n s t
Repsol S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (applicant), represented by Pons Consultores De Propiedad Industrial S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 419 359 is partially upheld, namely for the following contested goods:
Class 17: Insulating materials; polyurethane film for use as a moisture barrier; polyurethane film for use as building insulation; polyurethane foam [semi-finished]; polyurethane foam in blocks; foam insulating materials of polyurethane; polyurethane foam for insulating purposes; polyurethane foam in blocks for insulating; polyurethane foam sheeting for use as building insulation; insulation for building purposes; ceilings made of mineral fibres for insulating buildings; foam insulation for use in building and construction.
2. European Union trade mark application No 12 933 628 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 12 933 628. The opposition is based on European Union trade mark registration No 6 136 071. 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: Insulating panels.
Class 11: Air conditioning apparatus and installations (for domestic use), refrigerating apparatus and freezers for domestic use, refrigerating units, namely, insulating isothermal doors, insulating doors, isothermal chambers (goods, not included in other classes).
Class 20: Shelving for hotels, restaurants and cafeterias.
Class 35: Sales promotion for others of air conditioning apparatus and installations (for domestic use), refrigerating apparatus and freezers for domestic use, insulating panels, insulating doors, isothermal chambers, refrigerating units, shelving for hotels, restaurants and cafeterias.
The contested goods are the following:
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; polyoles, thermoplastic elastomers, liquid elastomers and silicone liquid elastomers; polyurethanes; polyurethane adhesives; polyurethane granulate; polyurethane coatings [other than paints]; polyether polyols; silicon modified polyether polyols; polyol for use in industry; silica for use as a polyolefin catalyst; esters of polyols for use as ingredients in foodstuffs.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 17: Rubber, gutta-percha, gum, asbestos, mica; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; elastomers; hoses made from elastomer lined woven textiles; elastomers for bonding to articles used for shot-blasting; elastomers for bonding to surfaces in areas for shot-blasting; elastomers for bonding to articles used for shot-peening; fluorosilicone rubber elastomers; polyurethane film for use as a moisture barrier; polyurethane foam in strips for use in manufacture; polyurethane foam in blocks for use in flower arranging; polyurethane film for use as building insulation; polyurethane foam [semi-finished]; polyurethane foam in blocks; foam insulating materials of polyurethane; polyurethane foam for insulating purposes; polyurethane foam in blocks for insulating; polyurethane foam in sections for use in manufacture; polyurethane foam sheeting for use as building insulation; insulation for building purposes; ceilings made of mineral fibres for insulating buildings; foam insulation for use in building and construction.
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 1
The contested goods are chemicals and some chemical semi-finished (or finished) products that are used in different areas of industry, science and photography, as well as in agriculture, horticulture and forestry.
The opponent´s goods in Class 6 are building materials used for construction; the goods in Class 11 are various apparatus for air conditioning and refrigerating purposes and the goods in Class 20 are pieces of furniture. Even if some of the opponent´s goods could contain some of the contested chemicals, this is not enough for finding similarity. The goods in comparison do not share the same commercial origin. They have different nature, purpose and method of use. They are neither complementary, nor in competition. They do not usually coincide in their distribution channels.
Furthermore, no similarity exists between the contested goods and the opponent´s services in Class 35, which consists of sale promotion for others of a number of goods. The opponent´s services are fundamentally different in nature and purpose from the manufacture of goods. They do not coincide with the contested goods in method of use or commercial origin. Furthermore, they are neither complementary, nor in competition.
Following form the above, the contested chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; polyoles, thermoplastic elastomers, liquid elastomers and silicone liquid elastomers; polyurethanes; polyurethane adhesives; polyurethane granulate; polyurethane coatings [other than paints]; polyether polyols; silicon modified polyether polyols; polyol for use in industry; silica for use as a polyolefin catalyst; esters of polyols for use as ingredients in foodstuffs are dissimilar to the opponent´s goods and services.
Contested goods in Class 2
The contested goods in this class are paints, colorants and preparations used for the protection against corrosion, as well as metal for painting purposes. There is no similarity between those goods and the opponent´s goods and services. They do not coincide in nature, purpose or method of use. The goods in comparison do not share the same commercial origin. They are neither complementary, nor in competition. They do not usually coincide in their distribution channels. Therefore, the contested paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists are dissimilar to the opponent´s goods and services.
Contested goods in Class 17
The contested insulating materials; polyurethane film for use as a moisture barrier; polyurethane film for use as building insulation; polyurethane foam [semi-finished]; polyurethane foam in blocks; foam insulating materials of polyurethane; polyurethane foam for insulating purposes; polyurethane foam in blocks for insulating; polyurethane foam sheeting for use as building insulation; insulation for building purposes; ceilings made of mineral fibres for insulating buildings; foam insulation for use in building and construction are by their nature insulating materials, used in building construction. These, therefore, coincide with the opponent´s insulating panels in Class 6 in their purpose. They, furthermore, share end user and distribution channels. These are, therefore, similar to a low degree.
The same is not applicable for the remaining contested goods, namely rubber, gutta-percha, gum, asbestos, mica; plastics in extruded form for use in manufacture; packing, stopping materials; flexible pipes, not of metal; elastomers; hoses made from elastomer lined woven textiles; elastomers for bonding to articles used for shot-blasting; elastomers for bonding to surfaces in areas for shot-blasting; elastomers for bonding to articles used for shot-peening; fluorosilicone rubber elastomers; polyurethane foam in strips for use in manufacture; polyurethane foam in blocks for use in flower arranging; polyurethane foam in sections for use in manufacture and the opponent´s goods in Classes 6, 11 and 20 and services in Class 35, as they do not coincide in their nature, purpose or method of use. Furthermore, they do not usually have the same commercial origin and are neither complementary, not in competition. It follows that the remaining contested goods are dissimilar to the opponent´s goods and services.
- The signs
PUREVER PUREVER
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The contested goods are partly similar to a low degree and partly dissimilar to the opponent´s goods and services. The signs are identical.
Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against the goods found to be similar to a low degree to the opponent´s goods. The rest of the contested goods are dissimilar. As the 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
André Gerd Günther BOSSE | Irina SOTIROVA | Erkki MÜNTER |
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.