OPPOSITION No B 2 513 391

Portinox, S.A., Ctra. Pulianas, Km. 6, 18197 Pulianas, Spain (opponent), represented by Díaz Ungría, S.L., Avda. Concha Espina nº 8 6º D, 28036 Madrid, Spain (professional representative)

a g a i n s t

Przedsiębiorstwo Usługowo – Produkcyjno – Handlowe Polinox, Wola Dębińska 390, 32852 Dębno, Poland (applicant), represented by Aomb Polska SP. Z O.O., Emilii Plater 53, 28th floor, 00 113 Warsaw, Poland (professional representative).

On 03/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 513 391 is partially upheld, namely for the following contested goods and services in Classes 6 and 37:

Class 6: Tanks of metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of precious metal; Spare parts and elements of metal (in particular components, elements, parts and supports), namely ironmongery; Ducts of metal (drainage floors) for industry; Goods of precious metals (in particular components, elements, parts and supports), namely ironmongery; Goods of precious metal, not being jewellery, namely screws, screw cups, Attachments, Drilling screws, shaped sections, Tubes, Fittings, Supports.

Class 37: Welding for repair purposes; Repair of production tanks; Construction and assembly of thermal insulation for tanks (protective insulation against overheating and cooling); Assembly of industrial tanks; Construction and assembly of refrigerating; installations for the transport of foodstuffs; Construction and assembly of thermal insulation for pipelines, machines and apparatus (protective insulation against overheating and cooling); Construction and assembly of heating, water, air and technical gas installations.

2. European Union trade mark application No 12 552 519 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 552 519 (figurative mark:
“ ”), namely against all the goods and services in Classes 6 and 37. The opposition is based on European Union trade mark registration No 9 134 404 (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.

1. The goods and services

The goods and services in Classes 6 and 37 on which the opposition is based are the following:

Class 6: Barrels of metal, containers of metal for beers and carbonated beverages; metal containers for compressed gas or liquid air; refrigeration tanks of metal, drain valves of metal.

Class 37: Repair of barrels of metal and containers of metal for beers and carbonated beverages.

The contested goods and services in Classes 6 and 37 are the following:

Class 6: Common metals and their alloys; Metal building materials, transportable buildings of metal; Tanks of metal; Structural steels; Drainage courses, sewers, street gutters, drainage channels and water pipes, of metal; Spare parts and elements of metal (in particular components, elements, parts and supports), namely ironmongery; Ducts of metal (drainage floors) for industry; Street furniture of steel; Building structures of precious metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of precious metal; Goods of precious metals (in particular components, elements, parts and supports), namely ironmongery; Goods of precious metal, not being jewellery, namely screws, screw cups, Attachments, Drilling screws, shaped sections, Tubes, Fittings, Supports.

Class 37: Construction and assembly of technological installations; Construction and assembly of thermal insulation for pipelines, tanks, machines and apparatus (protective insulation against overheating and cooling); Cleaning and maintenance in industry, factories and manufacturing plants; Welding for repair purposes; Building construction; Modernisation and maintenance of equipment in manufacturing plants (production lines, machines and apparatus); Assembly of industrial tanks; Construction and assembly of heating, refrigerating, water, air and technical gas installations, and installations for the transport of foodstuffs; Assembly of steel structures; Repair of production lines, tanks, machines and apparatus; Construction and repair in the field of production line assembly; Assembly of industrial automation units; Assembly of control cabinets; Assembly of automation installations; Modernisation of electrical installations for industry; Running of electrical installations.

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 applicant’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 applicant’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.

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

The contested Tanks of metal include, as a broader category the opponent’s refrigeration tanks of metal. 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 Spare parts and elements of metal (in particular components, elements, parts and supports), namely ironmongery; Ducts of metal (drainage floors) for industry; Drainage courses, sewers, street gutters, drainage channels and water pipes, of metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of precious metal; Goods of precious metals (in particular components, elements, parts and supports), namely ironmongery; Goods of precious metal, not being jewellery, namely screws, screw cups, Attachments, Drilling screws, shaped sections, Tubes, Fittings, Supports are included in the broad category of, or overlap with, the opponent’s drain valves of metal. Therefore, they are identical.

The remaining contested common metals and their alloys; metal building materials, transportable buildings of metal; street furniture of steel; building structures of precious metal; structural steels have different natures and purposes from the opponent’s goods and services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested services

The contested Welding for repair purposes overlap with the opponent’s Repair of barrels of metal and containers of metal for beers and carbonated beverages. Therefore, they are identical.

The contested Repair of production tanks include, as a broader category the opponent’s Repair of barrels of metal and containers of metal for beers and carbonated beverages. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested construction and assembly of thermal insulation for tanks (protective insulation against overheating and cooling); assembly of industrial tanks have the same distribution channels, users and producers as the opponent’s repair of barrels of metal and containers of metal for beers and carbonated beverages. Therefore, they are similar.

The contested construction and assembly of refrigerating; construction and assembly of thermal insulation for pipelines, machines and apparatus (protective insulation against overheating and cooling); construction and assembly of heating, water, air and technical gas installations have the same distribution channels, users and producers as the opponent’s refrigeration tanks of metal. Therefore, they are similar.

The contested installations for the transport of foodstuffs may have the same distribution channels, users and producers as the opponent’s containers of metal for beers and carbonated beverages. Therefore, they are similar.

The remaining contested construction and assembly of technological installations; cleaning and maintenance in industry, factories and manufacturing plants; building construction; modernisation and maintenance of equipment in manufacturing plants (production lines, machines and apparatus); assembly of steel structures; repair of production lines, machines and apparatus; construction and repair in the field of production line assembly; assembly of industrial automation units; assembly of control cabinets; assembly of automation installations; modernisation of electrical installations for industry; running of electrical installations have different natures and purposes from the opponent’s goods and services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

In summary, the following contested goods and services in Classes 6 and 37 are identical or similar:

Class 6: Tanks of metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of metal; Drainage courses, sewers, street gutters, drainage channels and water pipes, of precious metal; Spare parts and elements of metal (in particular components, elements, parts and supports), namely ironmongery; Ducts of metal (drainage floors) for industry; Goods of precious metals (in particular components, elements, parts and supports), namely ironmongery; Goods of precious metal, not being jewellery, namely screws, screw cups, Attachments, Drilling screws, shaped sections, Tubes, Fittings, Supports.

Class 37: Welding for repair purposes; Repair of production tanks; Construction and assembly of thermal insulation for tanks (protective insulation against overheating and cooling); Assembly of industrial tanks; Construction and assembly of refrigerating; installations for the transport of foodstuffs; Construction and assembly of thermal insulation for pipelines, machines and apparatus (protective insulation against overheating and cooling); Construction and assembly of heating, water, air and technical gas installations.

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 and services found to be identical and similar are directed at business customers with specific professional knowledge or expertise. The degree of attention is between average and high, because the goods and services will be selected and bought carefully.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

Both signs are figurative marks. The verbal element of the earlier trade mark is depicted in red italic letters. The verbal element of the contested sign is depicted in blue upper case letters; to the left of this word is a blue rectangle, within which is an arrow pointing to the left.

Neither of the signs has any elements that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs have a comparable number of letters, namely eight in the earlier trade mark and seven in the contested sign. As regards their verbal elements, the first two letters, ‘PO’, and the final four letters, ‘INOX’, of the signs are identical. The differences in the middle of the signs, namely ‘RT’ in the earlier trade mark and ‘L’ in the contested sign, are not sufficient to avoid an average degree of visual similarity. 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Aurally, the graphic elements of the signs will not be taken into account. The signs have the following syllables:

Earlier trade mark = “POR-TI-NOX”;

Contested sign = “PO-LI-NOX”.

The signs have the same number of syllables, namely three. The final syllable, ‘NOX’, and the first letters, ‘PO’, of the marks will be pronounced identically. The vowel, namely ‘I’, of the second syllables of the marks is identical. The signs differ in the third and fourth letters, ‘RT’, of the earlier trade mark and in the third letter, ‘L’, of the contested sign. However, the signs have rather similar pronunciations, rhythms and sounds, which leads to a high degree of aural similarity.

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 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.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual similarity and the high degree of aural similarity between the signs, the average degree of distinctiveness of the earlier trade mark and the partly identical and partly similar goods and services, there is, even for the part of the public that will pay a high degree of attention, a likelihood of confusion. This is even more relevant if the degree of attention of the public is only average. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. Therefore, the relevant consumers will believe that the trade marks come from the same undertaking or economically linked undertakings. Furthermore, the applicant has not proved that the verbal element ‘INOX’ will be understood on the Spanish market by Spanish consumers as ‘stainless steel’. The same applies to the argument that ‘PORTI’ will be associated with the words ‘portion’ or ‘port’, from the Latin word ‘porta’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

Peter QUAY

Claudia MARTINI

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.