OPPOSITION No B 2 479 155

Terazid EOOD, район Искър ж.к. Гара Искър, 5004-та No 5, София, Bulgaria (opponent), represented by IP Consulting LTD., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

Composiciones Artísticas de Cerámica S.L., Pol. Ind La Rambla, Camin, Alcora, 18, 12550 Almazora (Castellón), Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative).

On 30/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 479 155 is partially upheld, namely for the following contested goods and services:

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen.

Class 35: Wholesaling and retailing of all kinds of building materials.

2. European Union trade mark application No 13 415 311 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 13 415 311 (figurative mark), namely against all the goods in Class 19 and some of the services in Class 35. The opposition is based on Bulgarian trade mark registration No 42 511 ‘ДЕКОРИТ DEKORIT’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

As far as the list of the contested goods and services is concerned, it should be noted that there are some inconsistencies between the list of services in Class 35 claimed in the notice of opposition filed on 19/02/2015, during the opposition period, and the list of services in Class 35 for which the contested EUTM has been applied for.

The opponent indicated in the notice of opposition that the opposition was directed ‘against parts of the goods and services’ and listed the following goods and services:

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 35: Wholesaling and retailing of all kinds of building materials; or advertising purposes; Sales promotion.

As regards Class 35, the list of services for which the contested sign seeks protection in this class is the following:

Class 35: Advertising, marketing and promotional services; Wholesaling and retailing of all kinds of building materials; Sale via global computer networks of all kinds of building materials; Dissemination of advertising matter and direct mail advertising; Exhibitions for commercial or advertising purposes; Sales promotion for others; Public relations services; Import and export services; Demonstration of goods.

Only the contested services clearly identified during the opposition period will be taken into account.

In the present case, ‘Sales promotion’ in the notice of opposition clearly corresponds to ‘Sales promotion for others’ in the specification of the contested mark as applied for and the scope of protection of the second term is the same.

However, ‘or advertising purposes’ mentioned by the opponent in the notice of opposition is unclear and does not correspond to any of the categories of services in the specification of the contested mark as applied for.

The Opposition Division also notes that in its observations submitted on 04/09/2017, after the opposition period, the opponent indicated that the scope of the opposition extends to the goods in Class 19 and the following services in Class 35:

Class 35: Wholesaling and retailing of all kinds of building materials; Sale via global computer networks of all kinds of building materials; Sales promotion for others.

The inclusion of ‘Sale via global computer networks of all kinds of building materials’ for the first time in these observations cannot be accepted as a valid and timely indication because, by specifying in the notice of opposition that the opposition is based on only part of the goods and services of the earlier mark and listing those goods and services, the opponent has clearly limited its opposition in this respect and it cannot extend the scope thereof after the opposition period of three months.

Consequently, the Opposition Division considers that the opposition is directed against the following goods and services clearly identified in the opposition period:

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 35: Wholesaling and retailing of all kinds of building materials; Sales promotion for others.

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 on which the opposition is based are the following:

Class 19: Non-metallic building materials, plaster.

The contested goods and services are the following:

Class 19: Building materials (non-metallic); Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Non-metallic transportable buildings; Monuments, not of metal.

Class 35: Wholesaling and retailing of all kinds of building materials; Sales promotion for others.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 19

The contested building materials (non-metallic) are identical to the opponent’s non-metallic building materials, despite the slightly different wording.

The contested non-metallic rigid pipes for building and asphalt, pitch and bitumen are included in the broader category of the opponent’s non-metallic building materials. Therefore, they are identical.

The contested non-metallic transportable buildings are complex, prefabricated, finished products which can be dismantled and reassembled and transported from one location to another. The purpose of the contested non-metallic transportable buildings, as a finished product, and the purpose of the opponent’s non-metallic building materials, plaster (i.e. unfinished or semi-finished materials used in the construction field) are clearly different. Consumers are aware that the producers of these goods are usually not the same and they will not, therefore, assume that the finished transportable buildings have the same commercial origin as the unfinished building materials. These goods are neither complementary (in the sense that one is indispensable or important for the use of the other) nor in competition.

The contested monuments, not of metal are goods used for artistic and decoration purposes. These contested goods and the opponent’s goods clearly differ in their natures and they have different specific purposes and methods of use. Even if some of the goods may be made of the same material, this is clearly insufficient to consider them similar. Moreover, they do not coincide in their usual commercial origin. These goods are neither complementary nor in competition.

Consequently, the contested non-metallic transportable buildings and monuments, not of metal are dissimilar to the goods on which the opposition is based.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principle applies to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services.

Therefore, the contested wholesaling and retailing of all kinds of building materials are similar to the opponent’s non-metallic building materials because the goods subject of the contested services include, as a broader category, the opponent’s goods and are therefore, identical to them.

The remaining contested services, sales promotion for others, are not similar to the goods on which the opposition is based. The contested services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

These contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

Consequently, the contested sales promotion for others in Class 35 differ from the opponent’s goods in Class 19 in all the relevant criteria. Therefore, they are dissimilar.

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 or similar are directed at the public at large (e.g. do-it-yourself enthusiasts) and at business customers with specific professional knowledge or expertise in, inter alia, the building and construction industry.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

ДЕКОРИТ DEKORIT
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 word mark consisting of the word ‘DEKORIT’ written in Latin characters preceded by its transliteration into Cyrillic characters, ‘ДЕКОРИТ’. Bulgarian consumers will perceive the mark as the same word written in two different alphabets (13/03/2013, R 1474/2012-1, LEKKY / LEKI et al., § 15 and 26).

The contested sign is a figurative mark consisting in two verbal elements, ‘DECORW!T DW!’, depicted over two lines. The first verbal element will be perceived as ‘DECORWIT’ where the first five letters are written in black and the last three letters are in red. The representation of the letter ‘I’ as an upside down lower case letter ‘i’, or essentially as an exclamation mark, does not alter the public’s perception of this element as a letter. Consumers tend to recognise a letter in a string of letters even if that letter is highly stylised or replaced by a symbol that resembles it, as in trade marks letters are often highly stylised or replaced with figurative elements with a shape similar to that of the letters in question, for effect or impact. It is likely that in the sequence ‘DECORW!T’, the vast majority of the relevant public will perceive the exclamation mark as a substitute for the letter ‘I’.

The second element of the contested sign (also in black and red) is likely to be perceived as the abbreviation of the first element depicted above it, ‘D’ and ‘W’ being the initial letters of the two conjoined words in ‘DECORWIT’. In this case, given that the exclamation mark is depicted at the end of this element, it may be perceived as such rather than as an upside-down depiction of the letter ‘I’.

Neither ‘DEKORIT’, nor its Cyrillic equivalent ‘ДЕКОРИТ’, in the earlier mark, as a whole, convey a meaning for the public in the relevant territory. The same applies to the verbal element ‘DECORWIT’ of the contested sign. However, the first five letters of these elements, which will be pronounced identically in both marks, will be understood by the relevant consumers as the Bulgarian word ‘ДЕКОР’ and will be associated with the concept of decoration. Nevertheless, even though the distinctiveness of the beginnings of these verbal elements is limited at least for a part of the relevant goods and services because it indicates that these could be used for decoration, the verbal elements ‘DEKORIT’ / ‘ДЕКОРИТ’ and ‘DECORWIT’ are invented words and, therefore, of normal distinctiveness as a whole.

The second element of the contested sign is also of average distinctiveness, regardless of whether it would be perceived as the two letters ‘DW’ followed by an exclamation mark or as the letters ‘DWI’, as it has no clear meaning and connection to the relevant goods and services.

Visually, the signs coincide in the letters ‘DE*OR*T’ in the second verbal element of the earlier mark and in the first verbal element of the contested sign, and differ in the third letters in these elements, ‘K’ in the earlier mark and ‘C’ in the contested sign, in the additional letter ‘W’ in the sixth position in the contested sign and in that the contested mark’s verbal element ‘DECORW!T’ contains an exclamation mark at penultimate position as opposed to the letter ‘I’ in the earlier mark, although this symbol will most likely be perceived and read as the letter ‘I’.

The marks also differ in the additional word ‘ДЕКОРИТ’ in Cyrillic at the beginning of the contested sign and in the second verbal element ‘DW!’ of the contested sign, as well as in the colours and the stylisation of that sign, which will be perceived as an ordinary graphical means of bringing the verbal elements in question to the public’s attention.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters/symbols ‘DEKORIT’ in the verbal element of the earlier mark and ‘DECOR*!T’ in the first verbal element of the contested sign, given that the letters ‘K’ and ‘C’ will be pronounced in the same way in both marks and that the vast majority of the consumers are likely to perceive the symbol ‘!’ as an inverted letter ‘I’ in the contested sign. The pronunciation of these verbal elements differs only in the sound of the letter ‛W’ of the contested mark. Moreover, the verbal elements at issue are composed of the same number of syllables and, therefore, they have the same aural rhythm.

The pronunciation of the marks also differs for a part of the public in the sound of the second verbal element of the contested sign which has no counterpart in the earlier mark. Nevertheless, a significant part of the relevant public will not pronounce this element as it will perceive it as a sort of an abbreviation of or a reference to the first verbal element of that sign.

The earlier mark also contains the word ‘ДЕКОРИТ’ in Cyrillic at its beginning. However, it is very unlikely that the earlier mark would be pronounced as ‘DEKORIT DEKORIT’ since the relevant consumers would clearly see that it is the same word written in different alphabets (13/03/2013, R 1474/2012-1, LEKKY / LEKI et al., § 28) and will not pronounce it twice.

Therefore, given that the commonalities between the marks’ similar verbal elements are not limited to the weak beginnings ‘DEKOR’ / ‘DECOR’ but also encompass the sounds at their endings, the signs are aurally highly similar.

Conceptually, although the marks as a whole do not have any meaning for the public in the relevant territory, the letters ‘DEKOR’ / ‘ДЕКОР’ and ‘DECOR’ will be associated with the same meaning, as explained above. However, the degree of conceptual similarity is low because the concept that the marks have in common is weak as it suggests the purpose of the relevant goods and services (that they could be used for decoration).

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 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

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 part of the goods and services under comparison were found to be identical or similar and target the public at large and professionals whose degree of attention will vary from average to higher than average, whereas the remaining goods and services are dissimilar. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods.

The signs are visually similar to a below average degree on account of the common letters ‘DE*OR*T’ and aurally similar to a high degree on account of the coinciding sounds, ‘DEKOR*IT’, as explained above. Consequently, the impact of the differences between the marks is not sufficient to clearly distinguish them visually and especially aurally.

The conceptual impact of the coinciding letters ‘DEKOR’ / ‘DECOR’ is limited due to the weak distinctive character associated with the meaning of these letters. However, the similarities between the marks are not limited to these letters only but also encompass their final letters and sounds, ‘IT’ / ‘!T’. The marks do not carry any other more distinctive concepts which could help to differentiate between them.

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).

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarities between them and that a likelihood of confusion between the marks cannot be safely excluded for goods and services which are identical or similar at least to an average degree.

Consequently, there is a likelihood of confusion, including a likelihood of association, on the part of the public, even considering that the degree of attention of the relevant consumers in relation to some of the goods or services may be higher than average. 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).

Therefore the opposition is partly well founded on the basis of the earlier Bulgarian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of the 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 and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

María del Carmen COBOS PALOMO

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.