integra | Decision 2758087
Date Published: Oct 2, 2017
OPPOSITION No B 2 758 087
VKR Holding A/S, Breeltevej 18, 2970 Hørsholm, Denmark (opponent), represented by Bech-Bruun Law Firm, Langelinie Allé 35, 2100 København Ø, Denmark (professional representative)
a g a i n s t
Aspen Yapi Ve Zemin Sistemleri Sanayi Ve Ticaret Anonim Sirketi, Leylak Sokak, Murat Is Merkezi, B Blok, No: 3/14, Sisli/Istanbul, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).
On 26/06/2017, the Opposition Division takes the following
1. Opposition No B 2 758 087 is upheld for all the contested goods.
2. European Union trade mark application No 15 372 642 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 372 642. The opposition is based on, inter alia, Danish trade mark registration VR 2002 00408. 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 Danish trade mark registration VR 2002 00408.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 6: Common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, metal cables and wire (except for electrical purposes), small forging tools, ironmongery, pipes of metal, safes, goods of common metal (not included in other classes), bronze; building materials of metal being prefabricated building parts, doors and windows, including skylight and skylight including skylight and skylight with integrated electronic service, elements for glass take and pieces, roof terraces, roofing materials, roofing elements, cover frames, window frames and sections, prefabricated balconies, balcony shutting, open and closing devices and mechanisms for windows and doors, fastening and locking installations and furniture for windows and doors, building plates, ventilations and smoke valves (not parts of machines), exposures materials for windows, including exposures coats and profiles, venetian blinds and roller curtains, blinds, roller blinds, operation installations for venetian blinds (not electric), roller curtains, blinds, roller blinds as well as for open and closing windows, boxes for roller curtains and marquees, parts and accessories for all the aforesaid goods (not included in other classes), all the aforesaid goods of metal or mainly of metal.
The contested goods are the following:
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; ores; portable metal buildings, construction material of metal, metal floors, metal ceilings; wall panels of metal, metal curtain walls, partitions of metal for building; metal staircases, portable metal staircases, metal gates and fences, metal railings for fences, metal roofing, metal palings; prefabricated metal platforms, metal telephone booths, vendor booths made primarily of metal, transportable greenhouses of metal for household use, metal swimming pools, metal diving boards, metal silos, crash barriers of metal for roads; metal scaffolding, metal casting forms for concrete, metal posts, construction elements made of metal, namely, shores, supports; high pressure metal containers, general purpose metal storage containers, containers of metal for chemicals, compressed gases and liquids, metal containers for the storage and transportation of goods, metal barrels, vats of metal, flexible metal foils for use in the manufacture of pouches, bags and lids; metal tool boxes, metal mail boxes, metal shelf brackets.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 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.
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.
The contested common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery; pipes of metal; safes are identically contained in both lists of goods (including synonyms).
The contested small items of metal hardware; tubes of metal; portable metal buildings, construction material of metal, metal floors, metal ceilings; wall panels of metal, metal curtain walls, partitions of metal for building; metal staircases, portable metal staircases, metal gates and fences, metal railings for fences, metal roofing, metal palings; prefabricated metal platforms, metal telephone booths, vendor booths made primarily of metal, transportable greenhouses of metal for household use, metal swimming pools, metal diving boards, metal silos, crash barriers of metal for roads; metal scaffolding, metal casting forms for concrete, metal posts, construction elements made of metal, namely, shores, supports; high pressure metal containers, general purpose metal storage containers, containers of metal for chemicals, compressed gases and liquids, metal containers for the storage and transportation of goods, metal barrels, vats of metal, flexible metal foils for use in the manufacture of pouches, bags and lids; metal tool boxes, metal mail boxes, metal shelf brackets are included in the broad category of the opponent's goods of common metal (not included in other classes), since all the applicant's goods are made of metal. Therefore, these goods are considered identical.
The contested ores are any naturally occurring minerals or aggregate of minerals from which economically important constituents, especially metals, can be extracted. Therefore, they are of a similar nature, serve similar purposes and can be extracted by the same companies as the opponent's common metals and their alloys and, consequently, these goods are similar.
- 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, some of the goods found to be identical or similar are directed at the public at large as well as professionals with specific knowledge or expertise in relation to metal materials and goods made of metal, e.g. small items of metal hardware and safes, whereas some of the goods target the professional public exclusively, e.g. materials of metal for railway tracks.
The public’s degree of attentiveness, irrespectively of whether the general public or the professional public is concerned, may vary from average to high, depending on the price, specialised nature, or frequency of purchase of the goods at stake.
- The signs
Earlier trade mark
The relevant territory is Denmark.
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 common element ‘INTEGRA’ as such has no meaning for the relevant public and is, therefore, distinctive.
The four-sided box-shaped device may be taken as referring to some of the contested goods which are containers or may include containers and in this scenario renders the element non-distinctive. Even if no such connection can be made, its impact in the sign is reduced since 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 word element ‘INTEGRA’ which constitutes the earlier mark and the most distinctive element of the contested sign. They differ in the contested sign’s graphic representation, i.e. the additional device, which will as mentioned above attract the consumers attention less than the verbal element, and the stylization of the mentioned word which is rather standard and not able to take away the attention from the verbal element. Insofar as the earlier mark is concerned, in the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.
Thus, the signs are visually highly similar.
Aurally, the signs are identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory might perceive the concept of the contested sign’s device, as explained above, the common verbal element of the signs has no meaning in that territory. Since at least the earlier mark will not be associated with any meaning, the signs are not conceptually 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods covered by the marks under comparison are partially identical and partially similar.
The earlier mark ‘INTEGRA’ is fully incorporated as the most distinctive element in the contested sign, which results in a high degree of visual similarity between the marks. The similarity of the signs is increased further by the fact that they are pronounced identically. From the semantic perspective, the signs are not similar. The relevant public is the public at large and/or the professional public whose level of attention varies from average to high.
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).
To sum up, and taking into account the normal degree of distinctiveness of the earlier mark, the differences between the signs are not striking and are not capable of counteracting the strong similarities between them, with the result that the relevant public may believe that the identical or similar goods come from the same undertaking or economically linked undertakings.
In light of the foregoing, the Opposition Division finds that there is a likelihood of confusion on the relevant public and therefore the opposition is well-founded on the basis of the opponent’s Danish trade mark registration VR 2002 00408. It follows that the contested trade mark must be rejected for all the contested goods.
For the sake of completeness, it should be noted that as the earlier right, i.e. Danish trade mark registration VR 2002 00408, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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
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.