OPPOSITION No B 2 277 534

Tecnicas de Vidrio Transformado, S.L., P. Ind. El Bayo, Parcela l–19, 24492 Cubillos del Sil, Ponferrada (León), Spain (opponent), represented by Molero Patentes y Marcas S.L., Paseo de la Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative)

a g a i n s t

Werner Faust, Ahornweg 10, 87656 Germaringen, Germany (applicant), represented by Einsel & Kollegen, Jasperallee 1ª, 38102 Braunschweig, Germany (professional representative).

On 07/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 277 534 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 951 721, namely against all the goods and services in Classes 19 and 37. The opposition is based on:

• Spanish trade mark registration No 2 898 676 ;

• Spanish trade mark registration No 2 898 677 ;

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Spanish trade mark registration No 2 898 676

Class 19: Building glass; glass granules for road marking.

Spanish trade mark registration No 2 898 677

Class 40: Material treatment services; transformation and handling of glass; laminating, polishing and refining of glass; glass-blowing; glass engraving; glass grinding; glass melting.

The contested goods and services are the following:

Class 19: Building materials (not of metal); transportable buildings (not of metal); windows (not of metal); window glass (except glass for vehicles windows); window glass (for building); shutters and window frames (not of metal); doors (not of metal); door frames and door panels (each not of metal); door latches (each not of metal).

Class 37: Building construction, repair, installation services, in particular cleansing and fitting of doors and windows.

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 term ‘in particular’, used in the applicant’s list of services, indicates that the specific 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).

Contested goods in Class 19

The contested building materials (not of metal) include, as a broader category, the opponent’s building glass. 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 window glass (except glass for vehicles windows); window glass (for building) are included in the broad category of, or overlap with, the opponent’s building glass. Therefore, they are identical.

The contested windows (not of metal); shutters and window frames (not of metal); doors (not of metal); door frames and door panels (each not of metal); door latches (each not of metal) can be complementary to the opponent’s building glass. These goods target the same consumers and will have the same distribution channels. Therefore, the goods are similar.

The contested transportable buildings (not of metal) are clearly different from the opponent’s building glass; glass granules for road marking in Class 19, considering their differences in nature, purpose, distribution channels and producers. Moreover, these goods are not in competition or complementary. The mere fact that the consumers may coincide is not sufficient, in itself, to conclude that the goods are similar. The contested goods are even more different from the opponent’s services in Class 40, as there is nothing at all in common between them. Therefore, the opponent’s goods and services are deemed dissimilar.

Contested services in Class 37

The contested building construction, repair, installation services, in particular cleansing and fitting of doors and windows are similar to the opponent’s building glass. Although goods and services have different natures, the contested services cannot be rendered without building materials. These goods and services are complementary. They serve the same general purpose, namely the construction of a building, and it is common for the provider of construction services also to supply the necessary building materials.

2. 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 or similar are directed at the public at large, but also at professionals in the construction field. The degree of attention would be average when choosing the relevant goods.

3. The signs

Spanish trade mark registration No 2 898 676 Spanish trade mark registration No 2 898 677	glazOtec
Earlier trade mark	Contested sign

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).

The earlier marks are figurative marks consisting of the verbal element ‘LACOTEC’, written in slightly stylised upper case letters with a blue border.

The contested sign is the word mark ‘glazOtec’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. It is most natural for a consumer to read everything as letters and not, as the applicant has suggested, as numbers. The fifth letter will be perceived as the letter ‘O’, not the number ‘0’.

None of the marks has any elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘LA’, either as the first and second letters in the earlier marks or as the second and third letters in the contested mark, and in the sequence of letters ‘OTEC’, which is present at the end of all the marks. However, they differ in the letter ‘G’, at the beginning of the contested mark, the letter ‘Z’, which is the fourth letter in the contested mark, the letter ‘C’, which is the third letter of the earlier marks, and the figurative elements of the earlier marks.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 marks have six letters out of seven (in the earlier marks) or eight (in the contested mark) in common. The letters are in the same order, although with an additional letter ‘G’ at the beginning of the contested sign and a letter ‘C’ in the earlier marks, as well as a letter ‘Z’ in the contested sign, which has no counterpart in the earlier marks. Therefore, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LA*OTEC’, present in all the signs. They also have the same rhythm and number of syllables (three): LA/CO/TEC versus GLA/ZO/TEC. The pronunciation of the marks differs in the sound of the letter ‛G’ at the beginning of the contested mark, which has no counterpart in the earlier marks. They also differ in the pronunciation of the letter ‘C’ in the earlier marks, which will be pronounced as a ‘K’, and in the letter ‘Z’ of the contested mark, which will be pronounced as /θ/, which is a lisping sound that is most similar to the English pronunciation of ‘th’ in ‘think’.

The marks have the same number of syllables and are pronounced with the same rhythm. However, they differ in the pronunciation of the first syllable, which in the contested mark will start with a ‘G’, and of the second syllable, which includes the letters ‘C’ and ‘Z’, as stated above. Therefore, the signs are similar to a low degree.

Conceptually, neither of the signs has a 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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 the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As seen above, the goods and services under comparison are partly identical, partly similar and partly dissimilar.

The marks under comparison have a certain degree of similarity as a result of the coinciding sequences of letters, ‘LA’ and ‘OTEC.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. However, as is clear from consistent case law, the global appreciation of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see, by analogy, judgment of 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23, and judgment of 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

In the present case, the Opposition Division considers that the visual differences between the marks, which result from the different beginnings, ‘LA-’ and GLA-’, and the different number of letters in each sign, are striking and clearly perceptible. The strong consonants ‘C’ versus ‘Z’ are prominent and contribute noticeably to the differentiation of the signs, both visually and especially aurally, since they are pronounced in completely different ways, as discussed in section c). Moreover, the graphic depiction of the earlier signs adds to the differentiation between the marks. Furthermore, there is no conceptual similarity between the marks that would make them more similar to one another.

All of the aforementioned findings lead to the conclusion that the marks do not convey similar overall impressions.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Katarzyna ZANIECKA

Magnus ABRAMSSON

Victoria DAFAUCE MENÉNDEZ

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.